Are patents that protects inventions appropriately designed to encourage Starts-ups and SMEs? (página 2)

In the United States the national patents laws are provided by Statute in Title 35 of the US Code, by Regulations in title 37 of the Code of Federal Regulations Guidelines are provided by the Manual of Patent Examining Procedure and although is not a enforceable is a reliable document. The national Office that deals with the patents examination and their grant is the USPTO, the US Patent and Trademark Office, they also "assists other federal departments and agencies to protect American IP in the international marketplace"132.133 The Office also deals with design and plant patents, so in this respect is more wide their scope. 134 "There are three types of patents: utility patents, design patents, and plant patents. A utility patent is issued for an invention of a process, a machine, an article of manufacture, a composition of matter (e.g., a chemical compound), or a useful improvement of one of these. A design patent is issued for an invention of an ornamental design for an article of manufacture. A plant patent is issued for an invention of certain plants. This discussion addresses only utility patents."135

US patents have to be novel and not anticipated136 by their prior art.137 A great number of options are provided at the USPTO website to conduct patent searches.138

Requirements of 35 U.S.C.A. Art.112 are four to comply with by the patent applicant: "written description, enablement, best mode and definiteness."139 As far as the inventor"s name it can be the patent cause of failure if it"s not correct, and when there is a plurality of them they have to apply jointly.

Patent application can be done electronically also, by using the EFS Web.140 The status of patents can be checked online by using the Patent Application Information Retrieval (PAIR).141 USPTO treats Starts-ups and SMEs as small entities, a fact that can be appreciated in the 37 C.F.R. 1.27 is provided the "definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office. Definition of small entities. A small entity as used in this chapter means any party (person, small business concern, or nonprofit organization) under paragraphs (a)(1) through (a)(3) of this section. (1) Person. A person, as used in paragraph (c) of this section, means any inventor or other individual (e.g., an individual to whom an inventor has transferred some rights in the invention) who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights in the invention to one or more parties, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization under this section. (2) Small business concern. A small business concern, as used in paragraph (c) of this section, means any business concern that: (i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization; and (ii) Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees. Questions related to standards for a small business concern may be directed to: Small Business Administration, Size Standards Staff, 409 Third Street, SW., Washington, DC 20416. (3) Nonprofit Organization. A nonprofit organization, as used in paragraph (c) of this section, means any nonprofit organization that: (i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify as a person, small business concern, or a nonprofit organization; and (ii) Is either: (A) A university or other institution of higher education located in any country; (B) An organization of the type described in section 501(c)(3) of the Internal Revenue Code of 19 86 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a)); (C) Any nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state of this country (35 U.S.C. 201(i)); or (D) Any nonprofit organization located in a foreign country which would qualify as a nonprofit organization under paragraphs (a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this section if it were located in this country."142 The fact that it recognize and differentiates Starts-up and SMEs, is of importance not only legally but also because it provides a fees discounts for them.

In order to comprehend how the patents registration process work m the US, an illustration will be used, based specifically in the utility patent.

Process for obtaining a Utility Patent.143

To patent an invention there are, according USPTO, 13 steps.144 The 1st step is common to patent applications, and is to research if the invention has been previously patented in the available databases. 145 The USPTO particularly offers: a quick search, advance search and number search.146 The 2nd step is to define what application is desired to be filed, a design patent, a plant patent or an utility patent. Thirdly is necessary to establish a filing strategy: national, regional or international?. Fourthly if an utility patent is to be provisional or non-provisional. The 5th step is related to the speed of the examination: prioritize examination, and accelerated examination program. Afterward the 7th step is the determination on who should do the filing? The filing can be done by the applicant himself, or by a registered attorney or agent; of course the suggested way is to get professional help, get a registered attorney or agent. Then the applicant should prepare for the electronic filing.147 It is highly advised to apply for a patent using the electronic filing system. "Then the USPTO examine the application and if is necessary the applicant asks for reconsideration and appeals as necessary, if rejection and objections are overcome, then the USPTO send notice of Allowance and Fees due. Afterward the applicant pays the issue fee and the publication fee. Lastly the USPTO grants the patent(s). When the patent is grant the applicant needs to pay the maintenance fees."148

Maintenance fees are to be paid in order to maintain the patent in force. 149Maintenance fees can be paid without surcharge and with a surcharge. Fees paid without surcharge are paid three times during the life of the patent: "three to three and a half years after the date of issue for the first payment; seven to seven and a half years after the date o issue for the second payment; and eleven to eleven and a half years after the date of issue for the third and final payment."150 On the other hand the fees that are to be paid with a surcharge during the following grace periods: "three and a half years and through the day of the fourth anniversary of the gran of the patent; seven and a half years and though the day of the eight anniversary of the grant of the patent; and eleven and half years and though the day of the day of the 12th anniversary of the grant of the patent."151If the maintenance fees and expirations dates are not complied with the patent will expire at the end of the applicable grace period.

USPTO provides examination guidance and training materials in their website.152

Cooperative Patent Classification is a joint partnership among the USPTO and the European Patent Office to harmonize their existing classification systems.

Conclusion

Even though substantial patents laws are quite abundant, procedural ones are rather scarce.153 The patent procedural laws internationally are ruled by WIPO, who can be said owns a monopoly on the matter.

PCT is the most relevant internationally used patent procedural law, not only by re- known organization like WIPO, but also by important regional patent agreements like EPO. Even though: "creating new internationally-applicable standards different from the PCT should be avoided as much as possible, since more than 100 countries that are members of the PCT already apply the standards under the PCT to international applications."154, there should be more options available for users interested in the patent world. Another treaty would provide more options, since now for an international procedural patent treaty there is only the PCT, competition like in every market would encourage new and favorable norms.

