Once a patent is granted, it should be administered and exploited. Patent administration deals primarily with the monitoring and execution of all actions that are necessary for the maintenance of the patent, including, in particular, the payment of any annual renewal fees.
In the context of patent management, all opportunities should be used to profitably exploit a granted patent, by the patent owner himself or by third parties (licenses, patent sale etc.).
Rentsch Partner Ltd., with their experience and know-how, are able to professionally administrate extensive patent portfolios.
After a successful patent application, the granted patent needs to be secured and if necessary to be legally enforced.
In the European patent system, within nine months everybody can file an opposition against grant of an European patent. The grounds for opposition are specified in Article 100 EPC. The opposition procedure is quite inexpensive, compared to a nullity action before a national civil court. Since all parties have to carry their own costs, independent of the outcome of the case, the opposition procedure furthermore comprises only a very limited financial risk.
After the expiration of the nine months opposition period, the European patent cannot be attacked any longer in one central procedure. A third party may then have to make use of the different legal measures provided by the applicable national legislations, such as nullity actions. Since these procedures are in most cases expensive and longsome, it is of utmost importance to attack (potentially) troublesome European patents using the central and inexpensive opposition procedure. If necessary a European patent application may already have to be monitored in the examination phase, in order to know as early as possible the date of grant and the end of the opposition period.
Since 1 July 2008 the Swiss patent law comprises the possibility of an opposition against a granted Swiss patent. Everybody may file an opposition, within nine months after the registration of the grant of the patent. However, the opposition may only be based on the fact that the object of the patent is excluded from patentability under Art. 1a, 1b, or 2 Swiss Patent Statute. For example a patent may not contravene public order or morale. Specifically excluded objects are for example parts of the human body in their natural surroundings. Essentially the aim of the Swiss opposition procedure is to provide an inexpensive way to attack patents that contravene public interests.
No ground during examination or opposition is, however, lack of novelty or inventive step. If somebody wishes to take action against an invalid Swiss patent, he thus will still have to file a civil nullity action with the Federal Patent Court.
In a Swiss examination procedure, the first step of the registration procedure covers the formal examination of the patent application. Subsequently in the substantial examination the authority examines, if the patent application complies with the requirements according to Articles 1, 1a and 2 of the LPI (technical teaching, invention applicable in industry, sufficient disclosure, unity and clarity. If all conditions for the grant of a patent are met, a patent is granted. Grant of the patent is registered it in the Patent Register and published. The applicant receives a patent certificate.
The formal steps for the registration procedure according to the EPC are comparable with those of the Swiss procedure, whereby after passing the formal examination the European search report is established. The search report is published afterwards together with the patent application. Contrary to the Swiss registration procedure the criteria "novelty" and "inventive step" are substantially examined during the registration procedure. After the publication of the grant of the European patent in the European Patent Bulletin, the registration in the applicable national registers is carried out.
In order to obtain a patent, the applicant has to file a patent application at the competent authority. The formal requirements are quite similar worldwide.
For example, a Swiss patent application is required to include:
Upon receipt of the patent application, the Swiss Federal Institute of Intellectual Property examines within the receiving inspection if the formal legal requirements are fulfilled in order to assign filing date. The same applies for European patent applications.
Patents for inventions are only granted if the invention is new and based on an inventive step. The basis for the evaluation of novelty and inventive step is given by the state of the art at the time of the filing of the patent application (search).
In the Swiss procedure, the above-mentioned criteria of novelty and inventive step are not examined. However, a non-compulsory official search may be applied for.
For European patent applications the European Patent Office examines ex officio if the conditions for granting a patent with respect to “novelty” and “inventive step” are fulfilled. The European search report includes a first opinion of the responsible patent examiner with respect to this criteria.
An carefully conducted patent search, as well as its appropriate consideration when marking off the scope of protection, form an essential basis of a legally valid and enforceable patent.
Various international treaties, in particular the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT), allow for the registration of a patent in different ways. The following aspects should be considered when deciding on the specific patent application strategy:
All these aspects and further issues should be discussed in detail together with a patent attorney.
Various international treaties, in particular the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT), allow for filing patent applications in different ways. Subsequent you will be informed about the most important issues as well as about the registration procedure in general.
The European Patent Convention (EPC) is an international treaty between European countries.
For the Contracting States, the EPC establishes a European Patent Organisation ("EPO") and a uniform system for the filing and grant of patents. Such "European Patents" have in each of the Contracting States the effect of a national patent granted by that State, and is subject to the same national conditions (cf. Article 2 para 2 EPC).
The procedure in case of an infringement of a European Patent follows the national legal system of the Contracting State concerned.
The Patent Cooperation Treaty (PCT) is an international treaty and provides the possibility to file one single patent application (an "international" patent application) that has the same effect as a national patent application in more than 120 States, instead of filing multiple national or regional patent applications. Only after a delay of at least 30 months, the national or regional procedures are to be started in the desired States or regions. Within this period, the applicant receives an official opinion regarding patentability of the invention and has time to decide whether and in which countries respectively he wants to enter the national or regional phase. Accordingly, the prosecution costs in the desired States or regions are delayed.
The most important regulations on the Swiss patent law can be found in the Federal Law on Patents for Inventions, and the Federal Ordinance on Patents for Inventions. Further the Swiss Federal Institute of Intellectual Property has issued Guidelines for Patent Examination, which are published in German and French only. Although not having a binding effect for third parties outside the Institute, the guidelines deliver insight in the patent application process and the procedures of the Institute.
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