An Introduction into Patents

with PER.C6 example

current version of 10 January 2025

1 Introduction

1.1 To the audience

This reader presents an introduction on the use of know-how and intellectual properties (IP) and its benefits for students in science, engineering, medical and business courses. The basic concepts and definitions of IP will be treated and also their use and purpose will be described.

The different topics of IP are explained with an example relevant to your background.

Those interested will find additional information in the appendix links by following the links.

1.2 Every day IP

Chances are that you are using products or services appropriated by a variety of intellectual property rights (IPR) on a daily basis, eg. brands, designs, patents, copyrights.

Many of the products that you will buy or use daily are from a certain brand. Such a brand makes you recognize the product and the manufacturer. For example the brand Coca-Cola for cola. On the other hand manufacturers and organisations use their brands to market their products and services.

Next to brands, organisations have their tradenames registered at the Chamber of Commerce.

The book you are reading or the music you are listening to are works made by an author or musician. These makers would like to be rewarded for the efforts put into the making of their work. You are therefore not allowed to copy this work without their permission since it is copyrighted.

In the development and production of bicycles and cars there are many proprietary technologies. Manufacturers of these product would like to earn back their investments in research and development by using patents.

When you are already developing products yourself now or in the future and when involved as entrepreneur or manager you will have to work with different kinds of IP. As a student it is therefore useful to acquire sufficient knowledge of IP for your future career. Even during studies you it can be worthwhile to use them for many reasons, for example for design assignments.

1.3 Why do IP rights exist?

Several hundred years ago the use of intellectual property rights was hardly known. At the beginning of the book printing technology it became possible to copy and disseminate works of literature far more easily. From that moment authors and publishers started to feel the need to appropriate the rights for the production and distribution of these works. With new technologies during the Industrial Revolution mass production in large quantities became feasible for products and devices. This gave rise to a growing interest by manufacturing companies to appropriate trademarks, logos and patents for their products and inventions.

The modern patent in Venice

During the fifteenth century, Venice was a rich and flourishing city. One of the reasons for this prosperity was the stained glass produced on the island of Murano.

This was a rare and expensive product that became an important economical asset for the city.

However, the formula for making coloured glass was known only to a few people: the glassmakers of Murano.

The Senate of Venice began to worry about the possibility that the glassmakers might die or flee to other countries, thus losing this precious secret.

To avoid such hypothesis, Venice offered the glassmakers to train some apprentices sent by the city. However, the glassmakers refused because accepting the offer would have meant that they loose their monopoly and create potential competitors.

Understanding Murano’s concern, Venice offered, in exchange for the secret, an exclusive right for a limited time to guarantee the glassmakers monopoly. The document granting this right was called a “patent”, from the Latin verb “patere”, meaning to make known.

Thanks to this, the craftsmen accepted the offer and Venice managed to keep the secret, so that we can still enjoy the beautiful coloured glass of Murano today.

In 1474, Venice published the first patent statue in history, to regulate the matter. See figure 1.

Figure 1: The Venetian Patent Statute, enacted by the Senate of Venice in 1474, is widely accepted to be the basis for the earliest patent system in the world.

The general concept behind the use of intellectual property rights is that the creator or manufacturer can apply for a temporary exclusive right hence appropriating their (often intangible) assets and stopping competitors. By doing so the IP owner acquires the possibility to exploit the production of these assets which are otherwise easily copied or manufactured by competitors. So, on the one hand intellectual property rights incentivize persons and innovators who invested both time and money to develop a new product. While on the other hand competitors cannot copy the product and sell it at a cheaper prices without making such investments.

Consumers of those products which have been appropriated with intellectual property rights may have to pay a higher price. Without these intellectual property rights competitors would have been able to sell the products at a lower price. For society at large the introduction of IPR is not only to have all products available at the lowest prices, but to have access to new products and innovations. While using IPR innovative companies are temporarily in a position to charge higher prices thus enabling a return on (earlier made) investments. This is shown in figure 2.

Figure 2: Use for business and society

1.4 Well known IP

Companies, entrepreneurs, authors, engineers, developers, scientists and inventors can use a variety of IPRs like copyrights, trademarks, patents, trade names, logos, designs, databases, plant breeders, integrated circuit layout and trade secrets.

Some of the well known IP rights are:

Copyright

Will give the creator (author) at the end of the creation automatically global protection for original works like text, music and images. Copyrights limit free distribution of the work.

Trademarks

After registration, the trademark owner receives the exclusive right to use the trademark for certain goods and services. A trademark right can be used to take action against competitors who want to exploit the same or similar trademark in the same market.

Patents

After the application, registration and examination of a patent, others can be excluded from the commercial exploitation of the patented invention.

Tradenames

Trade and company names are used to make a company known to customers in the market and ensure a reputation and thus customer loyalty. Another company may not cause confusion with its trade name by using a trade name that is too similar to a previously registered trade name.

Designs

After registration, the design holder receives the exclusive right to use the design. A design right can be used to take legal action against competitors who wish to exploit a similar design.

1.5 Frequently used IP for innovations

This document will not describe the legal aspects of IP. See the links to several articles of different laws in Parts of Patent law. We will describe how to use IP, and more specifically for innovations. An overview of the importance of the different IP rights for innovations can be seen in the following table.

Effectiveness of appropriability mechanisms for product innovations; % product innovations for which deemed effective.

Sector | n | Secrecy | Patents | Other IPRs | Lead time | Complementary sales services | Complementary manufacturing
Food | 89 | 59 | 18 | 21 | 53 | 40 | 51
Petroleum | 15 | 62 | 33 | 6 | 49 | 40 | 36
Basic chemicals | 35 | 48 | 39 | 12 | 38 | 46 | 45
Drugs | 49 | 54 | 50 | 21 | 50 | 33 | 49
Machinery tools | 10 | 62 | 36 | 9 | 61 | 43 | 35
Computers | 25 | 44 | 41 | 27 | 61 | 40 | 38
Electrical equipment | 22 | 39 | 35 | 15 | 33 | 32 | 32
Semiconductors | 18 | 60 | 27 | 23 | 53 | 42 | 48
Medical equipment | 67 | 51 | 55 | 29 | 58 | 52 | 49
Autoparts | 30 | 51 | 44 | 16 | 64 | 45 | 53
All | 1118 | 51 | 35 | 21 | 53 | 43 | 46

From: Scotchmer (2004) Table 9.1, page 260.

Source: Cohen, Nelson, and Walsh (2000), table 1. Note: Each number is a mean response, representing the percentage of product innovations in the row category for which the type of protection in the column is deemed “effective”. The response categories are <10%, 10%–40%, 41%–60%, 61%–90%, >90%.

In general we can see that secrecy (including what we call know-how) is one of the most frequently used appropriability mechanisms. At the same time patents are important in the sectors drugs and medical equipment.

Other IPRs (for example trademarks or designs) are less frequently used for innovations, but are of course very important for sales and marketing.

1.6 An example

In this section we introduce the example which will be elaborated in next chapters.

Here, the main example is the research into and subsequent development and commercialisation of the PER.C6 technology. This research is about a vector to produce adenovirusses and a cell line to encapsidate the virus. In the years between 1992 and 1996 scientific research at Leiden University lead to the development of this technology for future use in gene therapy. Already in 1984, prof. Dinko Valerio started scientific experiments into this technology as part of his work as PhD student at Leiden University. He was one of the pioneers in the Netherlands and after his return from the USA he incorporated Introgene plc. together with prof. van Bekkum. Next, the company started a series of research cooperation projects with prof. Van der Eb and dr. Hoeben at Leiden University focussing on the development of cell lines with improved features. During the experiments they showed that several virusses, eg. adenovirusses, can be used for genetherapy as well as for a production platform of multiple vaccines ands medicines. Formerly it was known that adenovirusses can be used for gene therapy however their research enables certain improvements. PhD student Frits Fallaux and dr. Bram Bout were involved as scientists and inventors in a number of those experiments.

The invention concerns the production of adenovirusses which can be used as vectors and a cell line to package the virus. The idea behind the invention is to solve problems of existing production processes of adenovirusses as a vector. See figure 3 for the functioning of the Adenovirus as a vector. In 1996 Leiden University applied for a patent (WO 97/00326) for this invention.

Figure 3: Gene therapy using an adenovirus vector

Various studies from the World Health Organisation WHO show that some four percent of the global population suffer from gene related diseases. As such, the PER.C6 technology developed at Leiden can offer an interesting possibility to help solving this serious unmet societal need and health related problem. On the other hand it is widely acknowledged that the pathway from research, development, clinical trials, market authorisation for a therapy or the manufacturing of novel vaccines and medicines is extremely expensive and seldomly executed by one company only. Therefore, in last decades it has been become common practice that scientists at universities and medical centres cooperate with pharmaceutical and spinoff companies for the development of such medical services and materials. The example of Introgene plc. can be considered as an interesting case by itself. Next we see that IP and clear instructions on IP ownership and management often play an important role in the process and development of novel drugs, vaccines and therapies. And in particular patents and trademarks.

The most important patent application for the PER.C6 technology can be found and read as WO 9700326. This patent application will be used for further explanation about the use of patents in Patents.

The idea to use adenovirusses for gene therapy has been published earlier. But the new celline of the research group of Valerion has several advantages compared with existing technologies:

The chance that competent virusses for homologous recombination will grow is reduced considerably by not having overlapping sequences between vector and adenovirus sequence in the cell line,

There can be 38 kb pairs of strange DNA induced into adenovirusses. Previously it was limited to 7 kb.