The patent system is thorough in general, but there are still some improvement to be made. Even though Starts-up and SMEs have special norms at the international, regional and national level, that favors them on some factors, they are not enough. These discounts fees they get are not enough to just survive the obtaining-patent-process, imagine commercializing the invention in whatever form the creator choose, it"s another expensive process. Even though EPO abide by the PCT rules, it has a much more economic consideration towards Starts-up and SMEs.

It is surprising however that WIPO hasn"t done more to change these facts, when in 2001 they conducted a research of SMEs and arrived to similar conclusions, 13 years later, things haven"t change significantly for Start-up and SMEs155

In regards of discounts consideration for Starts-ups and SMEs the United States has played an important an revolutionary role. USPTO"s fee schedule foresee a discount for : "small entities" that as we could see refers to Starts-ups and SMEs, for all their PCT Application filing fees, Patent Search Fees, Patent Examination Fees, Patent Post Allowances Fees, Patent Extension of Time Fees, Patent Maintenance Fees, Miscellaneous Patent Fees, Post Issuance Fees, Patent Trial and Appeal Fees, Patent Petition Fees, PCT Fees- National Stage, PCT Fees-International Stage, PCT Fees to Foreign Offices, Patent Service Fees, Patent Enrollment Fees, Finance Service Fees, and Computer Service Fees.156

PLT is a harmonized legislation with PCT, to be considered as an accessory regulation of the PCT, to simplify the PCT national and regional phase. PLT contracting parties cannot apply requirements different or additional to the ones established in the PCT.157 "The contents of the "request" of an international application under the PCT are also incorporated by reference into the PLT". 158

The patent system works obviously, but given the characteristics of the Starts-ups and SMEs, there should be a more direct work and reform of norms on their behalf. Discounts should not only limit to some countries, or to some circumstances.159 Giving Starts-up and SMEs the opportunity to go international, even at the smallest level, provide a more efficient international trade, allowing us to have a more integrated knowledge of what new inventions are out-there faster, not only will this provide the patent"s owner to make more profit but also consumers to have a faster access to the final product. I think these kind of changes will not only incentive regular people to create and try to new things, but also it will ignite change and development at a higher rate, giving birth to a new wave of inventions, rewarding creators for their efforts, while incenting others to follow their examples. Inventors should have the opportunity to really exploit their creations at a reasonable price.

WIPO is an extraordinary organization that have accomplish many great things, the more significant achievement have been to bring together all IP. However it should give more attention to Starts-ups and SMEs, like it gives to its top patents applicants, who as we could see are obviously and logically big companies, that have a guaranteed place of sorts on that lists. Their present line of works leads mainly to the think: "I will like to do something great and work for Panasonic, ZTE, HUAWEI, Intel, Qualcomm,… and some of the others top 15 applicants", inventors should be inspired to think: " I would like to create something important", like once was the inventor of the iTwin that we mentioned at the beginning of this research, as once was inspired Steve Jobs.

The patent system is not still appropriate to foster innovation for SMEs and Starts-ups, mainly due to patents high costs and exclusive rights that are not in line with the needs of small entrepreneurs. It should be done a review and modification of patent"s law, substantial and procedural, in line with the needs of small entrepreneurs.

It is in our hand the opportunity to create new norms and rules, that allows a continuous improvement of the actual treaty that rules the Patent"s world, in favor of those who doesn"t have enough resources to accomplish greatness.

ANNEX I160

ANNEX II161

ANNEX III

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Acknowledgements

I want to thank my extraordinary family, for always supporting me in everything and believing in me, without them nothing of this would"ve been possible. I would also like to thank my husband, who not only helped me through all the Master, providing support, but also was a source of inspiration.

Special thanks to my tutor Cristiana Sappa who guided me throughout the thesis, it was a pleasure to work with you. I want to thanks Blerina Pogace for providing me with a great tutor, and the rest of the ITCILO staff for the experience they provide us with. I wouldn"t like to forget to thanks all my classmates for the unforgettable memories, thank you guys.

Permission to consult

This paper is available for consultation by fellow students of the LL.M in International Trade Law, Contracts and Dispute Resolution, arranged by the University of Turin and the International Training Center of the ILO (ITCILO), by any member of the Scientific Committee and by the staff of this Master Program, by any member of WIPO, by any other person authorized in writing by the author to carry out such consultations, or by any person who has sought or had access to this paper"s publication.

This paper"s contents may not be reproduced except for educational, demonstrative uses for other students of the Master Program by the above mentioned persons as an example of academic writing only.

This work contains only the criteria of the author and shall not be considered a substitute of a specialized lawyer in the patent field, please if you are thinking of patenting I highly urge you to seek professional assistance.

Abbreviations

EIPR- European Intellectual Property Review EPC- European Patent Convention EPO- European Patent Office EU- European Union IP – Intellectual Property PCT – Patent Cooperation Treaty. PLT- Patent Law Treaty TRIPS – Trade Related aspects of Intellectual Property Rights Patent and Trademark Office UPSTO- United States WIPO – World Intellectual Property Organization. WTO – World Trade Organization A final dissertation submitted for the LLM in International Trade Law, Contracts, and Disputes Resolutions.

University of Turin International Training Centre of the ILO (ITCILO) November 2014.

Autor:

Evelyn Mercedes Brito Rodríguez