Archiwa IP alphabet - 30-lecie JWP

I for Inventive Step (or Inventive Level)

Emilia Wojciechowska — Thu, 08 Dec 2022 11:03:31 +0000

I for Inventive Step (or Inventive Level) – i.e. the second, after novelty, patentability condition assessed by patent office experts during the substantive assessment of the submitted patent application. The inventive level is assessed taking into account a hypothetical person skilled in the art by answering several questions: defining the nearest state of the art (i.e. documents that reveal the most common features with the claimed invention, or solve the same technical problem), indicating the differences between the solution and the nearest state of the art, defining the objective technical problem solved by the invention, determining the technical effect, and determining whether the claimed invention, against the closest prior art and the outlined technical problem, would be apparent to one skilled in the art. The inventive level may be assessed on the basis of several documents, and only documents published (available in the state of the art) before the date of the patent application are taken into account when assessing this premise.

Artykuł I for Inventive Step (or Inventive Level) pochodzi z serwisu 30-lecie JWP.

G for Guidelines

Emilia Wojciechowska — Tue, 20 Sep 2022 09:36:46 +0000

G for Guidelines – are general instructions for examiners working at the EPO, as well as for Applicants and other parties to proceedings (e.g. opposers of granted European patents). The Guidelines were adopted on 1 June 1978 by the then President of the EPO. As of June 2012, the Guidelines consist of eight main parts dealing respectively with Formal Examination (Part A), Search (Part B), Procedural Aspects of Substantive Examination (Part C), Opposition and Restriction/Validity Procedures (Part D), General Procedural Issues (Part E), European Patent Application (Part F), Patentability (Part G) and Amendments (Part H). The EPO Guidelines are updated periodically and the latest revised edition was published in early March 2021. The Guidelines are only general instructions and, for example, the Examination Division may waive their application provided that it acts in accordance with the European Patent Convention (EPC). According to established case law, the Guidelines are not binding on the Boards of Appeal, which is an important factor for the independence of the Boards. As a matter of interest, it is worth mentioning that knowledge of the EPO Guidelines is critical to master (right next to knowledge of the European Patent Convention and the Implementing Rules) in order to successfully pass the qualification examination for European patent attorney.

Artykuł G for Guidelines pochodzi z serwisu 30-lecie JWP.

E for the European Patent Office

Emilia Wojciechowska — Wed, 01 Jun 2022 11:42:13 +0000

E for the European Patent Office – the European Patent Office (EPO) is the executive body of the European Patent Organization, comprising 38 member states, whose main task is to grant European patents. The institution was established in 1973. Besides its headquarters in Munich, the EPO also has offices in The Hague, Berlin, Vienna, and Brussels. Proceedings before the European Patent Office are conducted in one of three languages: English, French, or German, and they result in a patent granted, which – according to current regulations – must be validated in selected member states, among the 38 states mentioned. We will devote a separate definition to the alternative procedure before the EPO (the Unitary Patent) under the letter “J”. Only European patent attorneys included in the list maintained by the EPO are authorized to appear before this body. In 2020, more than 180,000 patent applications were filed at the EPO! (data for 2021 are not yet available). The European Patent Office is one of the largest public service organizations in Europe, with approximately 6400 employees of 34 different nationalities. Out of the total staff, over 4,200 employees are highly qualified scientists and engineers working as examiners in various fields of technology. The EPO is entirely financed by official fees paid by users. In 2021, the organization’s budget amounted to EUR 2.4 billion.

Artykuł E for the European Patent Office pochodzi z serwisu 30-lecie JWP.

D for Date of notification

Emilia Wojciechowska — Thu, 14 Apr 2022 09:39:27 +0000

D for Date of notification – such a date is inherent in each exclusive right. The date of notification is considered to be the date on which a complete application is effectively filed with the patent office in writing or in electronic form. Relevant legal acts, such as the Industrial Property Law, the European Patent Convention or the Patent Cooperation Treaty, set forth in detail what conditions must be met for an application to be considered effectively filed. The date of notification (in the day/month/year format) is not part of the prior art. For example, for a patent application with the date of notification being 14 February 2022, the state of the art will be everything which was disclosed in any way up to and including 13 February 2022 – in other words, for an application filed on 14 February 2022 at 11:55 p.m., everything which was disclosed on that day before noon will not constitute an obstacle for a patent to be granted. The date of notification is the date starting from which the duration of a specific right is counted: 10 years for trademark protection, 20 years for patent protection, 25 years for industrial design protection or 10 years for utility model protection.

