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University of Silesia in Katowice

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Patent Your Solutions. Interview with Mariusz Grzesiczak, Patent Attorney

30.01.2020 - 08:29 update 26.02.2020 - 09:33
Editors: MK
Tags: patent, wynalazki

Everyone who has read a patent description at least once knows that it’s difficult to compare with any other documents. Packed with complex terminology, it contains, among other things, the essence of the invention recorded as a one-sentence patent claim, which sets the limits of legal protection and consists of even up to several thousand characters.

Fortunately, scientists don’t have to prepare such descriptions on their own. They can use the support of the Office of Patent Attorneys at the University of Silesia, which is headed by Mariusz Grzesiczak. The practice shows that once they decide to submit their solution to the Patent Office, they often come back with subsequent inventions.

|Małgorzata Kłoskowicz|

There are many solutions for which we can obtain patent protection or other protection right. ‘Invention’ is a word with multiple meanings. ‘Patent’ turns out to be even less precise…

Patent is related to invention, that is, a technical solution. In order to be patented, an invention has to meet several criteria.

First of all, it has to be a technical solution. The solutions concerning mental, logistics or organisational activities cannot be covered by patent protection.

Secondly, it must be innovative, which is checked based on the so-called ‘state of the art’.

In other words, a solution that is to be protected is compared against the solutions which are known from the existing state of the art, particularly those revealed in previous patent applications from all over the world in a specific field, or in scientific publications, so as to assess whether it is a new solution indeed.

Thirdly, we have to demonstrate the appropriately high inventive level, which means that the solution should be characterised by its non-obviousness, surprising nature, features that make it significantly different from other solutions known from the state of the art. Such assessment is initially made by a patent attorney who prepares the patent description, and then by experts from the patent office who will take the decision whether the patent should be granted.

Fourthly, our invention should be suitable for industrial application, so its potential applicability is essential.

Apart from inventions, there is a number of other industrial property objects for which either protective right or right in registration can be granted…

These include trademarks (which serve to label goods and services offered by the university), as well as utility models, which are also technical solutions, but – unlike inventions – they do not require a high inventive level.

We also have several protected industrial designs related to what a particular product looks like, that is, concerning the product design rather than its technical features. A good example is the original appearance of loudspeaker columns designed by one of our scientists.

We can also talk about the topographies of integrated circuits and geographical indications, but they basically do not apply to the activity of our researchers and so far we have not had any applications of this kind in the history of the University of Silesia.

Let us then focus on the patented inventions. One of the requirements is to prepare a patent application, including the description of a particular solution. This is a special type of document, requiring the use of specific language, which may be discouraging…

Creation of patent descriptions is difficult and significantly different from writing scientific publications, which may be discouraging for some scientists. Let me assure you that the whole patent application process is supervised by a patent attorney, who will provide their support and knowledge. However, the attorney, who obviously cannot be a specialist in all fields of technology under which inventions are filed, will not prepare such description on their own. It is the scientist who knows what they invented, they are the expert in this field and have to tell me about it, show me the innovation in comparison with the existing state of the art and the advantages of their solution for the human kind.

In most cases, researchers already have their scientific publications prepared. Is this form of presenting an invention sufficient?

I usually meet only one person representing the team of invention authors. Therefore, I begin by saying that I have to understand well what the scientist is telling me, using the language proper for their scientific discipline. I meet physicists, chemists, materials scientists, geneticists… Each of these languages is different.

Our “patent attorney” terminology is also often difficult to understand by scientists, especially those who patent their solution for the first time. Therefore, the key thing is to seek agreement. It is only then that I can start to prepare the patent description, which, however, significantly differs from the language of scientific publication. It’s not easy at the beginning, but apparently this cooperation is successful. The number of patent applications increases every year and the rate of granted patents is very high.

This is also evidenced by the fact that some names of the authors repeat in the information about granted patents. It means that scientists come back to you with their subsequent solutions…

Exactly. It’s a good sign that scientists don’t get discouraged, quite the contrary – they are satisfied that we managed to describe their solution well and then to protect it successfully. With every new application scientists understand better what I ask them from my “patent attorney” perspective and I find it easier to understand the essence of the invention.

