• Conditions d'obtention des brevets - Conditions for obtaining a patent - Voraussetzungen für die Erteilung von Patenten

Conditions for obtaining a patent

Inventions that are new, involve an inventive activity and that are capable of industrial applicability can be protected for a maximal duration of 20 years by means of patents.

The invention can for example consist of a new product, a method, a manufacturing process etc. The criteria of novelty is absolute; any public disclosure of the invention, even orally and made by the inventor, prevents it from being subsequently patented. It is thus essential that the invention should remain absolutely confidential until the patent application has been filed and that it should not be disclosed to anyone except under written Confidentiality Agreement. The invention should not be commonplace and should not be obtainable by an obvious thought process. However, the inventive activity required for securing a patent is limited; great inventions are rare, and technological progress is usually a matter of small successive steps. When such an advancement, even a relatively simple one, brings a competitive advantage to its initiator, the company should consider the possibility of monopolizing it by a patent or any other appropriate type of protection.

The industrial applicability can be realized in any type of industry, including agriculture. However, methods of surgical treatment, of therapy and of medical diagnostics are not deemed to be applicable industrially and are thus excluded from patent protection. Discoveries, scientific theories, aesthetic creations, game rules, economic activities, the presentation of information etc. are generally not considered to be inventions.

Software as such cannot be protected in Europe; jurisprudence has however evolved so that many inventions implementing computer programs may now be the object of valid patents in Europe.
The structure of a patent is subjected to rather strict rules. In general, a patent will comprise the following component parts:

An abstract, that allows the patent to be found more easily, especially in a database.

A description, generally comprising one or several figures and describing in detail and in a technical language an embodiment of the invention. The description should allow the one skilled in the art to reconstitute the invention.
A set of claims, defining in a more legal language the sought scope of protection, which generally encompasses the embodiment indicated in the description as well as other possible variant embodiments that could be adopted by competitors. The published application or patent further comprises a title page containing bibliographical indications.

The claims

For the applicant, the claims constitute the most important part of the patent. The scope of protection granted is determined by the claims and it is thus the wording of the claims that will determine whether a competing product constitutes an infringement of the patent.

A set of claims generally comprises at least one independent (or main) claim as well as several dependent (or auxiliary) claims. Claim 1 is always an independent claim. The dependent claims always refer to an independent claim or to another dependent claim.

Example: A claim of the type “Device according to claim 1, characterized in that…” is a dependent claim, since it refers to claim 1.

Interpretation of the independent claims: The protection granted by the application is determined by the independent claims. A device or method is considered an infringement of the patent if it comprises all the characteristics of at least one of the patent’s independent claims. All the patent attorney’s efforts thus aim to find a wording for these independent claims that covers not only the embodiment used by the applicant but also embodiments that could be implemented by competitors, whilst distinguishing as clearly as possible from the known prior art.
A set of claims can also comprise several independent claims that can be of a different category. An invention in the field of chemistry, for example, can comprise an independent claim for a new product and another independent claim for a method for making this new product. An invention in the field of electronics can include an independent claim for an encoder, another independent claim for an associated decoder and a third independent claim for the coding method used.
The dependent claims must be read and interpreted only in combination with the claims on which they depend. Their scope is thus always more limited than that of the main claims; they cannot be infringed if the claims on which they depend are not infringed. Their function is first and foremost to serve as fall-back strategy: in case the novelty or the inventive step of the main claim has been challenged, the applicant has the option of limited the protection to that afforded by the dependent claims.

The claims may be drafted in one or two parts:

Two-part claims: the form in two parts is prescribed for European and PCT application “whenever it is appropriate”. It is rather inadvisable in the USA.

Two-part claims comprise a preamble and a characterizing part separated by the expression “characterized in that” or “characterized by”. The preamble recites the claimed characteristics of the invention that have already been disclosed in a single prior art document. The preamble thus generally corresponds to the prior art that is closest to the invention. The characterizing part contains the new characteristics of the invention. The invention involves an inventive step only if the one skilled in the art were not able, through an obvious step, to also use these characteristics. The claim is considered infringed only if all the characteristics of the preamble AND those of the characterizing part are copied. A short claim, containing a minimum of characteristics, thus generally enjoys a greater scope of protection than a claim containing more elements.

Single-part claims: One-part claims make no explicit distinction between the known characteristics of the closest prior art and those that characterise the invention. The claims will advantageously be drafted so as to make it possible to determine as easily as possible whether a competing product constitutes an infringement or not. A special effort will thus be made to include first and foremost characteristics whose presence or absence will be easy to ascertain. It is generally preferably to adopt the single-part claim structure in those states that do not require a two-part structure, notably in the USA. The two-part claim, in fact, contains an implicit acknowledgement by the applicant that the characteristics of the preamble are already known; it may prove difficult to convince an examiner that a sufficient inventive activity is provided solely by the additional characteristics of the characterising part.

What file format is to be used for the figures?

A drawing is worth a thousand words! This is particularly true for patents or designs, where the quality of the figures is often critical in the scope of protection afforded to the patent.

Drawings used in patents and designs must however comply with strict standards for example in terms of the margins to be used, the thickness of the lines, the texts and numbers included in the figures, the numbering for the pages and for the figures, the use of colours and greyscale etc. As these standards are different from those generally used for technical or advertising drawings, it is necessary in nearly all cases for our draftsperson to create new figures. In order to reduce the costs and risks of error, it is however preferably to take over figures that already exist in electronic form and to modify them rather than starting from a blank slate.

Hereafter is a non-exhaustive list of the file formats that we can generally take over: Autocad: .dxf, .dwg SolidWorks: .sldprt / .sldasm / .slddrw Corel Draw: .cdr Adobe Illustrator: .ai Inventor: .ipt, .iam Catia Graphics: .crg Pro E: .prt, .xpr, .asm, .xas Solide Edge: .par, .psm Cadkey: .prt, .ckd Unigraphic: .prt Powerpoint: .ppt

In case of doubt, please do not hesitate to contact one of our patent attorneys.

costs for obtaining protection

The overall costs for obtaining a patent are constituted of several components and can vary considerably according to the invention and the chosen geographical coverage.

The costs for the first patent (patent issued from the priority application) will comprise costs for preparing and filing the application, various procedure fees and grant fees, including translation costs in the case of a European patent. Furthermore, annual maintenance fees must be paid after grant of the patent in order to keep the patent in force during a maximum period of 20 years.

At P&TS, the costs for preparing and filing the application are usually situated around CHF 4’000 for a simple application filed in Switzerland and up to CHF 15’000 or more for a complex international application preceded by a preliminary search. The costs incurred later during the course of the procedure will depend mostly on the results of the search report and on the ease with which the patent can be obtained. At each step of the procedure, we will gladly supply a cost estimate for pursuing the procedure.

The costs for obtaining patents abroad vary according to the countries. Translation costs, which often constitute an important portion of the total costs of obtaining protection of an invention on an international level, must also be taken into account. These costs are incurred generally 12 months after the priority date but can be deferred up to 30 months in the case of an international PCT application.



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