|August 21, 2012|
In general, we can define the patent as the exclusive right to use the invention for a given term.
The invention novelty is worldwide required by all patent legislations, as the condition for such invention existence (Cabanellas Guillermo. Derecho de las patentes de invención. Tomo I. Pág. 699. Editora Heliasta. Buenos Aires. 2001).
The novelty invention is determined in connection with existing knowledge in the country or abroad. Therefore, a foreign patent could not be considered as a new one in the country.
The agreement concerning the intellectual property matters related to trading (ADPIC, as per Spanish abbreviation), provides in Article 27 that “patents could be obtained for all inventions, either for products or procedures, in all technology fields, providing those invention are news...”
The novelty is a pretrial condition on the invention concept. Furthermore, it is the most important and basic requirement to determine its patentability.
Specialized doctrine points outs the rediscovery of a forgotten knowledge or even of a task that intellectually has inventive characteristics but without a new result of a new technique are not considered as inventions (Cabanellas Guillermo. Derecho de las patentes de invención. Tomo I. Pág. 708. Editora Heliasta. Buenos Aires. 2001).
To be supported by an exclusivity right, the invention has to be new; on the contrary, an unjustified right should be granted to patent holder, but the public shall be prevented of a common ownership good, the patent is justified when it is a contribution which enriches the technological knowledge to benefit the public in general. The researcher effort and work which become into enrichment and widening of the capability and personal knowledge regardless the worthiness implied, does not deserve the patent protection (Cabanellas Guillermo. Derecho de las patentes de invención. Tomo I. Pág. 702. Editora Heliasta. Buenos Aires. 2001).
In Dominican Republic, the law No. 20- 2000 on industrial property, establishes that the novelty is a basic requirement to grant the patent registry, as indicated in Article 2, letter b, when states that are excluded from the protection of an invention right “the discoveries of something which exists, the scientific theories and mathematical methods”. Likewise, Article 3 of such law requires the novelty when stipulates the needed requirements for invention be patentable are the susceptibility of industrial application, the novelty and the inventive level. Even more the Article 5 affirms “an invention is innovative, when it does not exist in the state of the art”.
The State of the Art concept outlines the limits of the novelty in the invention patent field, therein is laying its importance and interest.
State of the Art. The several countries law as well as the international legislation indicates that before to determine if an invention is or not innovative the state of the art shall be known at the time the patent application is submitted. In this sense, the number 2 Article 5 of industrial property law indicates: “The state of the art includes all that has not been disclosed or made available to public worldwide, by legible publication, oral divulgation, marketing, use or any other means, before the application is submitted in Dominican Republic, as the case may be, before the date of submission abroad which priority is claimed according with article 135.
As we can notice, the invention advertising is the criterion which determines if such invention is or not in the state of the art.
Advertising shall be construed in the broadest meaning, either performed by writing or oral means. In both cases must be tangible. However, a writing or oral description does not determine by itself the requirement to be considered as integrated to the state of the art. In all cases the possibility of being accessed by the public shall be taken into account, even when it didn’t have a big diffusion.
Doctrine states a description written in a document reserved as confidential or during a reserved conversation shall not be enough to incorporate the knowledge described in such way to the state of the art (Cabanellas Guillermo. Derecho de las patentes de invención. Tomo I. Pág. 707. Heliasta. Buenos Aires. 2001).
The accessibility to public could not be understood as the invention is really known by a group of people, but as a possibility that they have known such invention (Jiménez Blanco, Pilar. El derecho aplicable a la protección internacional de las patentes. Pág. 128. Editorial Comares. Granada. 1998).
The novelty as the determining criterion of invention patentatibility has an exception: The claiming of priority right. To avoid the patent application and use of the invention, which has been produced between the first and the second application, this shall be taken into account either to be included in the state of the art. (Jiménez Blanco, Pilar. El derecho aplicable a la protección internacional de las patentes. Pág. 135. Editorial Comares. Granada. 1998).
In Dominican Republic it is necessary the authorities make their best efforts for improving the reviewing of patent application, which we understood is made in an artisanal way. We need to change to a reviewing system with the proper technical and scientific rigor to analyze and determine if applications submitted to Industrial Property Office comply or not with the novelty requirement. We recommend the checkers of that office, based on Industrial Property law provisions analyze all documents related to patent applications, either those been registered as well as those which registration is pending. Also, they have to study the national and foreign patent publications and any other material issued to determine the invention to be patented is into the state of the art. The validity or survival of patents shall depend on such matters when third parties contesting arise.
Rodolfo Mesa Chavez, partner in Dominican Republic law firm of Mesa & Mesa (www.mesalex.com), he is expert patent and trademark lawyer, with office in Santo Domingo, Dominican Republic.