Patents exist because inventions exist, and inventions result from the search for solutions to problems of a technical nature, either because the problem has been identified and does not have a solution or because solutions to the problem already exist but have gaps that need to be resolved, or due to combinations or variations of these reasons, typically associated with a need influenced by various factors, including economic, health, safety and many other factors.
It is not simple to invent and although it is a totally distinct effort, it is not simple to define in a single model how an inventive process takes place.
The patent laws in different countries, which already involve processes of harmonisation between them, nevertheless seek to define and simulate the inventive process and have found forms which, although artificial, are very efficient and reproducible.
This is what gives rise to the concepts of novelty and inventive step, and to what is known as the problem-solution approach, a test developed by Boards of Appeal of the European Patent Office (EPO) in 1982 which consists of assessing the presence (or absence) of the second criterion, i.e. inventive step, through the clearest and most specific test possible.
One of the most common issues for inventors and innovators is determining when is the right moment to start the patenting process.
A clear answer is the following: prior to any disclosure of the invention, as this would compromise the fulfilment of the first requirement, i.e. novelty.
However, this answer leaves some room – and doubt – as to when is the right moment.
For example, someone who devises an innovative concept very often needs time to better develop it and may well not have the necessary resources – financial, technological, commercial, market access or even market experience – to successfully implement it or put it into practice.
This leads to the need to contact third parties (or to disclose). Once again, will these disclosures jeopardise the novelty of the invention?
Yes, and for this reason, it very often happens that a patent application is filed prior to any potential disclosure, in spite of the possibility or alternative of entering into a confidentiality agreement (which is only possible if contact is made).
There is an interesting requirement in this situation: a patent application is filed to establish a first date, prior to any potential disclosure. However, this application only defines a first version of an invention and there are components that will be yet to be developed.
The case described is not unique and progress in the field of industrial property in Portugal – which could be an interesting topic for another article – means that a large percentage of patent applications filed do not contain all the information intended by their holders, who will therefore wish to amend the texts originally filed.
This situation seems highly technical or legal, but the various changes to the law have profound implications for the way in which companies and institutions carry out patenting.
Under Portuguese law (the Industrial Property Code) until July 2019, amendments could be made to a patent application at any time and the legal provision that governed these amendments was applicable to all types of rights: trademarks, designs and patents.
This means that a company could better develop its innovative concept and, throughout the process (preferably prior to publication!), such information could be added. The original date would be maintained for the original subject matter and the date of the amendment would apply with respect to the new subject matter.
Since 2019, for a patent (or utility model) application, it is no longer possible to make any amendments to the text of the application that are not supported by the original text. This also applies to a provisional patent application (PPA) when it is converted. In fact, this provision has ended the possibility of converting PPAs for articles, theses, descriptive documents and any similar texts.
All over Europe (and indeed the whole world), there are modern legal mechanisms which allow the holder of a patent application to amend the application up to one year after the start of the process.
This raises (at least) one question: will further changes be necessary or are there already solutions available in the Industrial Property Code for it to provide a modern function, i.e. for it to keep up with improvements in a rapidly developing world?