The use of a adenovirus is not limited to one host by host range mutation,

The expression of the toxic adenovirus protein E2 is controlled by

mutation which restricts that proteïne E2 to bind to DNA within certain temperatures only

induced promoter

expression of viral proteins in transduced cels, avoiding inflammations in cells.

Viral replication proteins E1A and E1B only appear in packaging cells PER.C6 (PGK-E1-Retinoblasts) and not in the adenovirus construct.

The adenovirus only consists of a minimal set of parts: encapsualtion signal, inverted terminal repeat, mutant E2 protein and target DNA.

2 Know-how and trade secrets

2.1 Introduction

Know-how and trade secrets are important assets for companies and public research institutes.

Many entrepreneurs consider know-how as one of the most valuable assets of their company. Hence and although know-how is not a IP right as such we will go into know-how in this chapter.

2.2 What is know-how?

Know-how is defined by certain knowledge and skill set obtained by a limited number of specific persons involved in manufacturing, marketing and sales processes of an organisation. By its very nature know-how is not accessible freely or without certain limitations to third parties and persons.

General knowledge in textbooks available to everybody is not considered know-how. See for an example of this definition of know-how Nieuwenhoven Helbach, Huydecoper, and Nispen (2002) chapter 5 (in Dutch).

In this context, third parties can be defined as organisations or persons who do not have access to certain know-how. In general very few persons within an organisation have access to specific know-how. Third parties and outsiders will always have to invest considerable time and resources to build up comparable know-how. As such, we conclude that know-how in an organisation is kept secret from third parties.

It is evident that persons must possess certain kills and knowledge in order to fulfill certain processes and tasks, for example the design and assembly of a product, the draft of an algorithm, the acquisition and analysis of data. Therefore know-how consists of the combination of technical skills, the processing of information thereby using technical knowledge. Besides, non-technical knowledge like market data, marketing techniques, information about rules and regulations within a political context, data about relations and networks are also part of the know-how of organisations.

Investments in research and development contribute to the formation of valuable know-how, as well as working experience of and technical courses for personnel. In this case the acquisition and storage of information like technical data, equations, standards, specifications, processes, methods, recipes, drawings and their use by professional personnel.

2.3 Using know-how

Many corporations, public research institutes and multinationals have a division with IP specialists or in house council. They make sure that procedures, certain rules and codes of conduct concerning IP and know-how are in place and will be followed upon. Such procedures and conduct are often mentioned explicitly in labor contracts. An example of this is a non-disclosure clause.

But also at small and medium sized enterprises or startup companies without in house IP specialists or council it is important to implement internal procedures and codes of conduct to deal with IP and know-how. For those companies which supply parts, products or processes in a supply chain these procedures and codes of conduct are even more important. Without them such companies may run the risk that employees share too much essential know-how with customers or clients.

2.3.1 Using know-how by the company itself

The use of IP rights enable companies to have a positive return on investment in their research, development, marketing and manufacturing with a healthy commercial margin. On top of this, it is important to realise that the combined use of know-how and patents contribute to the successful introduction of technical innovations in the marketplace. In this process know-how of specialists is essential to deliver products and services to customers and clients. In the economic domain the concepts and use of know-how and patents show a striking number of resemblance. Both are a source of (technical) knowledge enabling the owner and user to use technical capacities and developments and thereby a head start or lead advantage which is not available to competitors. The owner of the know-how can exploit this technological advantage in the marketplace, for example in certain manufacturing processes.

2.3.2 Using know-how by third parties

Many companies do not have manufacturing plants in all countries over the globe. In those countries where there is an outlet for their products or services but where they are not operational themselves in terms of manufacturing, marketing and sales it may be profitable to act as a licensor and work with license agreements. These license agreements are often struck for both patents as well as for know-how. The temporary, exclusive nature of patents provide either the patentee or the patent licensee protection against infringement by competitors. On the other hand, license agreements between the licensor and licensee determine the scope and field of use, geographical area, region or country, time frame in years and royalties or milestones to be paid.

2.4 Rules and regulations

Rules and regulations for know-how can be found in the EU directive 2016/943 and in the Dutch Act of Trade secret protection.

This act rules the protection against unlawful public use of know-how and business information. This combination of know-how and business information is often defined as trade secrets.

According to the act and the directive a company or organisation must comply to certain conditions with regard to the information which:

is kept secret because it is not common knowledge or accessible by third parties,

has value in relationship with the trade or transactions of the company or organisation, and

is kept secret by the company or organisation by means of certain measures (for example a registration system and limited accessible for persons only on a need to know basis).

All in all it must be clear that know-how is a personalized asset. At the end of a labor contract the know-how does not automatically disappear (see figure 4). This situation raises the question if know-how can be claimed by the employer at all?

Figure 4: Know-how: There it is and there it goes.

3 Patents

3.1 Introduction

With a patent you become the owner of your invention.

Thus a patent is property which you can use:

preventing others to use your invention, or

giving permission to others to use your invention.

The concept of property is defined under (inter) national law and regulations. This is also true for patents since patents are part of industrial property rights. Using a patent in a specific country will always depend on the framework of laws and legislation in that country.

Since the use of an invention is often not limited to a particular country only, it can be profitable to use it in other countries as well.

The world of inventions is therefore multinational or worldwide.

Since patents are used on a globally there are several international treaties for patents next to national patent laws. An introduction into the most important international treaties can be found in Patent laws.

Most relevant features of patents are elaborated in following sections.

From Contents patent application, the contents of a patent will be described using the main example (see An example).

3.2 Patent laws and treaties

Every country has its own patent law. In addition, there are often regional or international cooperations through treaties. An example of such a regional cooperation is the European Patent Convention. This European cooperation has ensured that the patent laws in the 38 member states are harmonised. There is also a global treaty for a central worldwide patent application through the World Intellectual Property Organization (WIPO) (193 member states).

The Dutch Patent Act is determined in the Rijksoctrooiwet 1995 (ROW). The Netherlands Patent Office (Octrooicentrum Nederland) grants Dutch patents.

The patent law for European patents is determined in the European Patent Convention (EPC). A European patent is granted by the European Patent Office (EPO). Next they are registered by the applicant in the countries of interest.

The route a worldwide patent application is determined in the Patent Cooperation Treaty (PCT). However, no patent will be granted in this procedure. After this central application, the patent application is continued in the countries or regions of interest.

3.3 Patent rights

Patent law excludes others from commercially:

making,

using,

selling, or

stocking

the invention.

Such exclusivity lasts for a maximum period of 20 years after the filing date of the patent application.

The restrictions that a patent exerts are determined by the legislation of a country in question. These restrictions can therefore differ greatly from country to country. It should be noted that the Treaty of Paris (1883) guarantees a minimum harmonisation.

In Europe, a patent generally restricts the commercial making, use, sale and stocking of the invention, but it does allow to use the invention for one’s own non-commercial use.

So you can build a Ferrari for yourself, but don’t sell it to your neighbour, because that would be a commercial act.

Under certain conditions, it is also permitted to use the invention for scientific and research purposes, without being able to be prosecuted for infringement.

For a precise description of the legal consequences of a patent in the Netherlands, see article 53 ROW (in Dutch).

The patent right can no longer be used if the patent holder, or someone else with the consent of the patent holder, has sold the patented product. You can then do whatever you want with the patented product. This is called exhaustion. This is described in article 53 paragraph 5 ROW.

3.4 Inventions

Most people have a general idea about inventions and inventors. For example, it is:

a new development,

often with a technical background and

an improvement over existing technologies.

More formally, an invention is often described as a technical solution to a problem.

However, an invention is not defined in patent law!

In patent law, the definition of an invention has been avoided by defining accurately what is not considered an invention. For example, theories and mathematical methods are not regarded as inventions hence they cannot be patented.

Furthermore, an invention must be industrially applicable. This requirement of industrial applicability separates patent law from the other intellectual property rights.

The requirements for novelty and inventive step ensure that certain technical developments and inventions are only considered to be patentable inventions, if their subject-matter is not already known by (or disclosed to) the public and is also not obvious.

For a more accurate description of the exceptions on patentability and the basic requirements, see article 52 EPC or article 33(1) PCT.

3.5 Requirements for a patent

There are many requirements that a patent must meet. In addition to formal requirements, there are substantive requirements. Formal requirements are necessary for the proper processing of the application. For example, it is necessary that the patent office can contact the applicant and that the application is written in the correct language.

To obtain a granted patent, the most important substantive requirements are that the invention is:

new,

inventive,

must be sufficiently clear disclosed.

The invention must be new and inventive, otherwise the patent would not contribute to the general knowledge and improvement of technology. It must therefore also be described clearly enough.

3.5.1 Novelty

Novelty means that the invention has not been disclosed. All information that is publicly accessible to the person skilled in the art can be used to determine this. It is an objective criterion, whereby the person skilled in the art is supposed to know all state of the art.

For the assessment of novelty (and inventive step) all information before the filing date of the application is taken into consideration. This is the date of the first filing: ‘first to file’.

Until recently, the United States had a different system: ‘first to invent’. The moment when the inventor conceived the invention was the moment for the assessment of the requirements. Although fundamentally correct, this brings with it all sorts of problems of proof when conflicts arise. That is why in 2011 the United States also switched to the ‘first to file’ principle.

