Recently, everyone has heard about patent wars that are unfolding between major multinational electronics manufacturers and software (and often – small development companies). For example, the company-developer Forgent Networks, which patented the widespread graphic JPEG format in 1987, is already suing 150 companies (including Microsoft) using this technology without corresponding licensing fees. Forgent Networks has already won more than $90 million. A small Canadian company, Mosaid Technologies, which developed and patented the technology of DRAM memory cards, won a multi-million dollar compensation from Samsung.
Came, saw, patented
Starting a patent war, you should decide on the object that the company plans to patent, and then prohibit its use by competitors. Patents can be several types of objects of industrial property — it is an invention, utility model, industrial design, layout of chips and even a plant or breed of animal.
For each of the listed types of objects there are special conditions for patentability and terms of protection. According to the Civil Code and the Law « On the Protection of Rights to Inventions and Utility Models & raquo; only products (devices, substances, etc.) or a process in any field of technology can be inventions and utility models. Therefore, simply non-material idea or, for example, the management process to patent in Ukraine will not succeed. The condition of patentability of the invention is its novelty, the presence of inventive step and industrial applicability. At the same time, the utility model should be simply new and industrially applicable. So advanced innovativeness from utility models is not required.
But as an industrial design, you can patent new forms, designs, integrated circuits, varieties of mutating plants, colors, or a combination of them that determine the appearance of an industrial product. In this case, the main condition for patenting is the novelty of the object
That’s all the objects that can be patented. If all conditions are met, you can safely contact a patent attorney. Having received a patent, the company will be able to further defend its rights and prevent the use of such development without a license for a period of protection (10 or 20 years). So, for example, some Ukrainian advertisers have patented pens with advertisements, which are suspended in buses and subways. And now, under the threat of a lawsuit, licensing bribes are collected from all advertising agencies introducing this invention in public transport.
But not everyone wants to pay expensive royalties. For example, Kodak Corporation has been suing Polaroid for almost 20 years for the right to produce cameras with instant photos, but still lost almost everything and did not start production of such devices. And the thing is that the founder of Polaroid had time and carefully patented his idea of instant photos, on the exclusive realization of which the company earned millions of dollars in due time.
If the company hesitated and did not have time to get a patent, then a competitor could intercept the initiative. At the same time, a competing company after obtaining a patent during the entire term of protection will have the exclusive right to allow the use of these objects to third parties, as well as to prohibit and prevent their unlawful use.
True, we are pleased with the fact that, according to the law, a company that developed a new technology, which its competitor patented in the future, can use it in the future without the consent of the patent holder. However, if a competitor files a lawsuit, the company will have to prove to the court that it has developed this technology before it is registered by the competitor. And to prove it is not always easy.
Interestingly, some companies are created specifically to look for unpatented innovations and profitable ideas. And then, having patented them, they try to sell the patent at a higher price in fact to its owners or their competitors. Blocking patenting
Unlike domestic inventors, Western companies try not to hesitate in patenting their designs. In addition, the so-called patent programs are part of a marketing strategy for launching a new product on the market. A favorite tool for undermining a competitor’s production strategy was blocking patenting. Its essence is to have time to patent its development faster than a competitor will have time to launch the production of a similar product. Thus, it will be possible to file a lawsuit and prohibit the release of competitive products. On the other hand, if the company owning the patent does not have enough production capacity to produce products, then you can sell the patent or grant a license in exchange, for example, for a share in the enterprise.
For example, in 2002, Time Warner’s corporation America Online patented the technology of an instant messaging program, to which the famous ICQ itself belongs. The patent covered almost all the basic functions of ICQ, which was an unpleasant surprise for competitors Microsoft and Yahoo, which have similar programs. After all, AOL, being the owner of this technology, was able to initiate lawsuits against any company that created such software after the date of registration of this patent. By the way, an analogue ICQ has recently appeared in the CIS — service «Agent Mail.ru».
In addition, when invading profitable, highly competitive market segments, a company can apply a patent cover strategy of registering and buying the maximum number of key patents necessary for aggressive development in a new market. Thus, companies protect their business by the so-called patent wall. In the event that a cloned product is found, the right holder can sue an unscrupulous competitor. In Ukraine, for several years, different courts have made decisions in the case of the famous German pharmaceutical company “Nattermann” and raquo; against the company «Nabro». The dispute is over the cancellation of the registration of a patent for an industrial design of a package for drugs called Essel Forte. At the same time, the claimant indicates that this violates his rights to the trademark “Essentiale Forte”. And at the moment, the Supreme Economic Court supports the position of the plaintiff.
Extended success formula
To ensure patent blocking is often used a lot of unscrupulous ways. A favorite means of blackmail is the so-called “garbage” patents, that is, those that hide not unique developments, but intentional or unintentional errors of the patent office. Such patents do not meet the requirements of patentability, it is possible to revoke them in court. However, many companies decide not to get involved in litigation and just pay royalties. Due to this, many owners of the garbage «garbage» patents.
Alternatively — use of the extended claims or utility model. The extended formula is designed to incorporate almost all subsequent decisions on this type of product. So, for example, a certain company Sightsound managed to patent the idea of downloading music and video files from the Internet, although a huge number of programs use this technology. At the same time, the well-known company Amazon did not hesitate to patent the «technology» buying goods in the online store with a single click. In response, Microsoft has decided to continue the «mouse» the topic, having received last year a patent for a pause that occurs between mouse clicks. The secret of the patented technology is supposedly that the program responds differently to the duration of a mouse click.
The third option is — it is waiting for the patent to expire. After this, having slightly modified his old product, the manufacturer tries to obtain a patent for it as a new development. This method is often used in the pharmaceutical industry. And often «modified» patents sell specially created speculation companies to the original manufacturer. And finally, the last option is to identify the competitors’ vulnerable patents and challenge them in court. Having canceled someone else’s patent, you can safely engage in the production of goods based on this technology and get used to the new market without unnecessary licensing fees. One Japanese tire manufacturer revoked a patent for an industrial tread design issued by a Ukrainian research institute for large tires through an economic court. The problem arose due to the fact that the tires from the Land of the Rising Sun did not pass through the border in order not to violate the intellectual property rights of the Ukrainian manufacturer. Therefore, the Japanese filed a lawsuit to invalidate the Ukrainian patent due to the lack of novelty in it. According to the Japanese side, by the time of registration, all the essential features of this patent had already become widely known in the world. Thus, the corporation was able to import its tires into Ukraine.
OPINION. MAYA LGOVA, patent attorney of Ukraine
In Ukraine, the patent system began to develop in 1992 after the adoption of the Provisional Regulation on the Protection of Industrial Property Objects, created on the basis of Soviet legislation. Copyright certificates in the USSR were issued only for inventions whose right to use belonged to the state, and patents — only to a certain circle of persons (for example, those who created the invention, not related to the work performed). Thus, to date, the subject of patent disputes has been associated mainly with the payment of royalties or improper filing of the application by the inventor without notifying the employer. Disputes about the violation of rights when a third party uses an invention protected by a patent, or about the unlawful granting of a patent to an owner using other people’s designs, are still only in the bud, in contrast to lawsuits on signs for goods and services. Although in the near future such disputes are quite predictable due to the presence of counterfeit products on the Ukrainian market.
But to get a patent for the “well-known technology”; we can not. The patent system is characterized by issuing a patent for various changes in technology or device design, allowing to achieve a new positive result (effect) and / or improve production methods, management, regulation of technological processes, or design of known devices that help make a new step in the development of technology.
By materials: www.ip-centr.kiev.ua
Source: “ВЛАСТЬ ДЕНЕГ”