Patent

How to protect an invention

There are two ways of protecting an invention: as a patent of invention or as a utility model.

There is also the Provisional Patent Application and the Supplementary Protection Certificate, which are other forms of protection that guarantee the priority of an application and extend the validity of the protection, respectively.

 

Patent of invention

The patent of invention is the broadest form of legally protecting an invention against the manufacture, supply, storage, placing on the market or improper use. It guarantees the protection of the invention for a maximum period of 20 years, counted from the date of the request.

It allows protecting inventions that:
  • are new (they are not public domain)
  • do not present themselves as evident in the eyes of an expert
  • can be applied to any type of industry.

 

Provisional Patent Application

The Provisional Patent Application allows the submission of the definitive patent application to be deferred. It must be converted into a definitive application within one year of being entered as provisional. Otherwise, the provisional application shall be deemed not to have effect.

This procedure is quite advantageous because it allows:
  • to prioritize an application for registration of an invention immediately and without major formal requirements
  • postpone for one year the formalization of a definitive patent application
  • ensure that the invention is not made public (the provisional application is not published in the Industrial Property Bulletin)
  • to understand, on request of the applicant, whether the invention to be protected has not yet been made public, within or outside the country, nor has it been the subject of any other patent application or utility model, as well as to understand what already exists in the technical area of the invention
  • save money (the applicant can assess whether it is worth investing in the invention, for example, after evaluating the market in which he wants to introduce it).

The Provisional Patent Application must contain all the technical characteristics to be protected. When this request is converted to final application, these technical features will now be protected by patent.

If the definitive patent application contains features other than those indicated in the provisional application, they cannot benefit from the priority of the application for provisional patent.

This means that patent protection is at risk of being refused because the features which are in the definitive application (which, because they are different from those in the provisional application, did not enjoy priority registration) have since been disclosed by others or even by itself.

If you want to use the provisional patent application to ensure the priority of a patent application abroad, make sure that the country where you want to protect your invention allows this to be done.

Following the request for conversion of the provisional application, the normal procedures of a patent application are followed.

The duration of the patent (20 years) is counted from the date of submission of the provisional application and not from the definitive conversion.

The utility model is the fastest way to protect an invention

This way of protecting an invention involves a simpler administrative procedure but has a shorter shelf life. The granted rights are valid for a maximum period of 10 years from the date of the application for registration.

Through the utility model, no inventions can be protected that concern chemical or pharmaceutical substances or processes, or biological matter.

Through the utility model you can make two types of application: application with examination and application without examination. This brings advantages to the applicant, because:

  • you can pay only the application fee
  • delay or even get to pay the exam fee.

The examination may only be requested if the applicant deems it necessary (for example, whenever he intends to bring a lawsuit).

The utility model is more flexible than the patent. At the request of the applicant, the invention to be protected with utility model may also be patented at the same time or successively. The applicant has up to one year to make successive applications, from the date of the first application.

Also, a patent-protected invention may be protected with utility model at the same time or successively. For this, the applicant has up to 1 year to make this change.

Until a final decision on the application is issued, the applicant may, on its own initiative, rework the patent application and change it to utility model, and vice versa.

Extend your right up to a maximum of 5 years

The Supplementary Protection Certificate (SPC) is an Industrial Property Right that allows:
  • extend the validity of a patent over a period of 5 years for medicinal goods or plant protection goods
  • give holders more time to recover the investments they have made in the research and development of these goods.

The time that elapses since the patent application on a medicinal or plant protection product is issued until the Marketing Authorization for these goods is issued may shorten the time in which the patent effectively protects the product. This is because the validity of the patent begins on the date the application is filed.

This may mean that the holders do not have sufficient time to pay off the investments they have made in the research and development of the medicinal or plant protection product.

The SPC confers the same protection as the patent and is only valid for the product identified in the Marketing Authorization for the medicinal product or plant protection product.

This supplementary protection was created to meet the needs of the pharmaceutical and plant protection goods industries. 

The validity of the SPC can still be extended for an extra period of 6 months. This is only possible if the basic patent concerns a medicinal product which has been the subject of studies in accordance with a paediatric investigation plan. 

The SPC application is evaluated by INPI, which will issue a grant or refusal decision in the Industrial Property Bulletin.

After the publication of the decision, you have 2 months to appeal through the Intellectual Property Court.

Information updated on 01 October 2019 15:26