Documents with a later publication date than the filing date can not be detrimental to novelty, nor can they take away inventiveness.

So if not all features of the invention are already known, the invention is new:

An invention shall be considered to be new if it does not form part of the state of the art (see also article 54 (1) EPC or article 33(2) PCT).

3.5.2 State of the art

The state of the art is accurately defined in the patent law:

The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the patent application (see also article 54 (2) EPC or Rule 64 PCT).

This definition stipulates that all information that is publicly accessible in the world is regarded as state of the art. This also includes the documents in a small library in a Chinese mountain village. An important limitation is that the information must be publicly accessible. Documentation, such as technical drawings used in a company, is normally not publicly accessible (due to confidentiality). These documents can therefore not be used to assess novelty.

The filing date is an important date. Anything that has become available public after this date will not affect the patent application. If the same invention is applied for on different dates, the person who applied first has the right to the invention.

Each patent application is published 18 months after the first filing. Thereby it also becomes part of the state of the art.

3.5.3 Inventive step

Inventive step means that it is not obvious for the person skilled in the art to carry out the improvement or modification, for which protection is requested, in the particular solution:

An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art (see also article 56 EPC or article 33(3) PCT).

In the practice of patent examination, this means that all claimed properties are known from a combination of two embodiments, described in one or two documents. The person skilled in the art is thereby also hinted to combine the features of the two embodiments.

or

If the only difference with a known embodiment is an alternative that is obvious to the person skilled in the art, which he knows on the basis of his general knowledge, then the invention is considered to lack an inventive step. For example: To attach something on a wall, a screw is a well-known alternative to a nail.

3.5.4 Clear and sufficiently disclosed

In a patent, the invention must be made public. This must be done in such a way that it can be performed by the person skilled in the art. It is therefore not possible to obtain a patent and keep your invention secret. See also article 83 and 84 EPC and article 5 PCT.

A perpetuum mobile is therefore by definition not patentable.1

Features that are well known by the person skilled in the art do not need to be described. For example: It is not necessary to describe how something should be fastened, if it is clear to the person skilled in the art that it can be either welded or glued.

The person skilled in the art is defined in patent law as skilled in the field of the invention with broad professional knowledge. The skilled person only knows obvious solutions to problems, but cannot become inventive himself.

3.6 Contents patent application

A patent application consists of the following parts:

Description

The description consists of an introduction and a section containing at least one complete embodiment of the invention. The introduction briefly describes what is known in the state of the art, what problem still exists in this known state of the art and a short description of the solution (the invention) to this problem.

Claims

The claims define the scope of the patent protection. These claims are normally written as a set of claims. Usually there is a main claim and several dependent claims. The main claim therefore offers the broadest scope of protection. The dependent claims add further features and therefore have a smaller scope of protection than the main claim.

Figures

The figures are there to clarify the invention.

The claims determine the scope and type of protection. The legal scope of protection of the patent is therefore determined by the claims. The claims are therefore written in a legal style.

For maximum protection, the invention is described as broadly as is possible in the claims. But if the invention is described too broadly, then the possibility increases, that it is deemed not new or not inventive.

3.7 Publication patent application

The patent application is published 18 months after the first filing. Figure 5 shows the front of the publication of the PER.C6 application. After the front page, the pages of the application as filed are published. The whole publication can be seen in WO 97/00326 A1.

This is the A publication (see the A1 code in the publication number WO 97/00326 A1). The A publication is the publication of the patent application. The next publication is the B publication. The B publication is the publication of the granted patent.

Figure 5: Front page of WO 97/00326 A1

Bibliographic data are published on the first page of a patent document. The following data are the most interesting:

Title

gives a very quick indication of the subject of the patent.

Abstract

gives a short summary of the contents.

Figure next to the abstract

is often a figure from the list of figures which is representing the invention.

Other data on the first page are more interesting to check for the legal aspects of the patent document:

Applicant

is the one who has filed the application and the one who will normally have the patent rights.

Inventor

is one person or are more persons who have made a significant contribution to the invention. In US patent law, the inventor is the one who has the rights to the patent. In other countries it is the applicant who has these rights.

Priority data

is the date of the first patent application filed and for which a priority is claimed. The patent rights start from this date. In this case there are two European priority documents (EP 95201611 from June 15 and EP 9521728 from June 26 1995).

Filing date

is the date this application was filed.

Designated states

are all the countries that are requested for patent protection when this application was filed under the PCT. The PCT procedure is used to start a world wide patent application.

Publication date

is the date this application was published and thereby known to the public. Before this date, the application was secret and not known to the public.

Also some administrative data are mentioned, so that the document can be easily identified:

Publication number

is a unique number to identify a patent document. It also gives information on the type of document. The first letters are the country code. In this case WO, which stands for the PCT world wide application. Others are for example EP for the European procedure at the European Patent Office (EPO), NL for the Netherlands, US for the United States, DE for Germany, etc. There is also a kind code. In this case A1, which stands for application published with search report. When an application is granted, then often the B code is used.

Application number

is the number the application gets when it is filed.

There are also classification codes published on the document. These codes are used for searching.

3.8 Claims

The claims determine the scope of protection of the patent. Usually there is a main claim with several dependent claims. The dependent claims define further features of the invention.

The function of the dependent claims is to have more specific claims in case the main claim does not hold up in the examination procedure or in court.

3.8.1 Claim of the PER.C6 example

The main claim of the life sciences and health application is as follows (WO 97/00236 A):

A recombinant nucleic acid molecule based on or derived from an adenovirus having at least a functional encapsidating signal and at least one functional Inverted Terminal Repeat or a functional fragment or derivative thereof and having no overlapping sequences which allow for homologous recombination leading to replication competent virus in a cell into which it is transferred.

The language used in the claim is a lot more complicated than the language you might normally use to describe the invention. The invention can also be described as:

The functional inverted repeats and incapsidated signals of adenovirus DNA which are necessary to replicate in cells.

One reason for this complicated language in claims is that the text is a legal text. The invention must be legally clearly described. This claim describes a functional group which is needed for the therapy. Some special words have been used like ‘based on’ or ‘derived from’ and ‘derivative thereof’ defining on the one hand the invention but not limiting it too much on the other hand.

3.8.2 Test of novelty

As mentioned earlier, a patent must be new. In the search report in the publication of the patent application in WO 97/00326, other documents are shown as state of the art. The examiner uses the search report to assess novelty and inventive step of the patent application. Some older documents describe the features in the claims thereby destroying their novelty.

The following demonstrates how novelty can be assessed. It starts with breaking down the claim into separate features. It is then determined whether these features are collectively known in a prior art document. In this exercise the first patent document mentioned in the search report is used. This document with number WO 94/28152 can be found in WO 94/28152.

Try to find the answer yourself before viewing the answer.

Features claim 1 of the patent application | Where to be found in WO 94/28152 A?
A recombinant nucleic acid molecule based on or derived from an adenovirus | Can be read on page 9; line 1 and 2: We particularly prefer an adenoviral vector according to the invention deriving from the genome of a human adenovirus type 5 by deletion.
having at least a functional encapsidating signal | Page 9; line 28 - 30: According to a particularly preferred embodiment an adenoviral vector according to the invention is derived from the genome of an adenovirus by deletion of the entire adenoviral genome excluding … the 5 and 3 ITRs and all or part of the region of encapsidation.
and at least one functional Inverted Terminal Repeat or a functional fragment or derivative thereof | Page 9; line 28 - 30: According to a particularly preferred embodiment an adenoviral vector according to the invention is derived from the genome of an adenovirus by deletion of the entire adenoviral genome excluding the 5 and 3 ITRs …
having no overlapping sequences which allow for homologous recombination leading to replication competent virus in a cell into which it is transferred | Page 6; line 28 - 33: This deletion aims to reduce or delete the common sequences between an adenoviral vector according to the invention and the adenoviral genome fragment integrated into a complementation line …

When reading the contents of the table it is clear that the main claim cannot be granted due to lack of novelty, because all features are already known from document WO 94/28152.

Besides, the examiner makes an objection regarding that the original claim misses an essential feature. The claim describes a recombinant adenovirus having certain adaptions in order to prevent the occurence of competent adenovirusses. But for the prodcution of the adenovirusses a specific cell line is used, therefore this should be included into the claim.

3.9 Patent application procedures

Patents can be applied for in different countries, but also regionally. In Europe, a European patent can be applied for at the European Patent Office (EPO). A worldwide patent application can be applied for via the PCT procedure at the WIPO.

These different patent application procedures have great similarities, but they are not the same. Therefore, the different procedures are briefly described below. Finally, the procedures chosen in the example are described.

3.9.1 EP patent application

The patent application procedure for a European patent (EP) will be discussed first. This procedure is similar to the patent application procedures used in many countries. Figure 6 shows an overview of the EP procedure.

Figure 6: EP procedure

The application starts with the filing of the application at the patent office. The first substantive response to the request is a search report. The most relevant state of the art is mentioned in the search report. The state of the art mentioned in the search report is used in the assessment of the requirements for a patent. This assessment of the requirements takes place during the examination. In addition to the search report, a written opinion is delivered with the search report. Possible objections to the grant of the patent are noted in the written opinion. Not being new or not having an inventive step are the most well-known objections.

The application will be published 18 months after the first filing date. Up to the publication date, the application is secret. From the moment of publication, the invention is known all over the world.

