THE IMPORTANCE OF PATENTS

The industrial battle to bring new coca products to world markets will be long and hard. It will be a tragedy if the Andean countries fight and win that battle, and they will, only to see the profits from these new markets end up in the bank accounts of companies from the United States and Europe, especially if these companies decide not to use coca leaf from the Andes. If there is enough profit, the multinationals will grow their own coca leaf for these new products, and deny any profits to the Andean countries that fought the battle for increased coca use that these multinationals will benefit from.

This cannot happen. Coca industrialization in the Andes must use the global patent system to protect new coca products. What follows is an introduction to the global patent system, and some strategies on how entrepreneurs in the Andean countries can use the patent system to protect their innovations in global markets. A key part of any coca industrialization policy is to exploit the global patent system.

WHAT IS A PATENT?

Click here for: example, in Spanish, of patent on a coca drink.

A patent is a set of exclusive rights granted by a sovereign state, or groups of sovereign states (for example, the European Patent Office), to an inventor or inventors (or their assignee, for example, an employer) for a limited period of time (around the world, patent term is mostly less than 20 years from the date of filing). Most countries require patentable inventions to be novel and non-obvious, and the issued patent must teach others how to practice the invention. The text of a patent is an invention recipe.

One subtle aspect of patents. Patents are not a government-granted right to do or make something. Instead, they are a government-granted right to prevent others from doing or making your invention. You still have to respect the patent rights of those who preceded you, since typically, your invention is an improvement on existing technologies, some of which may be patented.

Unlike copyright law, enforcement of your patent is a matter of civil law. Typically, in a patent lawsuit against an infringer, a patent owner is seeking two main things: any lost profits, and an injunction against future manufacturing and sales and use.

One goal of a patent owner who does not wish to do all of the manufacturing and sales of his invention, is to license the patent to others, if not to sell the patent rights to another company better positioned to exploit the invention.

Be forewarned, especially small and independent inventors - obtaining a patent in one country, let alone many countries, can be expensive. In the United States, one can easily spend tens of thousands of dollars to obtain a patent. So it is important to well estimate the potential future profits from your invention, to see if it is worth investing your monies in obtaining a patent. Below, we offer some suggestions on way to minimize these costs.

GUIDE TO GLOBAL PATENT OFFICES

These are Web sites of patent offices and organizations around the world that you will interact with to obtain patent protection.

• Bolivia: Servicio Nacional de Propiedad Intelectual (SENAPI)
• Peru: Instituto Nacional de Defensa de la Competencia y de la Proteccion de la Propiedad Intelectual (INDECOPI)
• Colombia: Superintendencia Industria y Comercio: Propiedad Industrial (SIC)
• United States: Patent and Trademark Office (PTO)
• Europe: European Patent Office (EPO)
• Global: World Intellectual Property Organization (WIPO)

A PATENT STRATEGY FOR THE ANDES

The United States has created a preliminary form of patent protection, that is inexpensive to use and available to Americans and non-Americans alike - the U.S. provisional patent application. After you file a provisional patent application, you have one year to file a formal patent application, while being able to talk to investors and potential partners about your invention, without losing your patent rights. For those Andean countries that allow their citizens to file such provisional patent applications in the United States, this filing can be an important business tool.

The United States Patent and Trademark Office has a nice explanation of Provisional Patent Applications, summarized below. Richard Stim, a patent lawyer and editor at Nolo Press, offers some advice on deciding to file a provisional patent application.

Click here for: Example, in Spanish, of patent on a coca drink.

PROVISIONAL APPLICATION FOR PATENT FILING DATE REQUIREMENTS

The provisional application must be made in the name(s) of all of the inventor(s). It can be filed up to 12 months following the date of first sale, offer for sale, public use, or publication of the invention, whichever occurs first. (These pre-filing disclosures, although protected in the United States, may preclude patenting in foreign countries.)

A filing date will be accorded to a provisional application only when it contains:

• a written description of the invention, complying with all requirements of 35 U.S.C. 112.1; and
• any drawings necessary to understand the invention, complying with 35 U.S.C. 113.

If either of these items are missing or incomplete, no filing date will be accorded to the provisional application. To be complete, a provisional application must also include the filing fee as set forth in 37 CFR 1.16(d) and a cover sheet.

CAUTIONS

The benefits of the provisional application cannot be claimed if the 12 month deadline for filing a non-provisional application has expired. A provisional application cannot result in a U. S. patent unless one of the following two events occur within 12 months of the provisional application filing date: a corresponding non-provisional application for patent entitled to a filing date is filed that claims the benefit of the earlier filed provisional application; or a grantable petition under 37 CFR 1.53(c)(3) to convert the provisional application into a non-provisional application is filed.

FEATURES

Provides simplified filing with a lower initial investment with 12 months to assess the invention’s commercial potential before committing to higher cost of filing and prosecuting a non-provisional application for patent.

Establishes official United States patent application filing date for the invention.

Permits authorized use of “Patent Pending” notice for 12 months in connection with the description of the invention.

Begins the Paris Convention priority year (once you file in your home country, you have one year to file in 175 countries, unless you file using the PCT system, under which you have up to 30 months to file in 148 countries).

Enables immediate commercial promotion of invention with greater security against having the invention stolen.

Permits applicant(s) to obtain USPTO certified copies.

Provides for submission of additional inventor names by petition if omission occurred without deceptive intent (deletions are also possible by petition).

PREPARING A (PROVISIONAL) PATENT APPLICATION

While a provisional patent application can be less complicated than a formal patent application (for example, no patent claims needed to be submitted as part of a provisional patent application), it is safer to structure your provisional patent application as close to a formal patent applications as possible. One way to learn how to prepare a provisional patent application, or a formal patent application, is to read and learn from issued patents close to your technology.

Click here for: Example, in Spanish, of patent on a coca drink.

COSTS OF OBTAINING A PATENT APPLICATION

A real, rough rule-of-thumb is that it will cost you US $20,000 to obtain a patent in any one country. Typically inventors seek patents in large markets, such as the United States, Europe, Japan and China. In South America, beyond these countries, inventors seeking to patent locally would consider Brazil first (whose GDP equals pretty much the rest of the continent). Other countries in South America, in order of GDP, would be Argentina, Colombia, Peru and then Chile. So, if you decided to patent in your home country in South America (for example, Bolivia), as well as Brazil, the U.S., Europe, Japan and China, you are facing a cost of $100,000, though spread over many years. But if your invention is a new medicine, the potential profits easily justify the patent costs. Just make sure you have monies budgeted.

The World Intellectual Property Organization (WIPO) has a nice introduction to the costs of patenting: Managing Patent Costs: An Overview.

GUIDE TO RECOMMENDED PATENT LAW FIRMS