Frequently Asked Questions (FAQs)
Below are the some questions frequently raised by UIPC. These FAQs will facilitate the UIPC to explain IP matters to the researchers, academics and students of his/her university. The UIPC are encouraged to submit any further questions to WIPO.
- What is the difference between an invention and an innovation?
- What steps should be taken to protect one’s invention?
- What is the main purpose of a patent?
- What are the advantages of having a patent?
- How long is the term of a patent?
- What is a patentable invention?
- Can you protect an idea?
- Who has the right to a patent for an invention?
- Who has the right to commercially exploit an invention?
- Does a world patent exist?
- Who pays for patent protection?
- Is the information contained in patent documents secret?
- Why does WIPO support the transfer to technology and the promotion of inventions and innovations?
- Should universities be involved in patenting inventions and transfer of technology?
- What are the options for the commercialization of inventions?
- What other forms of intellectual property rights exist other than patents?
What is the difference between an invention and an innovation?
An invention is a technical solution to a specific problem. This means that the invention must relate to the physical world. Inventions are either products or processes. Product inventions include, for example, machines, chemical substances, electronic components, and often also microorganisms, plants and animals that have been made or modified by man. Process inventions include, for example, physical or chemical methods of manufacture, transformation, measurement, control or others useful in production. Only products or processes made or modified sufficiently by man can qualify as inventions. Products or processes already existing in nature are not inventions.
An innovation is the development of a solution to a technical or organizational problem. It may consist of or include an invention, although many innovations, even if commercially valuable, will not qualify as inventions for the purposes of patent law.
What steps should be taken to protect one’s invention?
In order to preserve one’s rights in respect of an invention, one should not publicly disclose nor reveal the gist of the invention before deciding on the options available, taking into account the nature of the invention. If the invention is of such a nature that it can be easily copied, or there is a clear risk that other inventors may independently develop the same (or an equivalent) invention, then patent protection should be considered. A patent is the most reliable tool to protect one’s invention. This might be the case if the invention is, for example, a process to manufacture a particular substance where that process can be inferred and copied by analyzing the substance.
If it is decided that the invention is to be kept as a trade secret, or that a patent application is not to be filed in the immediate future, the invention should not be disclosed to a third party except in the context of a confidentiality agreement. Before filing a patent application, it is advisable to carry out a preliminary search in patent documents in order to check whether the invention or a part thereof, does not already exist.
What is the main purpose of a patent?
The purpose of a patent is to provide protection for technological advances (inventions). It provides an award for the disclosure of the creation of something new as well as for the further development, or refinement, of existing technologies.
The aim of a patent system is to encourage economic and technological development by rewarding intellectual creativity.
What are the advantages of having a patent?
For the period of the patent the patent holder can exclude others from producing, using, and selling the invention claimed in the patent.
How long is the term of a patent?
The term of a patent is typically 20 years from the date on which the application is filed. Although it is not necessarily the same for every country it is now provided by international treaty that the term of a patent has to be at least 20 years from the filing date.
What is the patentable invention?
In general, to be patentable, an invention must fulfill three criteria: novelty, inventive step (or non-obviousness) and industrial applicability. This means that the invention must be new compared to the state of the art on the filing date of the application, that it should not be obvious to a person skilled in the art, in other words, it must represent a sufficient advance in relation to the sate of art, and that it should be applicable in the context of some commercial production. The question whether a particular invention is patentable or not is a matter of national law. Patents may only issue to man-made inventions. In most patent systems, the mere discovery of materials or substances already existing in nature is not considered to be an invention. A plant discovered existing in nature, for example, would not be regarded as an invention. Many patent systems also require that an invention have a technical nature, i.e. that it relates to the physical world. In this respect, pure mathematical or physical formulae, or pure software algorithms would not be regarded as inventions.
Can you protect an idea?
An idea that does not materialize in an invention (i.e. a product or a process) cannot be protected by patent. Ideas may, of course, be kept secret. But secrets can only be protected against their illegal or unauthorized access, use or communication to third parties. If an idea is kept secret and the same idea is developed independently by another person, the fact that the first idea was kept secret will be of no avail to prevent the other person from using his idea. A secret idea is not an industrial property right; it is merely protected against its illegal appropriation or use.
Who has the right to a patent for an invention?
The physical person or persons that make an invention (i.e. the inventors) have the right to the patent for that invention. However, if the inventor is an employee, the ownership of the employee’s invention is usually regulated either by contract or by law. Consequently, the inventor may have to assign the invention to his employer, if his employment contract so provides. Alternatively, the law may provide that it is the employer who has the right to a patent for the employee’s invention. The inventor will nevertheless always retain the right to be recognized and mentioned as the inventor, unless he expressly renounces this right.
Who has the right to commercially exploit an invention?