Before the patent is granted, first an assessment is made whether the application meets all the requirements. If not all requirements are met, a communication will be written by the examiner and sent to the applicant. This communication states the objections against the grant and that the application can thus not be granted. The applicant has the possibility of overcoming these objections, for example, by amending the claims. This round of objections and amendments can take place several times. At the end of the procedure an oral hearing may also be held to come to a decision.

If there are no objections, the application will be granted. There is also the possibility that the application will be refused if the objections are not overcome.

After the grant, the patent must be validated at the national patent offices in the desired countries in Europe. The European patent then becomes a bundle of national patents.

3.9.2 NL patent application

The Dutch procedure for a patent is simpler than, for example, the European procedure. The Dutch procedure is shown in figure 7. A similar procedure is also used in other countries, such as Belgium.

Figure 7: NL procedure

The big difference with, for example, the EP procedure is that there is no examination. The patents are granted automatically together with the publication. Also patents that do not meet the requirements are automatically granted. The information from the search report and the accompanying written opinion must then be used to estimate the extent to which the patent holder can exercise his patent rights. A possible lawsuit will clarify these patent rights.

3.9.3 PCT patent application

The PCT (Patent Cooperation Treaty) procedure, for the worldwide application of a patent, is shown schematically in Figure 8. The single central application for the most relevant countries in the world is the advantage of the PCT procedure over national or regional procedures.

Figure 8: PCT procedure

However, there are 2 characteristics that form an important difference to the other procedures:

The PCT procedure ends after 30 months. At that moment no patent has been granted.

The examination is optional.

The procedure to obtain a patent must be continued in regional or national proceedings. So the PCT procedure is only the beginning of the patent procedure. The optional examination is therefore not a decision to grant or refuse the patent, but an opinion on patentability.

The postponement of the choice of the desired countries and therefore also a postponement of costs is a reason why often the PCT procedure is chosen. Furthermore, the costs of a search report happen only once, because the search report from the PCT phase is used in the later national or regional examination. Otherwise, if parallel applications were made in different countries, these costs would have to be incurred in all the selected countries.

The PCT procedure is therefore of interest if patent rights are expected to be desired in several countries in different regions.

3.9.4 Priority year

It is usually only possible to assess whether continuing the application is useful after receipt of the search report. That is why most countries have the rule that the priority of a previous application from another (or the same) country can be used for 1 year. The applicant then has one year to determine in which countries a patent is also wanted. The later application will then receive the priority date of the earlier application. It is then as if the later application was filed on the date of the earlier application (see also article 87 – 89 EPC or article 8 PCT).

This priority right can also be used for regional procedures such as the EP procedure or for the PCT procedure. It is therefore possible to start with the patent application in one country and then go to the worldwide PCT procedure within 1 year. You then have the opportunity to estimate the usefulness of the patent application before larger costs have to be incurred.

3.9.5 Procedure of the PER.C6 patent

Figure 9 shows an overview of the procedure from the application of this invention up to the grant of the patent.

Figure 9: Procedure of the PER.C6 patent

First two EP applications were filed. These applications were withdrawn before publication.

Within a period of one year after these first applications, the patent application was submitted via the PCT procedure on June 14, 1996. This application used the priority of the two EP applications. In addition to a short summary, this application also contains a more general description, together with scientific articles and results of underlying research.

An application will be published 18 months after filing and can be continued within the priority year through various application procedures. The PCT procedure ends after 30 months.

It has been decided to continue after the PCT phase .

Next it was decided to continue after the PCT phase through various national patent application procedures and the EP application procedure. Through the EP procedure patents have been granted and registered in 19 European countries: Austria (AT), Belgium (BE), Switzerland (CH), Germany (DE), Denmark (DK), Estonia (ES), Finland (FI), France (FR), United Kingdom (GB), Greece (GR), Ireland (IE), Italy (IT), Liechtenstein (LI), Luxembourg (LU), Monaco (MC), Netherlands (NL), Portugal (PT), Sweden (SE) en Slovenia (SL). Via additional procedures the patent has been granted and registered in Australia (AU), Canada (CA), Hong Kong (HK), Israel (IL), Japan (JP), Korea (KR) and the United States (US).

Although we cannot be certain it seems obvious that the market potential for this PER.C6 technology played an important role in the choice to apply for patent protection in those countries.

3.9.6 Granted PER.C6 patent

In the international search report for the patent application of the PER.C6 technology it was clear that three documents were identified that take away the novelty. During examination the originally filed claims have been amended. The granted main claim reads as follows (added text is in italics):

A pakaging system comprising: a recombinant nucleic acid molecule based on or derived from an adenovirus, said nucleic acid molecule having at least a functional encapsidating signal and at least one functional Inverted Terminal Repeat or a functional derivative thereof, and having a packaging cell said recombinant nucleic acid and said packaging cell together comprising all elements which are necessary to generate a a recombinant adenoviral particle comprising said recombinat nucleic acid molecule wherein said recombinant nucleic acid molecule has no overlapping sequences which allow for homologous recombination leading to replication competent virus in said packaging cell.

Several features have been added to the main claim. With these additional features, the claimed PER.C6 technology is deemed to be clearly claimed.

You can see that the scope of protection as described in the claim set of the granted patent is reduced as compared with the patent application. This also indicates the importance of the dependent claims and of a sufficiently detailed and complete description. The claims can then be modified with additional features mentioned in the dependent claims or the description. With these additional features it is possible to overcome the objections to the granting of the patent. These features must already have been described in the patent application, as they can not be added later after the original filing of the application.

3.9.7 Patent family

You have seen from the example that a first patent application resulted in several equally granted patents in the different countries. These patent applications and granted patents have practically the same content. However, they are all published separately.

Most of these publications are included in the patent databases. However, when you are searching, you don’t want to see every publication with the same content separately. That’s not helpful. If you have seen one, you also know the content of the other publications.

In the patent databases, the publications are therefore grouped by family. A family of patents is therefore a collection of patent applications and patents that have the same content. The grouping is done automatically, using the relationship with the first filed application (the priority document) to group the documents. However, this may sometimes not be correct if a non-standard procedure has been followed.

3.10 After grant of the patent

It is only after the granting of the patent that it is clear what the exact scope of protection of the patent is. That is why the patent can only really be used to stop others using the invention once the patent has been granted. However, the work on the patent and also the costs and even risks are not over yet.

The following activities are still required:

You must discover potential infringement of your patent yourself. So you have to pay close attention to which competitor may be infringing.

You must also organize the stopping of a possible infringement yourself. Warn the potential infringer first and perhaps eventually even file a lawsuit. A lawsuit is not cheap. This will have to be taken into account when deciding on the strategy to be followed.

Even if your patent has been granted, you can still lose it. In the EP procedure, an opposition procedure is still possible within 9 months after the grant. During an opposition procedure, third parties can object to the granted patent. In that case, the patent may still be rejected. It is also possible that the patent needs to be modified. This is comparable to the examination of the patent application.

The patent can also be attacked later through the courts by third parties. Also then is it possible that the patent will be declared invalid. This step is usually taken by third parties if they are accused of infringement.

To ensure that patent rights do not continue to exist for an unnecessarily long time, an annual maintenance fee must be paid. If payment is not made, the patent expires. If the patent does not have enough economic value, it is probably better not to maintain it any longer.

It is clear from the foregoing that the publications in the patent databases do not provide information about the status of a patent. This status must be looked up in the patent registers. Each country has its own patent register to administer this status. Some links to these registers can be found in IP Databases.

The energy for a perpetuum mobile has to be created from nothing. This is not possible with the current knowledge of physics. The person skilled in the art is therefore not able to carry out such an invention.↩︎

4 Using IP to make money with technical innovations

4.1 Introduction

In this chapter we will discuss the topic of strategic management and use of industrial property rights in companies. Copyrights do not belong to the industrial property rights, but they deserve a specific place in companies.

Here it is also important to distinguish ideas from inventions and innovations as they are often used throughout or amongst one another. We presented a working definition of inventions in Inventions. While some ideas about new products and services may lead to new research and development and further product development and hence towards inventions, most of them will not be used in the process of innovation management. As such those ideas will not be translated into inventions incorporated into to valuable innovations in certain sectors of industry. Because, on the other hand an innovation is most often regarded as a new and tangible product or service which can be bought by customers in the market place thus creating economic growth.

In the next section we describe a number of common steps in a company’s innovation process as the basis for the use of IP. In the following sections the use and exploitation of IP rights is discussed in the various steps throughout the innovation process.

4.2 Innovation process

Often innovation is a time and resources consuming process going through various phases from first idea, prototyping, validation to market entry of an novel product or process. Throughout that innovation process information about IP can be used in multiple ways. In figure 10 this innovation process is schematically pictured.

Figure 10: Proces from research to sale of product

Many companies start their innovation process by assigning market intelligence to one or more specialists. A state of the art research and necessary steps for product development may require significant time and resources depending on the sector of industry. For long term projects a company can decide to cooperate with a university for example for research ends working with scientists and PhD students. The goal of this phase in product development can be to ascertain proof of concept and bringing an idea for a novel product to the next stage.

At the development stage the product will be shaped towards the final version, although the manufacturing process at full scale is not yet determined. Since experts and engineers from various disciplines are involved in this stage, it can be time consuming and expensive.

Next, decisions about the output level of production and the layout of the factory have to be made during the production preparation phase before the start of a manufacturing process. Costs will usually depend on both the final product and sector of industry. For example building a construction plant for new cars can require initial investments of billions of euros.

