Everything you need to know when obtaining a patent

3 January 2019 12:05 pm Views - 1720

In the rapidly developing world, inventions are like mushrooms blooming overnight in the fields of science and technology. An invention is a practical solution to a problem on the field of technology and it could be in form of a process or a product. Hence, without doubt, it is important that the inventor has his rights in relation to his invention protected from the competitors. So, it is very useful to learn the importance of a patent. 

A patent is a licence issued by the state to an inventor. Under a patent, the state secures the right to exclude others from making, using and selling the invention of an inventor for a period of 20 years from the date of application for the patent. The main purpose of a patent is to protect and safeguard the inventors and the benefits resulting from the inventions, thereby providing incentives encouraging further inventions and promoting investments. 

Next, let us look at what can be patented. An invention that is new, industrially applicable and involves an innovative step can be patented.

Moreover, a patent may be granted by the state to an improvement of a valid patented invention. But, at this step, it is advisable to negotiate with the holder of the first patent, prior to use, as there lays a possibility of a violation of rights of the owner of the first patent when obtaining a patent for an improvement. 

How can an inventor obtain a patent? When answering this question, it is important to bear in mind that a patent can be obtained locally and internationally. Looking at the procedure to obtain a local patent, the first step is to file an application at the Intellectual Property Office using the prescribed form PI. This application is a simple application that requires details such as the title of the inventions, information of the inventor, the fee paid, etc.

Thereafter, a document should be submitted with the application, which describes the invention clearly and completely along with the claims and the prescribed fee. Next, a search report prepared by an International Searching Authority or alternatively the applicant may request the IP Office to refer the application to a local examiner for a search report. After this step, the IP Office will examine the application as to the requirements of the IP Act. If the formal requirements are fulfilled along with a search report, the patent will be issued. 

Moving on to the protecting inventions abroad, it should be highlighted that a patent is valid only in the country it is granted. But, as Sri Lanka is a member state to the Paris Convention for the Protection of Industrial Property, our citizens can obtain patents for their inventions in any member country to the Paris Convention. But this will be obtained under the national law of that particular country. 

An applicant can claim priority under this convention for the protection of industrial property in its member countries, which means that claiming the effect of initial filing date in subsequent filing in other member states. 

Moreover, all Sri Lankan nationals or residents can apply under the Patent Cooperation Treaty governed by the World Intellectual Property Organisation in Geneva. This application is known as the PCT Application and it has the same effect as a national application filed in the designated countries. 

A patent is valid for 20 years from the date of filing. The patent must be renewed annually from the expiration of the second year from the date of grant by paying a fee. 

While new inventions can be patented, things such as discoveries, scientific methods and mathematical methods, plants, animals, microorganisms other than transgenic micro microorganisms and an essentially biological process for the production of plants and animals other than non-biological and micro-biological processes, schemes, rules or methods for doing business, performing purely mental acts or playing games, methods for treatment of human body by surgery or therapy and diagnostic methods practiced on human or animal body and inventions, which are necessary to protect public order, morality including human animal or plant life, health or to avoid serious prejudice to environment, are not patentable. 

Patents secure the rights of an inventor and help him/her to establish a monopoly in the field. It also contributes to the economy of a country by encouraging investments and for the development of technological developments. 

Therefore, it is justifiable to state that it is the prime duty of the inventor to secure the rights of his invention by way of a patent. So, it is advisable to apply for the issuance of a patent for your invention as soon as possible.

(Ian J.F. Fernando is an Attorney-at-Law and Bhagya Silva and Chathura Nuwan Herath are Legal Researchers at Derek Fernando Associates)