Patents

A patent is a right granted to an individual or group, including corporations. It grants the owner “the right to exclude others from making, using, offering for sale, or selling”1_{. Patents themselves}

cannot stop someone from making or using an invention. The exclusive right has to be enforced by the owner with legal means in court. The World Intellectual Property Organization (WIPO) describes a patent2 _{as follows: “A patent is a document which describes an invention which can}

be manufactured, used, and sold with the authorization of the owner of the patent. An invention is a solution to a specific technical problem. A patent document normally contains at least one claim, the full text of the description of the invention, and bibliographic information such as the applicant’s name. The protection given by a patent is limited in time (generally 15 to 20 years from filing or grant). It is also limited territorially to the country or countries concerned.

A patent is an agreement between an inventor and a country. The agreement permits the owner to exclude others from making, using or selling the claimed invention.” Due to the national nature of patents, it would be necessary to register a patent in each patent office. For harmonization and cooperation in the procedures for patent application, there have been several treaties. One important treaty is the European Patent Convention (EPC), which was signed in Munich on 5th October 1973 and entered into force on 7th October 1977. This treaty lead to the setup of the European Patent Office (EPO). The EPO currently provides services for patent applications in 41 European countries, including non-EU states such as Iceland, Switzerland or Turkey. A notable missing country is the Russian Federation. The EPO covers about 540 million inhabitants3.

The international cooperation on patent applications is regulated with the Patent Cooperation Treaty (PCT). Signed on 19th June 1970, entered force 24th January 1978, it currently enables to file patents for more than 130 states. A patent application using the PCT has two phases. The first phase is the international phase. During this the patent protection is pending under a single patent application, which was filed with the local patent office, e.g., EPO. The second phase is the national and regional phase. There the rights are continued by filing necessary documents to other patent offices, e.g., USPTO. After a period of 18 month after the submission (priority date) the patent is published by the International Bureau of the World Intellectual Property Organization (WIPO).

Although, there have been many efforts for harmonization and cooperation, the final decision, which inventions are patentable is governed by local law. The most well known examples for diverse opinions are software patents and patents on (human) genes.

Patent and patent applications search may be used in the following use cases (Atkinson, 2008):

• patentability,

• clearance to market a product,

• patent validity,

• opposition to a patent being sought by another,

1_{http://www.uspto.gov/go/pac/doc/general/} 2_{http://www.wipo.int/pctdb/en/glossary.jsp} 3

• infringement watch,

• creating intellectual property landscapes for business development or R&D,

• infringement defense,

• litigation,

• prosecution support,

• creation of portfolios for assignments, investments, mergers and acquisitions,

• licenses with legal status and contingency clauses.

Furthermore, patents are an important source to consider during research. There are three main reasons for using patents: (1) avoid reinvention, (2) minimize cost in form of licenses or royalty- fees for intellectual property and (3) early access to research results. For instance, if a new exper- imental essay was patented, then the researcher can decide if they want to use this technology (1). An informed decision can be made, if additional money and time should be spend for developing an alternative approach or if the royalty-fees for licensing are to be paid (2). The early access (3) is due to the patentability requirements. One requirement is the novelty criteria. To satisfy this, prior publications with the results or methods are not allowed. Thus recent patent applications contain information not yet available through literature.

Patents and patent applications (pending patents) are also available on the web and in special- ized databases, for example see Table 5.1. A comparison of Dialog, esp@cenet, Questel-Orbit and STN with regard to intellectual property information is available in (Stock and Stock, 2006).

Name URL Provider Subscription

Required

Dialog http://www.dialog.com/ ProQuest

(former Thomson)

yes

esp@cenet http://ep.espacenet.com/ European

Patent Office no

FreePatentsOnline http://www.freepatentsonline.com/ no

Google Patents https://google.com/patents/ no

PATENTSCOPE http://www.wipo.int/pctdb/ _{WIPO no}

patentstorm http://www.patentstorm.us/ no

Questel-Orbit http://www.questel.com/ Questel yes

STN International http://www.stn-international.de/ FIZ Karlsruhe yes

USPTO http://patft.uspto.gov/ USPTO no

Table 5.1: Patent databases with web search interfaces

In terms of information value patents have to be treated with special care. To maximize the protection and market value of a patent, it has to be very broad and contain as many claims as possible. Yet it should reveal only the minimal and by law required amount of information to the competitor. This can for instance be done by using non-obvious synonyms. The general layout of patents with title, abstracts, descriptions, claims (main and sub claims), possible multiple identifiers and translation into different languages do not make this simpler. Due to the high commercial interests related to patents, statements regarding patents have to be treated with care.

The high financial impact of patents, especially in the pharmaceutical/biomedical area, is il- lustrated with the drug Atorvastatin. As a Pfizer product it has the brand name Lipitor. Lipitor is a

drug that is used to lower the blood cholesterol level. It is one of the best selling drugs in the mar- ket. In the year 2008 Pfizer’s made a sales volume of 12.4 billion US-Dollars with Lipitor. Thus a single drug contributed a quarter of the overall sales volume (41.8 US$) of Pfizer. According to the FDA orange list Lipitor is protected by five patents. The first patent with the US patent num- ber 4681893 was submitted in 1986. It has the title “Trans-6-[2-(3- or 4-carboxamido-substituted pyrrol-1-yl)alkyl]-4-hydroxypyran-2-one inhibitors of cholesterol synthesis”. The patent has 10 pages and comprises 9 claims. The first 8 describe the compounds and only in the 9th claims the application is stated: “A method of inhibiting cholesterol biosynthesis in a patient in need of such treatment by administering a pharmaceutical composition as defined by claim 8.” Due to the maximal period validity period of 15 years, the protection granted by the patent will expire in the year 2011. It is expected that the sales will drop to only a fraction. This was demonstrated by other patent expired drugs, such as antidepressant Prozac. The sales for Prozac dropped from 2 billion US$ to 500 million US$ (Salz, 2009).