Although marketing and sales do not seem a logical next step in an innovation process, they are of key importance. A successful market entry of new products will depend on sales to customers, thereby assuring that all investments and expenditures made earlier (like research and development, production engineering and marketing) will be earned back.

Only the sales of the product generate revenues!

All steps in the innovation process prior to the stage of sales require adequate funding and investments. Those initial investments can be substantial while the return on these investments will be realised through sales. Using IP enables companies to create large enough margins when selling their innovative products to earn back those initial investments. Thus while IP contribute to the return on investment of companies, they can incentivize the market launch of their innovations at the same time. Conversely, intellectual properties only have value if a product is brought to market.

4.3 Using IP information for decision making throughout the innovation process

Using information from available intellectual properties in a timely manner is useful to avoid potential issues after market introduction of the product or to reduce certain costs throughout the innovation process.

In figure 11 the type of information that can be used and the moment of use is displayed.

We distinguish two kinds of analysis to retrieve and analyse such information;

patent landscape analysis

Technical information about known solutions,

Appropriated technical solutions with potential legal effect to take into account,

A market analysis with names of competitors or potential partners

Freedom to Operate (FTO) analysis

Information with potential infringement and risks assessment.

Figure 11: IP information in the process for a new product

4.3.1 Patent landscape analysis

In a global market companies and research organisations are surrounded by competitors and other actors. Using a patent landscape analysis one will acquire more information about them and about their technologies.

In a patent landscape analysis data can be analysed in three ways. Those three ways will generate useful data enabling easier decision making throughout different stages of the innovation process.

A. It is useful to create an overview of known technologies in order to be able to determine which problems and solutions need to be further analysed and developed within your organisation. For this analysis (technical) persons with knowledge of the subject-matter are necessary.

B. Prior to the decision to start developing a new product it is useful to study interesting technologies described by patents and pending patents. Search for possible technical solutions that may come close to the research and development of the organisation. Both technical and (legal) patent knowledge are required for these analyses. Analysing these data from a legal point of view may restrain your willingness to start a new innovation process. However, following decisions will depend on the business strategy of the organisation. Assuming that useful data have been retrieved and analysed one can decide to avoid potential litigation or infringement by redirecting the scope of research and development. A different strategy will be to license in the patents or start working as a partner of the patentee. These strategies will be further elaborated in next sections.

C. In addition to the technical and legal information from a patent landscape analysis, you can also obtain useful data for further market research. You can use this information to discover interesting countries, markets and possible partners for the sale of new products. It is also possible to analyze interesting markets in which you do not want or cannot be active yourself, but can become active through for example a partner.

4.3.2 Freedom to Operate (FTO) analysis

If the product reaches its final appearance at the end of the development phase, it could be useful to make an analysis about the risks to potential infringement of patents of third parties. An infringement of patents of third parties by may seriously hinder or even stop market introduction of a novel product or device. Such a risk assessment is called a Freedom to Operate analysis.

Throughout the patent landscape analysis one has analysed a first indication of potential infringement. But only when the the product is sufficiently specified and defined, an FTO analysis will be able to give sufficient certainty of the risks. Until the moment that your product will become part of the state-of-the-art for example through sales, a publication or a patent, it is still possible that others will get IP rights that will hinder sales of the products. Therefore it is useful to update the FTO analysis.

An FTO analysis requires both technical knowledge and legal IP expertise. Also knowledge about legal and financial risks is required. Due to that multidisciplinary character of such an FTO analysis costs are high. Therefore scope and nature of an FTO analysis better be aligned with the risks and business strategy of the company.

4.4 Strategic IP use

For companies it is important to determine which sort of IP rights are needed for launching successful innovations. Bigger companies and established firms have their own IP division with an IP strategy in place. In line with their strategy they usually start applying for a diversity of IP rights during the various stages of their innovation process. More in depth information about commonly used IP appropriation regimes by economic sector, products and process innovations can be found Cohen, Nelson, and Walsh (2000) and Scotchmer (2004), chapter 9.

We know that IP can enable companies to create enough margins once they sell their products to have a return on their investments thus incentivizing innovations. As IP proprietor the innovator may decide to stop competitors to bring the same product or process at the market price at lower costs or prices. Such mechanism is called a defensive IP strategy and is generally used by companies in the pharma sector. Economic literature about such a price mechanism enabled by product or process patents is described by Greenhalgh and Rogers (2010) in chapters 1 and 2.

Figure 12 describes which kind of IP can be relevant in certain stages of the innovation process.

Figure 12: Generating IP with a new product

During research and development leading to technical innovations patents often are used. When publishing articles about scientific results at universities copyrights are important. Depending on the sector of industry in which a company is operational designs becomes relevant at the stage when the product will have a clearly defined outer shape and the shape needs to be easily recognizable by customers.

Brands are important for the marketing of products and services. In the interest of marketing designs can be used as well.

Know-how (secrets) about certain features in a manufacturing technology process, for example the use of parts are regarded as yet another intellectual property. If a company has a more offensive IP strategy patents can be used for (parts of) the manufacturing process. Such patented processes maybe out-licensed for example by companies in the chemical industry.

4.5 Purchasing and selling IP

In most economic sectors technologies are well developed at such a stage that many parts and processes are now available. Hence, there is no more reason to develop or manufacture those parts or processes. This is a huge difference compared with the upcoming economy at the start of the industrial revolution when manufacturers needed to have all parts and manufacturing processes in house by themselves. For example: the Ford Company wanted to have their own rubber plantations for the production of the tyres.

During the stage of research and development it is useful to analyse which technology, semi-finished products or parts can be purchased from others. Next the company can decide what needs further development by itself. Such strategy is also useful to identify interesting technologies developed by others which may solve technical problems and can be applied for further use. If these technologies have been appropriated in a patent portfolio of others they cannot be use as such without further analysis. Maybe there is a possibility to acquire ownership by assignment or come to terms in a license agreement.

Figure 13: IE in and out

4.5.1 Inlicensing patented technologies

A company may decide to obtain a license for a technology in order to start production and sales easier or faster. The results from a patent landscape analysis or Freedom to Operate may show that such a technology already exists or even that obtaining such a license agreement from a licensor is compulsory given the legal situation. Obviously, further information about the legal status on the validity of the patent in the country where the licensee is operating is then required. For example if a Dutch manufacturer who is only working in the Netherlands needs certain technology the patent from the licensor should be valid in the Netherlands.

The business strategy and market perspectives are key in the decision making process to use licenses on technologies from third parties. But a patent landscape analysis is a useful business tool for companies with limited budgets for research and development. Next the company can contact the original patentee to start negotiations to obtain necessary patent licenses depending on its results. This is called inlicensing and presented as “IP in” in figure 13.

4.5.2 Outlicensing patented technologies

Usually a company decides to start production in a country or for a market by itself or by approaching others. Licensing technologies to others or franchising enables the patentee to do both. Such strategic decisions are often taken at central level of a multinational company or organisation and then followed up at decentral level.

But even if the patentee decides not to commercialise the technology itself, licensing to third parties remains an interesting option for example for organisations without production capacity in a particular country or market or a sales force. This is called outlicensing technologies and presented by “IP out” in figure 13. Outlicensing is often used successfully in cooperation with companies who are already active in certain markets and regions using the outlicensed technology to diversify their supply chain of products. Often the patentee is required to show successful sales records in an established home market for its patented technology.

4.5.3 Using patents in IP strategies

Depending on business strategy and use of IP a company can decide to outlicense their patent portfolio enabling others introducing new products or using manufacturing processes. Thereby allowing other companies to generate revenues without prior investments (in research and development, manufacturing, marketing, etc.) which were made by the patentee. This is called an offensive IP strategy which maybe more relevant for companies with products based upon a platform technology or compound with a large and diverse scope of applications.

On the other hand, companies may have a defensive IP strategy in the markets thereby stopping competitors selling look alike products to customers at lower prices. A large portfolio of nationally registered patented products in many countries is usually a prerequisite. Such a strategy may be relevant for companies with patented products based upon very narrowly defined technologies and compounds which can easily be copied or circumvented.

Which IP strategy a company can use will depend on its market position at present and foreseeable future versus those of competitors. A patent landscape analysis gives interesting insights and a global overview on certain technical developments over the years. Such information is useful to determine the market position as defined by patents and can contribute in the decision making process which IP strategy best be followed. At the same time with this analysis one can retrieve information about the patent strategy of competitors.

4.6 Example of IP use of the PER.C6 technology

Crucell has used various IP rights to commercialize their PERC6 technology. In addition to their patents several IP rights like trademarks also played an important role. Following paragraphs describe the strategic use of their IP rights.

4.6.1 Patents

4.6.2 Purchase and assignment of patents

5 Using IP for specific topics

5.1 Introduction

In this chapter the use of IP for specific topics is described. These topics are not linked to a specific activity as e.g. mentioned in Using IP to make money with technical innovations and are of more general use.

Since software is nowadays very important in many parts of innovation and in society this topic is especially dealt with in Software and for open-source software in Example of IP use in open source software.

5.2 Software

Computer programs are primarily protected by copyright.

Sometimes a patent can also be obtained on software-related inventions. Computer programs as such cannot be protected by patent law.

