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15 October 2007
Many innovators are forced to wait for a considerable period of time between the patent application filing date and the date of patent grant. During this time many innovations are copied without the consent of the creator which must tolerate this until the patent office issues the patent.
Such circumstances beg the question of whether patent applications deserve some kind of legal protection. In order to respond to this question, the following premises should be considered:
Therefore, free riders will be more tempted to copy innovations during the patent application procedure since:
In view of these facts, it is worth asking whether patent applications deserve legal protection.
Some countries have amended their patent legislation to give innovators a degree of protection during the patent application procedure. Some countries have incorporated into their patent system rules that enable a patent applicant to claim economic compensation against third parties that exploit its invention without its consent and before the patent is granted. This compensation is sought once the patent is granted.
In this sense, the solution provided in Article 59 of the Spanish Patent Law is remarkable. The requirements for claiming protection for a patent application may be summarized as follows:
Similar remedies are also provided in other countries such as the United Kingdom, France, Italy, Japan and Brazil.
Unfortunately, there is no provision in Argentina that specifically envisages protection for inventions during the patent application procedure.
However, the Argentine Constitution is one of the few constitutions that expressly recognizes IP rights. Article 17 provides that every author or inventor is the owner of his or her creation, invention or discovery for the legal term established by law. Article 17 clearly states the inventor's right to his or her property and emphasizes that this right pre-dates the administrative act of the patent grant.
In this regard, the Supreme Court in Spitz, Walter P v C'a Standard Electric Argentina SA (September 24 1953) resolved that the inventor's right, according to the Constitution, is born together with the invention and is independent of the patent grant.
It is clear that a patent applicant is claiming a pre-existing property right, but it needs the administrative grant of the patent to be legitimized in order to become the legally empowered exclusive exploiter of the invention.
In light of Article 17 of the Constitution and the fact that the inventor is entitled to obtain a patent as a legal document which guarantees the exclusive exploitation of the relevant innovation, there is no reason why the inventor should tolerate unauthorized use of its invention during the patent application procedure. In addition, the innovator should not have to postpone the claim for protection until the patent is granted.
The patent laws in Spain, the United Kingdom, France, Italy, Japan and Brazil provide that applicants can obtain compensation for damages only if the patent is ultimately granted. Accordingly, it is possible for the inventor (claiming property of the invention and damages for the unauthorized use of such property by a third party) to start legal action during the patent application procedure, since the final court decision is issued only once the patent is granted.
In this sense, it is praiseworthy that Senators Riofr'o and Gioja have drafted a bill aiming to introduce into the Argentine Patent Law provisions which recognize the need for adequate protection for innovators. This bill provides legal protection for pending patent applications.
The bill contemplates that from the publication date of the patent application the applicant is entitled to claim for provisional protection, consisting of the right to require reasonable compensation for damages against any third party which uses the invention in such a manner that, post-grant, would be considered as patent infringement. This provisional protection can also be extended prior to the patent application's publication date for parties notified of the filing by the patent applicant.
The bill points out that during the patent application procedure the scope of the protection is determined by the claims included in the relevant patent application at the time of publication. However, the patent grant will definitively determine with retroactive effect the provisional protection, provided that the scope of the claims has not been broadened during the procedure. In such cases the protection will not be extended to the amendments incorporated during the patent application procedure.
Likewise, the provisional protection is not effective in the event that the patent application is withdrawn or rejected by the patent office.
Allowing the inventor to claim legal protection only once the patent is granted:
This bill is useful in providing a solution for those that invest in research and development and suffer the delays of a request for exclusive patent rights. The initiative favours technological improvements by adopting the correct attitude towards innovators and offering them the legal tools to prevent third parties benefiting from their investments.
Giving an innovator the option of court action and recognizing the need for
economic compensation in the event that a third party illegally appropriates
its creation are essential factors in encouraging investment in research
and, consequently, the contribution of new technology to the community.
For further information on this topic please contact Carlos Octavio Mitelman or Carlos María Gallo at Obligado & Cia by telephone (+54 11 4114 1100) or by fax (+54 11 4311 5675) or by email (firstname.lastname@example.org).
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