JAKL, Ladislav. Legal Protection of Inventions and Utility Models: Drafting of Specifications and Claims.
1. vyd. Praha: Metropolitní univerzita Praha, o.p.s., 2011. 283 s. ISBN 978-80-86855-75-2
The publication deals with issues related to legal protection of inventions and utility models.
The first part focuses on the analysis of patent protection with regard to valid legal rules. Novelty requirements, level of technical solution, and industrial application are discussed in detail. Special attention is given particularly to questions of patentability of biotechnological inventions, computer programmes, and business methods. Questions regarding a right to a patent and inventions belonging to an enterprise are also analysed. The subsequent part addresses the term and effect of the patent. The parts of the publication that clarify such terms as exploitation of an invention protected by a patent, exhaustion of patent rights, limitation of effects of patent, licences and compulsory licences, assignment of patents, joint ownership, and possibilities of cancellation of a patent are very interesting for the entrepreneurial sphere. The next part is concerned with the possibilities to file patent applications via a national route, i.e. at individual national industrial property offices, by international route, i.e. on the grounds of the Patent Cooperation Treaty (PCT) and by regional routes, especially by European or Eurasian patent application. Community patent, which is under preparation, is also discussed, as well as the London Protocol of Translations of European Patents. The possibilities of legal protection are closely connected to novelty searches and analyses of the respective solutions with regard to the protection of their main features. Substantial parts of the publication deal with the methodology of defining patent claims while attempting to protect individual categories of inventions and preparation of patent application with regard to the formulation of individual parts of the specification, including the form, abstract, drawings, and applications of Supplemental Protection Certificates.
The second part addresses the issue of legal protection of technical solutions by utility models. This form of protection is especially advantageous for small and medium enterprises. From this perspective, the steps of utility model proceeding are specified in detail, including possibilities in comparison with patent protection. The possibility of parallel protection by a patent and utility model is also discussed.
The last part of the publication is of the highest importance for applicants. It contains examples of patent specifications and utility model specifications, including respective claims. The examples were elected with the intention to exhaust the broadest possible technical field and include both domestic and European practice. The annex includes the most recent Directive of the President of the Industrial Property Office, which defines patent application forms, utility model forms, and supplemental protection certificate forms and other forms relevant for patent applications and utility model applications.