5.2.1 Copyright on software

Historically, there has been a long debate about whether software should be protected under patent law, copyright law or a separate legal regime. Ultimately, it was decided to protect software primarily under copyright law. This was a practical choice. Because software is written in programming language, it can be expressed as a kind of text. That is why computer programs are protected as literary works under copyright law. This principle is laid down in Article 10, paragraph 1, of the TRIPs Agreement and Article 4 of the WIPO Copyright Treaty.

Copyright protection of software relates to the concrete expression of the computer program, i.e. the specific form in which the programmer has expressed his intellectual creation in the source code. The source code concerns the instructions written by the programmer in a programming language and readable by humans. The target code is also subject to copyright protection. The object code comprises the binary, computer-readable and executable instructions generated from the source code by a compiler or interpreter. The object code is therefore in fact the translation of the source code into a computer-readable form.

The same conditions apply to copyright protection of software as to any other work. The source code and object code must demonstrate originality. They may not be derived from earlier software and the programmer must have made creative choices when writing the source code. If these conditions are met, the computer program is legally protected under copyright.1

Copyright does not protect an idea underlying a work. This means that the functionality, logic, method or purpose of a computer program and the processes, procedures, algorithms, programming languages ​​and layout of data files that are used in the context of a computer program to be able to use certain functions of the program are not protected by copyright.

Copyright does not create a monopoly on the functionality of software. It grants the creator or right holder exclusive rights to permit or prohibit the reproduction (copying or editing) and publication (publishing, marketing, lending, renting or making available on demand) of a computer program. However, the creator or right holder cannot prohibit others from developing their own computer programs that pursue the same or similar purpose or functionality.

Copyright on software largely follows the same rules as those that apply to any other work. For example, the rules for authorship and legal succession are the same, right holders are entitled to the same broad exploitation rights and the term of protection is determined in the same way. However, there are a few special provisions concerning computer programs that are recorded in Chapter VI of the Copyright Act.

Based on the right of reproduction, the right holder may prohibit others from copying or taking over the computer program in whole or in part or from changing the source code. The law also stipulates that the right of reproduction also includes reproductions that are necessary for loading, displaying, executing, transmitting or storing the computer program. Someone who has lawfully obtained the software, such as the person who has purchased a computer program, may make these reproductions to the extent necessary for the use of the computer program. The lawful acquirer may also make a backup copy if this is necessary for the intended use.

In addition, the law permits the operation of software to be observed, studied and tested in order to discover the underlying ideas and principles. There is therefore an explicit authority to ‘reverse-engineer’ the software.

Furthermore, the ‘decompilation’ of a computer program, the reconstruction of a source code based on the target code, is permitted under certain circumstances. The law stipulates that a computer program may be decompiled, not in order to create a competing program that imitates the decompiled software, but to create compatible programs that can communicate with the decompiled software and are therefore interoperable. Furthermore, it follows from case law that decompilation is permitted to correct errors in the proper functioning of a computer program.

Graphical user interface and other elements

When executing a computer program on a computer, users are primarily confronted with the graphical user interface (GUI). These are the visual elements that enable the user to communicate with a computer program and thus instruct the program (software) to control the computer (hardware). Think of the various icons in the taskbar or the menu of a computer program.

However, the GUI itself is not a computer program. The special provisions regarding computer programs therefore do not apply to GUIs. A GUI can be independently protected by copyright, if the designer has made creative choices in the design of the interface. When decompiling a computer program for the purpose of interoperability or error correction, the source code may be reconstructed on the basis of the target code, but the GUI may not also be copied to the extent that it is protected by copyright. That would infringe the copyright on the GUI.

The same applies to the graphic and sound elements of, for example, video games. These can be independently protected by copyright if they are the creator’s own intellectual creation, but do not themselves qualify as a computer program.

Video games

Video games generally consist of different types of works. In addition to software (source and target code), many video games contain a storyline, characters, images, animations, video, music and texts. Provided that the requirements are met, each of these works enjoys copyright protection. In principle, the copyright on the various works can lie with different creators. Sometimes hundreds of people can have made a creative contribution to a single video game. Because permission must be obtained from each rights holder for the release of the video game, the large number of rights holders can greatly hinder exploitation.

In practice, it is therefore arranged that all copyrights on the video game are, as much as possible, in the hands of the producer of the video game. The Copyright Act already provides for this to some extent. Insofar as creators have contributed to a video game under employment, the copyrights are in principle already held by the producer as employer under the law. For components of a video game that have been created by freelancers on assignment, the producer will usually have the copyrights contractually transferred to him. In addition, the producer can stipulate that the creator waives the right to mention his name, so that the rights are automatically granted to his/her company. For existing works that are included in a video game, such as the music that plays in the background of a video game, the producer will usually arrange permission by concluding a license agreement with the relevant copyright holders.

5.2.2 Software patent law

The starting point of patent law is that software as such cannot be patented, because computer programs are not considered inventions. However, the term invention contains the requirement of technical nature. A computer program that has a ‘further technical effect’ when executed on a computer, beyond the effect of the normal control of the computer, can therefore be patented. The computer program must provide a technical solution to a technical problem. Inventions with software must also meet the patent law requirements of novelty, inventive step and industrial applicability (see Requirements for a patent).

Examples of computer programs that have a ‘further technical effect’ when executed on a computer are programs for controlling an anti-lock braking system (ABS) in cars, determining emissions from X-ray equipment, compressing data, encrypting electronic communications, restoring distorted digital images or training artificial intelligence. A ‘further technical effect’ can also concern the internal functioning or security of the computer. For example, programs for distributing the processor load, memory allocation or securing integrity during start-up offer a technical solution to a technical problem.

Patent protection is broader than copyright protection in the sense that patent law does grant a temporary monopoly on the technical functionality of the software-related invention. Patent law gives the holder the exclusive right to prohibit others from applying and using the patented invention for commercial purposes. It is therefore not permitted to market computer programs with the same ‘further technical effect’, or an effect that is more or less equivalent, during the period that the patent is valid.

5.2.3 Other ways to protect software

In addition to copyright protection of computer programs and patent protection of software-related inventions, software or parts thereof can also be protected by other intellectual property rights. For example, the source code of computer programs can be protected as a trade secret. Graphic features of computer programs, such as icons or pictograms of the graphic user interface, can be protected as drawings under design and model law, provided of course that the specific protection conditions are met.

In addition, the producer of software can of course contractually agree on additional protection with third parties, for example in license agreements.

Software can of course also be protected technologically, by security measures such as encryption methods and copy protection. The Copyright Act offers protection against circumvention of such technological protection measures.

5.3 Example of IP use in open source software

Open source software, or alternatively also called free software (free as freedom and not necessarily free as in a free beer), aims to make the software available to everyone and to be developed jointly.

Part of this software is in the public domain and another part is licensed. Well-known licenses are the GPL (GNU General Public License) or the BSD (Berkely Software Distribution) license. These licenses allow the use of the software under certain conditions. The user must therefore comply with those conditions and is not free to do everything.

Question:

How can the terms of the open source licenses be enforced if the source code is publicly available? Through copyright. Copyright gives the creators of the source code ownership over it. They can therefore determine under what conditions you may use it and can stop you using it if the conditions are not met.

Although the open source movement mainly originated in the academic world, there are now many large companies that develop open source software. These companies use the joint development to offer products and services around the open source software.

5.4 Example of IP use with standards

5.4.1 VESA (Video Electronics Standards Association)

Vesa is a non-profit corporation, which represents more than 300 companies. These companies are members of the corporation. It sets and supports interface standards for computers and consumer electronics.

The vision statement (from the website):

VESA’s vision is continual growth in technical standards development and evolution into an international trade association, with world-wide membership driving standards initiatives, product implementations, and market implementation.

5.4.2 Displayport

The displayport connection between a computer and a monitor is an important Vesa standard. The Vesa members are allowed to use the displayport logo on their products if these meet the requirements of the standard. In figure 14 the logo is displayed.

Figure 14: Displayport logo

Question:

How can the use of the logo be limited to members who comply to the standard? Through a trademark. Vesa has registered the displayport logo as a trademark.

Preparatory design material can also be protected by copyright, provided that no programming step with creative steps is needed to turn that material into a computer program.↩︎

6 Glossary

B

BOIP

Benelux Office for Intellectual Property. The Benelux Office for Intellectual Property (dutch BBIE: Benelux-Bureau voor de Intellectuele Eigendom, french: Office Benelux de la Propriété intellectuelle) registers trademarks and designs for the Benelux. 68

C

claims

The claims are part of a patent to define the scope of protection. Usually, the set of claims consists of a main claim with several dependent claims. 26 29

D

diversify

Diversification gives companies the opportunity to expand their range of products and services. 57

DPMA

Deutsches Patent- und Markenamt. The German Patent and Trademark Office is tasked with the granting of patents and trademarks for Germany. 72

E

EPC

European Patent Convention. A multilateral treaty to provide the legal system for granting European patents. Next to articles and rules for obtaining a patent, it also institutes the European Patent Organisation. In German: EPÜ, French: CBE. The European Patent Office is tasked with the granting of the European patents. 17 61 76

EPO

European Patent Office. The European Patent Office is tasked with the granting of the European patents according the EPC. Main seat in Munich with dependancies in Rijswijk, Berlin and Vienna. 18 28 34 69

EUIPO

European Union Intellectual Property Office. The European Union Intellectual Property Office registers trademarks and designs for the EU. 70

examiner

The person working at a patent office, who will do the substantive examination (search report and grant) of a patent application. 32

exhaustion

If a patent, trademark or design holder, or someone else with the permission of the holder, has sold a product, he can no longer use the patent, trademark or design right for that product. 20

