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What Every Genomics Inventor Should Know About International IP Law

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Robert Harrison is a European and German patent attorney with the Munich IP law firm Huber & Schuessler. He specializes in international IP protection in informatics, especially bioinformatics and chemoinformatics, and in nanotechnology.

As an examiner at the European Patent Office from 1987 to 1990, he specialized in patent applications on semiconductor and superconductor devices. He has also worked for IBM Germany’s patent department on software-implemented inventions and as an IP counsel for W.L. Gore working on electronics and medical inventions.

Harrison has one daughter, dives and mountain walks for fun, and occasionally plays flute in an Irish folk group. He can be reached at rob.harrison @germanpatent.de.

 

Patents are the most important assets of many genomics companies. Intense work goes into identifying inventions, drafting specifications, and crafting claims to ensure strong protection. Thought is rarely given, however, to exploiting the differences in national patent laws that lead to stronger patent protection.

The best-known difference between patent laws in the US and the rest of the world is the grace period. Patent laws in most countries state that any invention will not be considered new if it has been made available to the public before the filing date. US Patent Code states, on the other hand, that a patent will be granted unless the invention was patented or described in a printed publication in the US or abroad or was on public use or on sale in the US more than one year prior to the filing date.

This means that in the US a patent can still be granted on an invention that has already been published in a research journal. In all other countries, however, a patent cannot be granted; publication will bar the grant of the patent.

These rules apply to every inventor. So a German citizen who publishes a research article in an American research journal before filing a patent on the same subject cannot get a patent in Europe. She or he can get a US patent provided the application is filed within 12 months of publication of the research article. Similarly, a US citizen who published in the journal cannot get a European patent if the application is filed after the publication of the research article. (Under an international treaty the filing dates of a patent in one country will generally be recognized in other countries.)

As patent attorney Breffni Baggot pointed out in this column in December, in the US, patents cannot be granted for inventions that were offered for sale more than a year before filing. In Europe, on the other hand, there is no similar provision. Instead, if an invention is not “made available to the public” then a patent can still be granted, even if the invention was sold. So, for example, if an invention was sold under a nondisclosure agreement, then a patent can still be filed later.

In one particular case, the invention was incorporated into a control program on a sold microchip. The European Patent Office decided that the effort required to understand the invention was such that the invention was not made publicly available.

Again these rules apply to everybody. So Mr. Pfaff of the December article could still have obtained a European patent, even though the US Supreme Court decided that he was not entitled to one in the US. On the other hand, the European microchip manufacturer would not have been entitled to a US patent even though he had a European one.

The final major difference is that in the US patents are granted to the first inventor. In every other country, it is the inventor who is the first to the patent office who gets the patent. So, for example, a French company that is the first to identify a receptor for a virus will get a US patent even if a US company files the application first. In Europe, the US company will get the patent.