October 07, 2019

Uncertainty of third party rights and abuse of patent rights

In a liberal regime of free circulation of ideas and goods, patents act as an exception to this freedom, restricting the ability to act and copy the solutions of others.

The legislator's rationale is to stimulate the development of new and inventive solutions that enhance the development of society, rewarding them with monopoly rights or patent protection.

From this perspective, patents stimulate research and development of new solutions, given that third parties would not invest in research if the results, the fruit of time and financial effort, were completely freely reproducible by third parties.

Likewise, the legislator, at least in its intent, is interested in ensuring legal certainty for third parties so that they can develop alternative solutions that fall outside of existing patent protections; in other words, it must be equally clear whether a solution falls within or outside a valid scope of protection, so as to allow for design around the scope of protection.

As is well known, a certain crystallization of the valid scope of protection is achieved at the conclusion of the examination with the granting of the patent.

The problem we wish to highlight with this article is that, in practice, patents can be maintained at the application stage for a very long time and then modified during the examination in ways that are difficult for third parties to predict, effectively limiting their legal certainty regarding what they can and cannot do.

As is well known, the protection defined by a patent application can be significantly modified while the application is pending.

A patent application that defines extremely and excessively broad protection, and clearly not new, can be limited during the examination to exclude prior art in a variety of ways, effectively removing certainty about what the valid protection will be until it is granted.

This concept is exemplified below. Compare the scope of protection of an initial application with the prior art. Since the scope of protection cannot overlap with the prior art, if this occurs, it is necessary to make changes to the protection, that is, to introduce limitations that exclude the prior art. However, there may be many different limitations, all of which allow the prior art to be circumvented, so it is not known what the actual scope of protection of the invention will be until the patent is granted. It should be noted that the protection under consideration can be limited based on limitations taken from any part of the patent text or even from the entire description text (albeit within certain limits).

Therefore, considering that the patent holder can obtain various different protections as a result of correspondingly different limitations, even if third parties correctly assess the original protection of a patent application as void and risk reproducing the patented invention, they may still find themselves infringing, since the protection itself can be limited in a valid form that the third-party solution interferes with.

Taking this concept to the extreme, a patent holder may have an interest in initially defining overly broad and clearly invalid protection, then tailoring it to a competitor's product. This will obviously require reference to the original patent application, but it will be possible to define many valid protections based on that application and choose the one violated by the competitor's solution.

Imagine initially defining the invention with three words, and therefore in a manner that is not new, and then specifying it with a full page of specific characteristics drawn from one of the many examples of embodiments of the description.

It is possible to keep a patent application pending for many years, with the result that third parties are effectively deprived until the legal certainty envisaged by the legislator is granted, without knowing what valid protection is and therefore what they can and cannot do.

How can an application be kept pending for years?

Well, in Germany, it is possible to postpone the request for examination of the invention contained in the patent application for 7 years; Given that the examination lasts two or three years, third parties become aware of the protection they must not infringe no earlier than 10 years after filing.

A strong option is to file a national patent application, for example in Italy, extend it as an international PCT application upon expiration of the priority year, then access the regional phase of the European patent another 19 months after filing the international application and then follow the European procedure, which on average takes three years to obtain the patent. Even in this case, the grant is granted no earlier than 5/6 years after the initial filing, but there are many cases that exceed 8/9 years from the initial filing.

Finally, it must be considered that the infringement of the product by third parties is traced back to the publication of the application, or to when it still defined a generic and very broad protection, given that, in fact, this third-party solution interfered from the beginning to the end of the examination procedure.

Luca Gallo

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