Protection of technical inventions

An invention that changed the world

Patents are granted in respect of inventions provided they satisfy three essential criteria:

  1. They are new; and
  2. They involve an inventive step and
  3. They are capable of industrial application.

Depending on the jurisdiction, various exclusions to patentability may apply. In most jurisdictions, pure mathematical methods, discoveries or methods for the treatment of the human or animal body may not enjoy the protection of a patent.

Wheras novelty is easy to define the question wheter an invention involves an inventive step, for which the inventor should be rewarded by a patent or if the innovation was obvious to a person skilled in the art is most of the time a controversial topic - one that is being intensively discussed by inventors, patent attorneys, examiners, and patent judges.

Rights conferred by a patent

A patent gives the owner the right to exclude others inter alia from using, selling, and offering the protected invention for a limited period of time (namely for so long as the patent holder pays the annual fees due to the national states in which he seeks protection for a maximum of 20 years from filing). Whilst it is commonly understood that a patent grants the owner a monopoly for the life of the patent, the monopoly is not as incontrovertible. The patent only gives a right to exlude others, but is not a positive right in the meaning that the patentee is granted a right to use the patent. The owner of a patent may be hindered by another patent owner who holds older rights which may be essential to the use of his invention.

The patent route in Monaco

A Monaco patent can be obtained in three different ways:

  • Filing a national patent application in Monaco (in French)
  • Filing a European patent application (in English, French or German) and paying the designation fees for Monaco
  • Filing a International application (PCT application) and designating Monaco and paying the official fees.

A national application in Monaco is granted after a check of formalities without any substantial examination. Patents granted by the Monaco government state expressly that the patent is granted without any guarantee of the government. This does not mean that the patent does not form part of the state of the art which could in turn block other applications even at the European Patent Office or WIPO.

The validity can only be challenged before the Monaco courts when a patent owner seeks to enforce his monopoly rights stemming from the Monaco patent against a deemed infringer.

In any event, substantial examination by the European Patent Office does not give a legal guarantee either, but in practice it radically reduces the risk that a patent may be successfully challenged once it has been granted after substantial examination.

The costs of obtaining a European Patent and/or patents in other countries are quite expensive. The costs are composed of official fees for the various Patent Offices and the fees for local patent attorneys. Therefore the budget has to be carefully balanced with the advantages gained by a patent.

At Cabinet Gunther Schmalz, Mr. Schmalz is an experienced European Patent Attorney who knows exactly the client's needs. We set up a timetable of expenses to incur along the road to obtaining your patent(s) with a second timetable phase leading to your obtaining revenues from your patent.

 

It is easy to overspend on an invention because optimism tends to overrule caution. Many invention projects fail not because there is anything wrong with the invention, but because too much money has been spent too soon, or on the wrong things.

(EPO, inventor’s handbook)