Proprietà intellettuale e brevetti
Matteo Cagnasso. Dottore in Biotecnologie Agrarie Vegetali. Ph.D. presso l’Università dell’Arizona.
Report held at Workshop: “Important Issues of Business Law” (Company Law, Artificial Intelligence & Intellectual Property Law) for Business People - Shinawatra University - 16 March 2018.
L’articolo offre una panoramica in tema di invenzioni industriali, sul regime legale ad esse applicabile al fine di garantirne la protezione e sui limiti della protezione medesima. Inoltre, vengono illustrati i requisiti necessari affinché un’invenzione possa essere brevettata, nonché gli strumenti legali cui può ricorrere il titolare di un brevetto laddove la propria invenzione venga illecitamente sfruttata. Vengono infine delineate le differenze tra invenzione brevettata, segreto industriale e marchio registrato.
The article deals with industrial inventions, the legal regime for the protections of such inventions and with the very limits of it. Furthermore, the report illustrates the requisites necessary for an invention to get patented, as well as the legal instruments that can be resorted to by the patent holder in case of abuse by a third party (the so called “usurper”). Finally, the differences between patented invention, industrial secret and trademark are outlined.
industrial inventions – patents – industrial secret – trademarks.
The industrial invention is the solution of a technical problem, exceeding the normal knowledge in application of contemporary technique; a creative contribution of the human mind, suitable for industrial applications; an inventive step, a progress in general knowledge.
The inventions are intangible assets, which can be exploited by several subjects, without interfering each other: they are unlimitedly usable, both in time and in space. Consequently, the legal regime of property, which regulates the right of exploitation of tangible assets, cannot be applied to inventions.
If someone else exploits an invention, it does not prevent the author of the invention from exploiting it; therefore, while property rights are focused on granting the exploitation of tangible assets only to the owner, IP law is mainly focused on granting the power to prohibit the exploitation of intangible assets to third parties. Not infinite are ideas: the availability of innovative solutions is not unlimited, since inventions require preparation, time, capital, resources, networking; huge investments that require remuneration. These factors causes the scarcity of resources in the technical-scientific solutions.
A product obtainable from an invention is the result of the combination of material elements and an idea. If this product is reproducible in a plurality of specimens, the dissociation of the material good (the material body) from the immaterial good (the idea) occurs. Third parties, by exploiting the invention achieved by the inventor, respect the property of the material body, but take possession of the idea: inventions become an autonomous asset, with an autonomous economic value, transmissible and usable without the presence or collaboration of the inventor.
Exclusivity is essential, because what the individual invented everyone is able to imitate, and without a patent, the inventor would remain deprived of a remuneration, and third parties, without any cost, would exploit the idea that cost to the inventor a lot of time and expenses. Without remuneration the inventor could decide not to make the invention available to the public, and not to exploit it commercially, or to exploit it as an industrial secret.
Inventions of product may consist of machines, instruments, tools, mechanical devices, industrial products or results, technical applications of scientific principles with immediate industrial results.The inventions of process solve the technical problem of how to produce; they are focused on techniques or methods for producing a good or a service. The inventions of new use are focused on a new use of a known substance or composition of known substances, even if already patented.
The novelty exists when the invention is not included in the state of the art, consisting in the set of knowledge that has been made available to the public before the filing date of the patent application or the claimed priority. The knowledge disclosed during a written and oral description, use or any other means (commercial brochure, internet disclosure, photographic representation, etc.) belongs to the state of the art. Prior disclosure occurs when, before filing the patent application, the invention is disclosed to the public by the inventor or a third party. It is necessary a communication or diffusion of the invention to an indeterminate number of people, capable to understand the information (to learn the essential and characteristic elements in order to reproduce the invention), and not bound to secrecy.
The anteriority consists in the anticipation of an invention by a document belonging to the state of the art (including patent applications filed, but not yet published). An invention is new when, compared with each existing anteriority, it does not totally coincide with them. An invention is not new if it is anticipated in all its elements by an anteriority that integrally reproduces the same elements.
A patentable invention must show a further and distinct creative element (intrinsic novelty or originality or inventiveness or inventive step). An invention is considered the product of inventive activity if, for a technician average expert in the art, it is not evident from the state of the art. It is not original the invention which, although not disclosed, is evident to a technician with ordinary skills in the field of technology to which the invention belongs (non-obviousness).
The technician average expert in the art is an ..