If an invention is publicly disclosed and no patent for it has been obtained or applied for, anybody can commercially exploit the invention. The only way to have control over the commercial exploitation of an invention is to apply for and obtain a patent. The mere act of inventing only gives a right to a patent for that invention, but if the patent is not actually obtained the inventor will have no control over the commercial exploitation of his invention.
A patented invention can be exploited directly by the patent holder himself or by one or more persons authorized by him. These persons are called licensees. Depending on what the invention is, the exploitation can take place by way of manufacturing or distributing the patented product, or using the patented process for industrial or commercial purposes.
Does a world patent exist?
No, in the current state of the international patent system. Unfortunately, a patent is only effective in the territory (country or region) for which it is granted. This means that patents for the same invention have to be taken out in every country (or region) in which protection is sought.
However, there is an international agreement administered by WIPO, the Patent Cooperation Treaty (PCT), for filing, searching, publication and examination of international applications.
The PCT makes it easier to obtain patents in the PCT Contracting States by providing for the filing of one international application, which may be subsequently prosecuted in the multiple designated national and regional offices of States party to the PCT. However, even under the PCT, the granting of patents is left to those designated offices.
Who pays for patent protection?
The patent applicant (who may be, for example, the inventor, joint inventors or a company to which the patent application was assigned) must pay fees for the filing, search, examination, publication or other procedures relating to the application or the granted patent (e.g. litigation). Once the patent is granted, the patent holder, in most countries, will have to pay annual or maintenance fees in order to maintain the patent in force. Those fees are usually collected by the government entities in charge of granting patents (usually the national/regional patent offices). In addition, fees are usually also due for any professional services required in connection with the patent-granting procedure (patent attorneys, agents, translators, etc.)
Is the information contained in patent documents a secret?
The patent is a kind of contract between the inventor and society. In return for the exclusive right to use the invention during a limited period of time, the inventor has to disclose the invention in the patent application in a manner sufficiently clear and complete to permit a person having ordinary skill in the relevant art to carry out the invention. This also allows the society at large to be informed about the advance in technology. The invention disclosed in a patent application will be kept secret until the patent office publishes the patent application (usually within 18 months from the date of filing, or from the priority date, if the application claims the priority of an earlier application), or until the granted patent is published.
Because an invention must be absolutely new worldwide in order to be patentable, it should not be disclosed before all the required patent applications have been filed in each of the countries and regions where protection is sought. After all the required patent applications have been filed, the invention may be publicly disclosed (for example at a scientific congress or in an article in a scientific journal) without loss of rights. If the invention is disclosed before all the patent applications (or at least the priority patent application) have been filed, such disclosure could effectively interfere with patent applications that are filed for that invention at a later date.
Why does WIPO support the transfer of technology and the promotion of Inventions and innovation?
One of the WIPO’s main objectives, among other important activities, is to promote the recognition of intellectual property throughout the world. Intellectual property right is the protection of a variety of human creations, including inventions. Inventions propel technological development, and this in turn enhances economic growth as desired by WIPO’s members States.
Effective patent protection provides a necessary, although not the only, condition for technology transfer transactions. Indeed, if a recipient of invention-related technology is located in a country where that invention is not patented, the supplier of the technology would need to rely on purely contractual arrangements to guarantee non-disclosure and non-use of the invention by third parties. Such arrangements may present considerable commercial risks for technology suppliers, greater than in circumstances where the transfer transaction can be linked to a patent that gives protection against unauthorized exploitation by third parties.
Should universities be involved in patenting inventions and transfer of technology?
The basic purpose of universities is to generate and transfer knowledge to students, researchers and society at large. In the past many scholars and researchers would just publish their new findings and research results (as part of the academic exchange of new knowledge) and leave it to the industry to commercially exploit such knowledge. Today universities are increasingly conscious that research results in themselves also have a commercial value. Those results can be sold or licensed and their owners can earn benefits from such operations. For that reason, an increasing number of universities whose faculties are engaged in scientific research take steps to protect their findings and research results. By doing so they retain control over the commercial use of their research results. A university that owns a patent may choose to license it or assign it free of charge, or against payment or other consideration.
What are the options for the commercialization of inventions?
The holder of an invention has several options to commercially exploit his invention. Those options include:
Retaining the invention as a trade secret if this is possible, and exploit it directly or license (or assign) the secret to another person.
Obtaining a patent for the invention in the country or countries in which it is to be exploited, and directly work on commercial production using the invention. This can be done, for example, by starting a new enterprise.
Licensing the rights under the patent for manufacturing and marketing to another party; and
Assigning or transferring the patent.
The industrial development and commercialization process of an invention involves risk, particularly financial risk. Therefore, it is highly advisable that an extensive market survey be undertaken about the commercial viability of such exploitation.