Artykuł D for Date of notification pochodzi z serwisu 30-lecie JWP.

C for a crucial role of technical features

Emilia Wojciechowska — Tue, 22 Mar 2022 09:08:45 +0000

C for a crucial role of technical features – patent claims/protective disclaimers are the part of patent filing documentation that ultimately specifies the scope of protection for which a patent or a protection right for a utility model is granted. This scope is defined by providing technical features of a solution relating to the composition or structure of, for example, a product. As for a utility model, the technical features of the solution specified in the application should be depicted in the drawing. When thinking about a new solution that we would like to protect by means of an exclusive right (a patent for an invention or a protection right for a utility model), such a solution should be described with the use of technical features. It is technical features that define the exclusive right and by selecting appropriate technical features to be included in a patent claim or protective disclaimer, we can provide a broad or narrow scope of protection. Paradoxically, the more technical features define a given solution, i.e. the more features are used to specify the invention/utility model, the narrower the protection arising from the right so granted. The fewer features that distinguish the solution from the state of the art, the wider the scope of the exclusivity obtained.

Artykuł C for a crucial role of technical features pochodzi z serwisu 30-lecie JWP.

B for Being Involved in Patent Examination

Aleksandra — Wed, 23 Feb 2022 11:31:59 +0000

B for Being Involved in Patent Examination – for years, JWP Patent and Trademark Attorneys has been raising awareness among scientists and entrepreneurs about the patent examination and the importance of conducting the right research at the right time as an important strategic and even business tool. Many types of examination can be distinguished, but from our perspective, knowledge of three basic types is enough to feel more confident in the matter of research. These are the state-of-the-art examination, the patentability examination, and the patent clearance examination. The state-of-the-art examination is the examination that determines the closest state of the art for a given solution. The patentability examination is the examination that verifies whether a particular solution is patentable, i.e. in particular whether the solution is new and has an inventive step. The patent clearance examination, on the other hand, is the examination of whether a given solution infringes the exclusive rights of third parties. This examination is usually carried out for solutions for which an exclusive right has already been granted, or which are introduced to a given (geographically defined) market. Such a level of knowledge should be enough to sensibly decide at what stage of development our solution is and what type of examination should be selected. However, it is worth commissioning a professional attorney to conduct the examination itself.

Artykuł B for Being Involved in Patent Examination pochodzi z serwisu 30-lecie JWP.

Industrial Property Alphabet – A for the Stockholm Act

Aleksandra — Mon, 21 Feb 2022 12:23:44 +0000

To mark the 30th anniversary of its activity, JWP Patent and Trademark Attorneys has prepared a collection of key terms to provide all those interested with an accessible and alphabetically-ordered introduction to the most important terms from the world of industrial property.

Periodically we will be unveiling, from A to Z, new entries dedicated to patents which will allow you to navigate more freely through the complex area of exclusive rights.

A for the Stockholm Act – not many people know that this act, drawn up in Stockholm on 14 July 1967, is the latest (as we would call it today) update of the Paris Convention for the Protection of Industrial Property. The Paris Convention of 20 March 1883 is one of the most important documents that lays the foundation for the whole notion of industrial property. It established the International Union for the Protection of Industrial Property, to which Poland acceded in 1919. According to the provisions of the Convention, each Contracting State must grant the same protection to nationals of other Contracting States that it grants to its own nationals. It is the Paris Convention that created the right of PRIORITY, which is of key importance to all concerned parties. In the 1883 document, we can read that „any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, shall enjoy a right of priority in other Contracting States”. It is worth to keep this name in mind so that you can impress with your knowledge of the historical background of industrial property when among the employees of the research and development department or when attending a supervisory board meeting.

Artykuł Industrial Property Alphabet – A for the Stockholm Act pochodzi z serwisu 30-lecie JWP.