F

Freedom to Operate

Freedom to Operate (FTO) is a study that analyzes potential risks of possible infringement of third party patents when introducing a new product to the market. 49 52 56

I

industrial property rights

Industrial property rights are all intellectual property rights except copyright. 40

innovation

Innovation is most often regarded as a new and tangible product or service which can be bought by customers in the market place. 41

intellectual properties

Intellectual property is a category of property that includes intangible creations of the human intellect. 1 46 47 62 65

intellectual property rights

Intellectual Property Rights are the legal rights for creators over the creations of the minds. Intellectual property rights include patents, copyright, industrial design rights, trademarks, plant variety rights, trade dress, geographical indications, and in some jurisdictions trade secrets. 4 63 64

IP

Intellectual Property. See also the description of intellectual properties and intellectual property rights in the glossary. 2 3 6 9 12 42 44 45 53 58 60 66

IPR

Intellectual Property Rights are the legal rights for creators over the creations of their minds. See also the description of intellectual property rights and intellectual properties in the glossary. 5 7 8 10

J

JPO

Japan Patent Office. The Japan Patent Patent Office is tasked with the granting of patents and trademarks for Japan. 74

L

license

Meaning of license when used in IP: The right to commercially use a product or service to which another legal entity has intellectual property rights, on the basis of financial or material compensation. 54

O

Octrooicentrum Nederland

The Netherlands Patent Office is the patent office of the Netherlands. The Netherlands Patent Office is a department of the Netherlands Enterprise Agency, an agency of the Ministry of Economic Affairs and Climate Policy. The Netherlands Patent Office grants patents in the Netherlands and deals with European patents validated in the Netherlands. 16 67

P

patent

A patent is an intellectual property right for an invention. 11 13

patent landscape analysis

A patent landscape analysis provides a worldwide overview of patent holders who have technology in the economic sector of your organization. This gives you both market and product information of existing technology. With the help of this analysis, you can adjust research and development in time or decide to apply for a license from the patent holder for your market. 48 50 51 55 59

PCT

Patent Cooperation Treaty. The Patent Cooperation Treaty is an international patent law treaty. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application. 19 27 35 38 77

person skilled in the art

The term person skilled in the art, as used in patent law, is a constructed virtual person with knowledge and skill of a (broad) technical field. The person skilled in the art knows the entire state of the art, but has no inventive capacity. This constructed person skilled in the art is used in drawing up arguments, especially in the case of inventive step, sufficient disclosure and clarity of the patent application. 21 23 – 25

priority

A patent application can get right of priority from an earlier filing. This has the effect as if the patent application is filed on the date of the earlier filing. 39

R

ROW

National Patents Act 1995. Law for patents valid in the Netherlands, including the Caribbean, Curaçao and Sint Maarten. 15 75

S

search report

The search report is prepared by the patent office where the patent application has been filed. It is used to assess novelty and inventive step during the examination of the patent. It therefore contains the most relevant documents that are used in the examination. 30 33 37

state of the art

The state of the art is formed by everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the patent application 22 31 43

U

USPTO

United States Patent and Trademark Office. The United States Patent and Trademark Office is tasked with the granting of patents and trademarks for the United States of America. 73

W

WIPO

World Intellectual Property Organisation. The World Intellectual Property Organization is one of the 15 specialized agencies of the United Nations (UN). WIPO administers 26 international treaties that concern a wide variety of intellectual property issues, ranging from the protection of audiovisual works to establishing international patent classification. WIPO currently has 193 member states and is headquartered in Geneva, Switzerland. 14 36 71

7 Links

7.1 National and international IP offices

Netherlands patent office (Octrooicentrum Nederland):
https://www.rvo.nl/onderwerpen/innovatief-ondernemen/octrooien-ofwel-patenten

Benelux Office for Intellectual Property (BOIP):
https://www.boip.int/

European Patent Office (EPO):
https://www.epo.org/

European Union Intellectual Property Office (EUIPO):
https://www.euipo.europa.eu/

World Intellectual Property Organisation (WIPO):
https://www.wipo.int/

German patent office (DPMA):
https://www.dpma.de/

United States Patents and Trademark Office (USPTO):
https://www.uspto.gov/

Japan Patent Office (JPO):
https://www.jpo.go.jp/e/

7.2 Additional information

ThatsIP E-learning Intellectuel Property:
https://www.thatsip.nl/en/
Netherlands patent office, videos explaining basics of patents:
https://www.rvo.nl/onderwerpen/octrooien-ofwel-patenten/uitlegvideos

UK Intellectual Property Office, videos on IP basic, case studies and others:
https://www.youtube.com/user/ipogovuk

Werkgemeenschap Octrooi-informatie Nederland (WON):
http://www.won-nl.org

7.3 Interesting publications from the WIPO

What is Intellectual Property?
https://www.wipo.int/publications/en/details.jsp?id=4528&plang=EN

Intellectual Property Basics: A Q&A for Students
https://www.wipo.int/publications/en/details.jsp?id=4410&plang=EN

Understanding Industrial Property
https://www.wipo.int/publications/en/details.jsp?id=4080&plang=EN

Inventing the Future
An Introduction to Patents for Small and Medium-sized Enterprises
https://www.wipo.int/publications/en/details.jsp?id=4350&plang=EN

Enterprising Ideas
A Guide to Intellectual Property for Startups
https://www.wipo.int/publications/en/details.jsp?id=4545&plang=EN

Guide to the International Patent Classification (2022)
https://www.wipo.int/publications/en/details.jsp?id=4593&plang=EN

International Patent Classification (IPC)
https://www.wipo.int/publications/en/details.jsp?id=4582&plang=EN

7.4 IP databases

Espacenet:
https://worldwide.espacenet.com/patent/

Espacenet pocket guide:
https://www.epo.org/espacenet-pocket-guide

Manual Espacenet (Dutch):
https://www.rvo.nl/sites/default/files/2021/03/Handleiding%20Espacenet_februari2021.pdf

European Patent Register:
https://register.epo.org/

European Patent Bulletin:
https://data.epo.org/expert-services/index.html

Google patents:
https://patents.google.com/

Depatisnet (DPMA):
https://depatisnet.dpma.de/DepatisNet/depatisnet

Patentscope:
https://patentscope.wipo.int/

The lens:
https://www.lens.org/

Trademark view and Design view:
https://www.tmdn.org/

EUIPO register (eSearch plus):
https://euipo.europa.eu/eSearch/

BOIP trademark register:
https://www.boip.int/en/trademarks-register

BOIP design register:
https://www.boip.int/en/designs-register

Register of the Netherlands patent office:
https://mijnoctrooi.rvo.nl/fo-eregister-view/

Register of the German patent office (DPMA register):
https://register.dpma.de/DPMAregister/pat/basis

UK Intellectual Property Office, online patent information and document inspection service:
https://www.ipo.gov.uk/p-ipsum.htm

Japan platform for patent information:
https://www.j-platpat.inpit.go.jp/

7.5 The patent classification schemes

CPC classification scheme at the USPTO (US patent and trademark office):
https://www.uspto.gov/web/patents/classification/cpc/html/cpc.html

CPC classification scheme in table to download scheme and definitions:
https://www.cooperativepatentclassification.org/cpcSchemeAndDefinitions/table

8 Bibliography

Cohen, Wesley M, Richard R Nelson, and John P Walsh. 2000. “Protecting Their Intellectual Assets: Appropriability Conditions and Why u.s. Manufacturing Firms Patent (or Not).” Working Paper 7552. Working Paper Series. National Bureau of Economic Research. https://doi.org/10.3386/w7552.

Greenhalgh, C., and M. Rogers. 2010. Innovation, Intellectual Property, and Economic Growth. Princeton University Press. https://press.princeton.edu/books/paperback/9780691137995/innovation-intellectual-property-and-economic-growth.

Nieuwenhoven Helbach, E. A. van, J. L. R. A. Huydecoper, and C. J. J. C. van Nispen. 2002. Industriële Eigendom, Deel 1 Bescherming van Technische Innovatie. Industriële Eigendom. Kluwer. https://books.google.nl/books?id=a8k1a5u4jXQC.

Scotchmer, S. 2004. Innovation and Incentives. MIT Press. https://mitpress.mit.edu/9780262693431/innovation-and-incentives/.

9 Parts of IP law

9.1 Parts of the Dutch patent law, Rijksoctrooiwet 1995 (in Dutch)

These are some of the most relevant parts of Dutch patent law (ROW).

Artikel 53

Een octrooi geeft de octrooihouder, behoudens de bepalingen van de artikelen 53a tot en met 60, het uitsluitend recht:

het geoctrooieerde voortbrengsel in of voor zijn bedrijf te vervaardigen, te gebruiken, in het verkeer te brengen of verder te verkopen, te verhuren, af te leveren of anderszins te verhandelen, dan wel voor een of ander aan te bieden, in te voeren of in voorraad te hebben;

de geoctrooieerde werkwijze in of voor zijn bedrijf toe te passen of het voortbrengsel, dat rechtstreeks verkregen is door toepassing van die werkwijze, in of voor zijn bedrijf te gebruiken, in het verkeer te brengen of verder te verkopen, te verhuren, af te leveren of anderszins te verhandelen, dan wel voor een of ander aan te bieden, in te voeren of in voorraad te hebben.

