The concept of a patent
Generally, a patent is an industrial property title issued by public authorities or by an authority recognized by the state. This title confers on its holder a temporary exploitation monopoly on their invention for 20 years from the date of filing in France and Europe. Consequently, the patent holder has an exclusive right, enforceable against everyone.
It should be noted that a patent serves to position the invention relative to the state of the art.
The field of patentability
A patent protects a single invention and is limited in time and space. Therefore, each invention requires a patent.
An invention can consist of a product, a process, or even an application.
Conditions for patentability
In principle, to be patentable, an invention must meet three cumulative conditions, namely:
– Being new. The condition of novelty is essential. Indeed, the voluntary or involuntary disclosure of an element of the invention before the filing date of the patent application is sufficient to cause the latter to lose its innovative character. It is important to ensure that the innovation remains confidential before filing.
– Presenting an inventive step. This involves determining whether a person skilled in the art can realize the invention from the synthesis of knowledge included in the state of the art. The state of the art consists of everything that has been made accessible to the public, before the filing date, by a written or oral description, use, or any other means. The content of patent applications with an earlier filing date but not yet published destroys novelty but does not prejudice the inventive step.
– Being subject to an industrial application. The object of the invention must be capable of being manufactured or used in industry. It is also important to check if the innovation can be the subject of a patent application and to ensure that it does not infringe on third parties.
It is understood that certain innovations, by their nature, cannot be patentable (discoveries, scientific theories, information presentations, methods for therapeutic and surgical treatment, ideas…).
Why? Because a discovery enriches Knowledge while an invention additionally provides a technical solution.
Note that software inventions are patentable under certain conditions.
NB: It should be clarified that the patent and publication are not at all opposed; however, the publication must take place after the patent application is filed, provided that only what is contained in the application is disclosed.
The patent granting procedure:
Various persons may intervene in a patent filing application:
– The inventor: to be qualified as an inventor, one must provide a substantial contribution to the realization of the invention. Therefore, simple interventions are not taken into consideration.
What about the employer who asks their employee to perform a service. The employer of the inventors holds the economic rights to the invention. However, it happens that the employer is not the sole holder.
– The applicants: These are the persons who actively participate in the life and exploitation of the patent. These persons bear the costs associated with the filing.
These persons can be the inventor’s employer, contractual partners, or even laboratory supervisors.
– An inventor can call upon an Industrial Property Consultancy Firm. The latter’s mission will be to act as a link between patent offices (see below) and the holder’s valorization services.
How is a patent obtained?
Generally, to obtain a patent, a patent filing application must be filed with an office authorized to issue it:
– The French patent application can be made at the Institut National de la Propriété Intellectuelle (INPI).
– The European patent application can be made at the European Patent Office (EPO);
This European patent can include several national patents for the countries designated in the patent application.
– The international patent application can be carried out at the World Intellectual Property Organization (WIPO);
Filing an international patent application, known as PCT (Patent Cooperation Treaty), allows for postponing the start of patentability examinations in the designated countries and also centralizing the filing procedure for all signatory countries of the treaty.
NB: The holder who wishes to protect their invention in other countries has the possibility of filing applications, within a 1-year period, “under priority” of the first patent application and thus benefit from the priority of the first filing date.
Once the application has been made, the office will perform all acts relating to the life of the patent, namely:
- Draw up the search report (which indicates any prior art);
- Publish the patent application;
- Send official letters;
- Issue the patent (an administrative opposition phase opens to third parties during which they will have the possibility to oppose the granting of the final title);
- Send reminders for the annual payment of patent maintenance fees (for 20 years after the application was filed).
- Form conditions of the patent application
A patent must include a certain number of cumulative elements:
– A scientific analysis that summarizes the innovation (an abstract);
– A descriptive part that presents the state of technology, the interest of the invention, the scientific content of the invention. The description must be written with great precision because it cannot be modified during the issuance procedure;
– Precise and detailed enough diagrams to explain the invention;
– Any claims that delimit the scope of exclusivity and support the invention.
Patent ownership
In principle, the patent holder is the first applicant. However, someone who possesses the invention in good faith and exploits it without having filed a patent application has a “right of prior personal possession” which authorizes them to continue their exploitation as an exception to the patent monopoly.
Who holds the invention realized by an employee in performance of their mission?
Generally, the employer holds inventions realized by their employee in performance of their mission. However, the inventor is entitled to additional remuneration.
It should be noted that inventions realized outside of their mission belong to the employee.
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The financial aspect
Making a patent filing application represents a significant cost. Indeed, one must account for filing fees, the payment of annuities, and possibly consulting firm fees for patent translations, prior art searches, patent drafting, and procedure follow-up.
Note that a patent owner can lose their rights to it and risks forfeiture if they do not pay the annual fee by the due date.
Sources :
– Patent Cooperation Treaty of June 19, 1970, entered into force in France on June 1, 1978;
– Patent Law Treaty (PLT), signed June 1, 2000 and entered into force April 28, 2005;
– Convention on the Grant of European Patents signed October 5, 1973 in Munich and entered into force October 7, 1977;
– F. Chrétien, Brevet européen à effet unitaire : comment les déposants envisagent-ils de l’utiliser?, Propr. industr., May 2016, p. 18;
– Articles L. 611-10 c. propr. intell. and following;
– M.-C. PIATTI, Commerce électronique et propriétés intellectuelles. L’impact des technologies de l’information sur l’évolution des principes juridiques, RTD Com. 2006, p. 1;
– J.-C. GALLOUX, Notion d’invention : exclusion d’une théorie scientifique, RTD Com. 2004, p. 302;
– Ph. GAUDRAT, L’invention informatique : un débat difficile et contourné, RTD Com., 2005. p. 323;
– P. ROUBIER, Le droit de la propriété industrielle, Librairie du Recueil Sirey, Volume 2, 1954, p. 86;
– Cass. com., 26 Apr 2017, 15-29396 : LEPI Jul 2017, obs. F. Herpe;
– Cass. com., 20 Mar 2007, n° 05-12626: D. 2007, p. 1087, obs. J. Daleau;
– Cass. com., 24 May 2011, n° 10-15760: J. Raynard, D. 2012, p. 520;
– E. GUTMANN, Les revendications du brevet: à la croisée de l’invention et de la découverte, in Droits de propriété intellectuelle, Liber amicorum Georges Bonet, Litec, coll. IRPI n° 36, 2010);
– J. AZEMA and J.-C. GALLOUX, Droit de la propriété industrielle, Dalloz, coll. Précis, 7th ed. 2012.
