BASIC CONCEPTS IN PATENT LAW

Suzan R. Hofstede Bilkent University Faculty of Law

Patent law deals with concepts such as patentability criteria, prior art, accused devices and the period of time that a patent holds the exclusive right. Patent law can be considered as a branch of intellectual property law. Furthermore, intellectual property is a type of property which is created originally by human thoughts. Subcategories of intellectual property are patents, copyrights, trademarks, and trade secrets.

PATENT LAW

Patent is an exclusive right which is given by the government to an inventor, the inventors or a company. This exclusive right has a power to make, use, sell an invention generally for a 20-year period. In this article some of the basic concepts that are used in patent law are going to be examined and explained.

PRIOR ART

Prior art is any evidence that an invention is already known. It does not need to exist physically or be commercially available. For instance, that idea/invention can already become available to public at a conference or printed in a publication. It is sufficient that someone has described, shown or made something that contains a use of technology which is very similar to the invention.

DIFFERENCES BETWEEN A PUBLISHED AND GRANTED PATENT

Granted patents have the exclusivity and monopoly of the right over a period of time which is given by the government. On the other hand, a published patent does not have the exclusivity as the patent prosecutions and examinations are not done yet. However, a published patent indicates that it can turn into a granted patent in the future, which can have the exclusive rights.

FAIR USE

“Fair use permits a party to use a copyrighted work without the copyright owner’s permission for several purposes. The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes, the nature of the copyrighted work, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and the effect of the use upon the potential market for or value of the copyrighted work.”

The concept “fair use” is discussed in Google v. Oracle case in terms of the source and declaring codes. Oracle incorporation sued Google for using the declaring and source codes of their computer program where Java coding language is used. Google asserted that the usage of the code they have used is fair use and is included in the merger doctrine, which is going to be discussed in the further part of this article. Although there is a huge potential market on this copyrighted code, Supreme Court gave a decision that Google has used the code in terms of fair use. The main defense of Google was the codes they have taken from the company Oracle was in order to be useful for the world with new computer programs which are written by the help of these codes with shorter form. They claimed that they have written most of the code on their own, therefore they used a portion of the copyrighted work. “Transformative use” is important while deciding about whether the use could be considered as a fair use or not. According to the Supreme Court, “a work is transformative, if it adds something new, with a further purpose or different character, altering the first with new expression, meaning or message.”

THE MERGER DOCTRINE AND SCÈNES À FAİRE

In copyright law, the general doctrine accepts that ideas are not copyrightable while expression of an idea is copyrightable. The merger doctrine is a concept in copyright law. It indicates that “if an idea and the expression of the idea are so tied together. Therefore, there is only one conceivable way or a drastically limited number of ways to express and embody the idea in a work. Hence, the expression of the idea is uncopyrightable because ideas may not be copyrighted.”

“The scènes à faire doctrine complements the merger doctrine by providing that certain subject matter are not copyrightable because they are part of the public domain, and no one can obtain a monopoly on such images by putting them into a fixed and tangible medium of expression.”

In the Google v. Oracle case, the courts have also discussed about merger doctrine before asserting a verdict. Google defended that the codes they have taken from the Oracle’s program could only be written in a limited number of ways therefore, due to the merger doctrine those parts of the code is not copyrightable. The court has decided that the usage of code was acceptable in terms of the merger doctrine in addition to fair use.

IMPORTANCE OF THESE CONCEPTS IN TERMS OF INFRINGEMENT

These concepts which are called fair use, the merger doctrine and scènes à faire doctrine also affect the validity of a claim in a patent. They have a crucial role on deciding whether there is an infringement or not. Sometimes the claim or the patent itself is not valid, therefore the court concludes that there is not a problem regarding infringement. On the other hand, the claims and the patent can be valid, but as there is an issue about fair use or the merger doctrine the court makes a decision accordingly. Therefore, these concepts has a prominent place in practical life when there is a litigation between companies.

EVERGREENING

Evergreening is mostly used by drug companies as their revenue is really high for only a day. These companies earn millions of dollars every day, therefore prolonging the patent for a couple of days make a huge difference for the company. Evergreening involves three fields of regulation: Pharmaceutical regulatory law, patent law and competition law. The term “evergreening” is used when an innovator holds more than one patent protecting its product, especially if some patents expire later than others. An innovator introduces a newer version of its own product that is already on the market in order to enjoy an exclusive market and the resulting advantageous pricing.

PATENT LICENSE

Licenses are legal tools that allow for the controlled use and distribution of protected intellectual properties, including patented inventions. Licensing is a legal arrangement where the owner of a protected invention, design, or creative work (the licensor) grants permission to another party (the licensee) to use, produce, or distribute the protected asset under specified terms and conditions.

PATENT TROLLS

Recently, the patent system has a serious problem which is due to “patent trolls”. A patent troll uses patents as legal weapons, instead of actually creating any new products or coming up with new ideas. Patent trolls, purchases many patents from inventors or companies for generally cheap prices and they deal with litigation most of the time. As they have various of patents they sue or threaten alleged infringers to get a license. Especially if the claims within the patents are too broad or vague, they are able to threat much more people in an easier way.

In conclusion, these concepts are essential in patent law as they are discussed during prosecutions and litigations. This article only discusses some of the basic concepts such as evergreening, merger doctrine, scènes à faire, fair use and other basic terminology. These concepts also affect the validity of a claim in a patent. They have a crucial role on deciding whether there is an infringement or not.

1 Become available to public at a conference is protected in the United States of America in 35 U.S. Code 102 for a year which is called “the grace period”. However, in the European countries “becoming available to public” is not protected with a grace period.

BIBLOGRAPHY

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"What is Fair Use?" Copyright Alliance, https://copyrightalliance.org/faqs/what-is-fair-use/. Accessed 21 July 2024.

Supreme Court of the United States. Google LLC v. Oracle America, Inc. No. 18-956. 2020. https://www.supremecourt.gov/opinions/20pdf/18-956_d18f.pdf. Accessed 21 July 2024, p. 61.

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Samuelson, Pamela.

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