Het uitsluitend recht wordt bepaald door de conclusies van het octrooischrift, waarbij de beschrijving en de tekeningen dienen tot uitleg van die conclusies.

Het uitsluitend recht strekt zich niet uit over handelingen, uitsluitend dienende tot onderzoek van het geoctrooieerde, daaronder begrepen het door toepassing van de geoctrooieerde werkwijze rechtstreeks verkregen voortbrengsel. Het uitsluitend recht strekt zich evenmin uit tot de bereiding voor direct gebruik ten behoeve van individuele gevallen op medisch voorschrift van geneesmiddelen in apotheken, noch tot handelingen betreffende de aldus bereide geneesmiddelen.

Het uitvoeren van de noodzakelijke studies, tests en proeven met het oog op de toepassing van artikel 10, eerste tot en met vierde lid, van Richtlijn 2001/83/EG tot vaststelling van een communautair wetboek betreffende geneesmiddelen voor menselijk gebruik (PbEG L 311) of artikel 13, eerste tot en met het vijfde lid van Richtlijn 2001/82/EG tot vaststelling van een communautair wetboek betreffende geneesmiddelen voor diergeneeskundig gebruik (PbEG L 311) en de daaruit voortvloeiende praktische vereisten worden niet beschouwd als een inbreuk op octrooien met betrekking tot geneesmiddelen voor menselijk gebruik, respectievelijk geneesmiddelen voor diergeneeskundig gebruik.

Is een voortbrengsel als in het eerste lid, onder a of b, bedoeld, in Nederland, Curaçao of Sint Maarten rechtmatig in het verkeer gebracht, dan wel door de octrooihouder of met diens toestemming in één der Lid-Staten van de Europese Gemeenschap of in een andere staat die partij is bij de Overeenkomst betreffende de Europese Economische Ruimte in het verkeer gebracht, dan handelt de verkrijger of latere houder niet in strijd met het octrooi, door dit voortbrengsel in of voor zijn bedrijf te gebruiken, te verkopen, te verhuren, af te leveren of anderszins te verhandelen, dan wel voor een of ander aan te bieden, in te voeren of in voorraad te hebben.

Een voortbrengsel als in het eerste lid, onder a of b, bedoeld, dat voor de verlening van het octrooi, of, indien het een Europees octrooi betreft, voor de dag, waarop overeenkomstig artikel 97, derde lid, van het Europees Octrooiverdrag de vermelding van de verlening van het Europees octrooi is gepubliceerd, in een bedrijf is vervaardigd, mag niettegenstaande het octrooi ten dienste van dat bedrijf worden gebruikt.

9.2 Parts of the European Patent Convention

These are some of the most relevant parts of patent law in the European Patent Convention (EPC).

Article 52. Patentable inventions

European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

discoveries, scientific theories and mathematical methods;

aesthetic creations;

schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

presentations of information.

Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.

Article 54. Novelty

An invention shall be considered to be new if it does not form part of the state of the art.

The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.

Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art.

Paragraphs 2 and 3 shall not exclude the patentability of any substance or composition, comprised in the state of the art, for use in a method referred to in Article 53(c), provided that its use for any such method is not comprised in the state of the art.

Paragraphs 2 and 3 shall also not exclude the patentability of any substance or composition referred to in paragraph 4 for any specific use in a method referred to in Article 53(c), provided that such use is not comprised in the state of the art.

Article 56. Inventive step

An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered in deciding whether there has been an inventive step.

Article 83. Disclosure of the invention

The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

Article 84. Claims

The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.

Article 87. Priority right

Any person who has duly filed, in or for

any State party to the Paris Convention for the Protection of Industrial Property or

any Member of the World Trade Organization,

an application for a patent, a utility model or a utility certificate, or his successor in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application.

Every filing that is equivalent to a regular national filing under the national law of the State where it was made or under bilateral or multilateral agreements, including this Convention, shall be recognised as giving rise to a right of priority.

A regular national filing shall mean any filing that is sufficient to establish the date on which the application was filed, whatever the outcome of the application may be.

A subsequent application in respect of the same subject-matter as a previous first application and filed in or for the same State shall be considered as the first application for the purposes of determining priority, provided that, at the date of filing the subsequent application, the previous application has been withdrawn, abandoned or refused, without being open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.

If the first filing has been made with an industrial property authority which is not subject to the Paris Convention for the Protection of Industrial Property or the Agreement Establishing the World Trade Organization, paragraphs 1 to 4 shall apply if that authority, according to a communication issued by the President of the European Patent Office, recognises that a first filing made with the European Patent Office gives rise to a right of priority under conditions and with effects equivalent to those laid down in the Paris Convention.

Article 88. Claiming priority

An applicant desiring to take advantage of the priority of a previous application shall file a declaration of priority and any other document required, in accordance with the Implementing Regulations.

Multiple priorities may be claimed in respect of a European patent application, notwithstanding the fact that they originated in different countries. Where appropriate, multiple priorities may be claimed for any one claim. Where multiple priorities are claimed, time limits which run from the date of priority shall run from the earliest date of priority.

If one or more priorities are claimed in respect of a European patent application, the right of priority shall cover only those elements of the European patent application which are included in the application or applications whose priority is claimed.

If certain elements of the invention for which priority is claimed do not appear among the claims formulated in the previous application, priority may nonetheless be granted, provided that the documents of the previous application as a whole specifically disclose such elements.

Article 89. Effect of priority right

The right of priority shall have the effect that the date of priority shall count as the date of filing of the European patent application for the purposes of Article 54, paragraphs 2 and 3, and Article 60, paragraph 2.

9.3 Parts of the Patent Cooperation Treaty

These are some of the most relevant parts of Patent Cooperation Treaty (PCT).

Article 5. The Description

The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.

Article 6. The Claims

The claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description.

Article 8. Claiming Priority

The international application may contain a declaration, as prescribed in the Regulations, claiming the priority of one or more earlier applications filed in or for any country party to the Paris Convention for the Protection of Industrial Property.

Subject to the provisions of subparagraph (b), the conditions for, and the effect of, any priority claim declared under paragraph (1) shall be as provided in Article 4 of the Stockholm Act of the Paris Convention for the Protection of Industrial Property

The international application for which the priority of one or more earlier applications filed in or for a Contracting State is claimed may contain the designation of that State. Where, in the international application, the priority of one or more national applications filed in or for a designated State is claimed, or where the priority of an international application having designated only one State is claimed, the conditions for, and the effect of, the priority claim in that State shall be governed by the national law of that State.

Article 33. The International Preliminary Examination

The objective of the international preliminary examination is to formulate a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable.

For the purposes of the international preliminary examination, a claimed invention shall be considered novel if it is not anticipated by the prior art as defined in the Regulations.

For the purposes of the international preliminary examination, a claimed invention shall be considered to involve an inventive step if, having regard to the prior art as defined in the Regulations, it is not, at the prescribed relevant date, obvious to a person skilled in the art.

For the purposes of the international preliminary examination, a claimed invention shall be considered industrially applicable if, according to its nature, it can be made or used (in the technological sense) in any kind of industry. “Industry” shall be understood in its broadest sense, as in the Paris Convention for the Protection of Industrial Property.

The criteria described above merely serve the purposes of international preliminary examination. Any Contracting State may apply additional or different criteria for the purpose of deciding whether, in that State, the claimed invention is patentable or not.

The international preliminary examination shall take into consideration all the documents cited in the international search report. It may take into consideration any additional documents considered to be relevant in the particular case.

Rule 64. Prior Art for International Preliminary Examination

64.1 Prior Art

For the purposes of Article 33(2) and (3), everything made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) shall be considered prior art provided that such making available occurred prior to the relevant date.

For the purposes of paragraph (a), the relevant date shall be:

subject to item (ii) and (iii), the international filing date of the international application under international preliminary examination;

where the international application under international preliminary examination claims the priority of an earlier application and has an international filing date which is within the priority period, the filing date of such earlier application, unless the International Preliminary Examining Authority considers that the priority claim is not valid;

where the international application under international preliminary examination claims the priority of an earlier application and has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date, the filing date of such earlier application, unless the International Preliminary Examining Authority considers that the priority claim is not valid for reasons other than the fact that the international application has an international filing date which is later than the date on which the priority period expired.

64.2 Non-Written Disclosures

In cases where the making available to the public occurred by means of an oral disclosure, use, exhibition or other non-written means (“non-written disclosure”) before the relevant date as defined in Rule 64.1(b) and the date of such non-written disclosure is indicated in a written disclosure which has been made available to the public on a date which is the same as, or later than, the relevant date, the non-written disclosure shall not be considered part of the prior art for the purposes of Article 33(2) and (3). Nevertheless, the international preliminary examination report shall call attention to such non-written disclosure in the manner provided for in Rule 70.9.

64.3 Certain Published Documents

In cases where any application or any patent which would constitute prior art for the purposes of Article 33(2) and (3) had it been published prior to the relevant date referred to in Rule 64.1 was published on a date which is the same as, or later than, the relevant date but was filed earlier than the relevant date or claimed the priority of an earlier application which had been filed prior to the relevant date, such published application or patent shall not be considered part of the prior art for the purposes of Article 33(2) and (3). Nevertheless, the international preliminary examination report shall call attention to such application or patent in the manner provided for in Rule 70.10.

10 Documents

10.1 WO 9700326A1

10.2 WO 94/28152