A patent is a title protecting a technical invention, meaning a product or process that provides a technical solution to a given technical problem. Filing a patent grants its holder an exclusive exploitation right over it. In other words, it allows the inventor or their assignee to prohibit any third party from exploiting the invention without their authorization, for the duration of the patent. patent life which is 20 years. Consequently, a patent is an essential tool for both economic and strategic value creation. But what are the key conditions and steps for filing a patent?
The patentability conditions of the invention
First and foremost, it is necessary to ensure that the invention is patentable. Article L611-10 of the Intellectual Property Code lists the conditions for the patentability of an invention and states:« Inventions which are new, involve an inventive step and are capable of industrial application shall be patentable, in all fields of technology. »But what does that mean in practice?
A new invention
Article L611-11 of the Intellectual Property Code states: « An invention shall be considered new if it is not comprised in the state of the art. »
This means that the invention must not relate to an innovation that has already been made accessible to the public, regardless of its author, date, place, means, or form of presentation to the public. It is therefore crucial to maintain the confidentiality of the invention until filing.
Checking the novelty of an invention before filing it is not a legal requirement. However, failing to do so can lead to significant risks, both strategically and financially. Fortunately, there are suitable research tools and methods, which should be chosen according to the technical field, the level of urgency, or the competitive context. By carrying out this check, you also ensure that you are not infringing on an existing patent, thereby avoiding any risk of counterfeiting.
An invention involving an inventive step
Article L611-14 of the Intellectual Property Code states: « An invention shall be considered as involving an inventive step if, in respect of the state of the art, it is not obvious to a person skilled in the art. ».
Inventive activity is the idea that an invention should not be a too obvious, logical, or easy solution to an already known problem. This is an essential criterion, as most patents are invalidated for lack of inventive activity, far more than for lack of novelty or industrial applicability.
But who judges whether an invention is obvious or not? It's a fictional character called «the person skilled in the art». This is not a real person, but an ordinary and competent professional in the relevant technical field. We then look to see if the solution provided by the invention was obvious or not to the person skilled in the art, meaning we ask ourselves if they could have achieved it easily. Several indicators can then be used to consider that your invention is not obvious: it brings real technical progress, overcomes significant difficulties, meets a need that has long been known, etc.
This criterion is subjective, but the offices and courts try to be as methodical as possible.
An invention capable of industrial application
Article L611-15 of the Intellectual Property Code states: « An invention shall be considered capable of Industrial Application if it can be made or used in any kind of industry, including agriculture. ».
For an invention to be patentable, it must have a concrete and practical character. If it is too abstract or purely theoretical, it cannot be used in industry (in the broad sense of the term), and therefore cannot be patented. In summary, your invention must be capable of being manufactured or used in an industrial field.
Inventions excluded from patentability
Some creations are excluded from patentability because they are too abstract ideas or concepts. This is the case for discoveries, scientific theories, mathematical methods, computer programs as such, or therapeutic or surgical methods.
Also excluded are inventions contrary to public order or ethics, the human body as such, and plant and animal varieties obtained by natural means.
These exclusions are exhaustively listed in Articles L611-16 to L611-19 of the Intellectual Property Code.
The deposit steps
Once patentability conditions have been verified, you can then begin the filing procedure.
Preparing the file in advance
Before filing a patent application, the file must be thoroughly prepared. This step is crucial because insufficient or poorly worded drafting can weaken the protection of your patent. Therefore, it is recommended to seek assistance from a patent attorney or lawyer.
- Write a complete description of the invention She must clearly explain what the invention does, how it works, and what it is used for.
- Formulate precise claims These are the phrases that define what is protected. They must be clear, concise, and based on the description. It is better to have too much than too little, as the scope of claims can be narrowed, but not widened after filing.
- Add drawings if necessary they allow for a better understanding of the invention, but never replace the written description.
- Thinking about the protection strategy Target countries, priority, types of titles (patent, utility certificate, etc.).
Deposit with the competent authority
Once the file is finalised, you must submit it to the relevant office:
- In France, it concerns the’INPI (National Institute of Industrial Property) via an online procedure.
- In Europe, it is the’EPO (European Patent Office) (European Patent Office) which offers a Europe-wide filing. It is also possible to target multiple countries thanks to the PCT international procedure.
The filing provides an official date, which marks the beginning of protection (and counts for priority). It is also possible to file a provisional application (a faster and cheaper procedure, but which must be completed later).
Review and publication
After filing, there is initially a formal examination, focusing on document verification, followed by a substantive examination.
This exam covers the previously described patentability conditions novelty, inventive step and industrial applicability. The offices then establish a search report which indicates whether prior art documents could affect patentability (state of the art).
It is important to note that the examination is cooperative. Indeed, throughout the procedure, you will engage with the examiner to adapt, restrict or defend your claims.
The application is published 18 months after filing, allowing the public to become aware of the invention. After grant, there can be an opposition within a certain timeframe (9 months at the INPI, as at the EPO) by third parties who challenge the patent.