The essence is described in the so-called patent claim (or claims, if there is more than one). What other information is included in the patent description?

Although every patent attorney has their own style of writing patent descriptions, it is worth emphasizing that freedom in preparing a patent description is very limited. We describe specifically the existing state of the art, that is, solutions that were previously known (for example from earlier patent applications or scientific publications) from all over the world, which to an extent correspond to our invention. Then we highlight the weaknesses or lower functionality of these solutions, so as to justify the goal of our invention and its advantages by comparison. It is also worth showing practical applications of the invention.

However, the most important part of patent description is the already mentioned patent claims, which describe the essence of the solution according to the invention in a concise yet precise manner. It is interesting that each patent claim must be recorded in the form of one sentence and this rule applies all over the world. This is also a challenge, because patent claim reveals the essence of invention, thus indicating the limits of its legal protection. Sometimes this single sentence consists of even up to several thousand characters…

Where does this restriction come from?

It’s a very practical statutory requirement. Firstly, it forces us to be concise, secondly, it makes it easier to compare other similar and already patented inventions, and thirdly, it accelerates the work of experts in a relevant patent office – they assess whether a particular solution meets all requirements specified in the provisions, especially regarding the novelty and inventive level.

And now the key question. Let’s assume that a patent application was positively evaluated by the experts and the solution was covered by patent protection. What do scientists get from it?

They increase their research output and contribute to strengthening the position of their university as an innovative unit. The solutions developed by our scientists are most frequently submitted to the Polish Patent Office. In this case, patent protection means monopoly awarded by the Polish state for the application of this solution in our country. Thus, nobody can use this invention in Poland commercially without our consent, which, regardless of the scientific benefits, also gives an opportunity for effective commercialisation of a given solution. Also, nobody will be able to patent the identical solution in any patent office in the world, because each application of the same solution will be deprived of novelty which, as we already know, is a necessary condition for obtaining a patent. It’s a reward for a creative person who came up with an innovative idea, spent some time in a laboratory, used their knowledge, etc.

A reward which, however, involves incurring certain costs and is limited in time…

It is necessary to pay a relevant fee to the patent office for each year of patent protection. In our case, these costs are incurred by the university, they can also be planned, for example, in applications for the funding of various research projects.

Patent is a territorially limited right, which means that when granted by the Polish Patent Office, it only gives us protection in Poland. If we wanted to have such protection also in other countries, we would have to apply for it separately. The fees increase depending on the number of countries for which we would like to expand the scope of protection for our invention. We consider this issue for each solution. Some of them are protected in a number of countries that joined the Convention on the Grant of European Patents.

The granted patents are also limited in time and cannot last longer than twenty years. On the one hand, it may seem to be a restriction for the patent owner, but on the other hand, it turns out to be good information, because it means that after some time breakthrough inventions become available to the public, which is important from the social welfare perspective.

It is worth adding that the time is calculated from the moment of submitting a patent application. We must remember that you usually have to wait for the patent office’s decision for a couple of years.

The date of submitting a patent application to the patent office is “sacred”. The duration of patent protection runs from this day, which is also taken into account when assessing the novelty of an invention. This information is important, because it means that if we revealed significant features of the invention even one day earlier, this will constitute grounds for refusing the patent application due to its lack of novelty.

We usually wait for the decision of the Polish Patent Office for two or three years from the date of submitting the application. First, the document is checked in terms of formal requirements and the global state of the art in a particular field is initially assessed. This 18-month period is also important for entrepreneurs and scientists who want to prepare themselves for introducing their solution in the market, or write a scientific publication. They decide whether details of a solution can be disclosed before expiry of this period – for example in the above-mentioned scientific publications.

The waiting time is also related to the high number of patent applications and limited number of patent office experts, whose decisions are burdened with great responsibility. They grant monopoly for a specific solution on behalf of the Polish state, thus blocking market competitors for some time. In justified cases, it is of course possible to submit a request in order to accelerate the entire procedure.

You mentioned scientific publications. From the perspective of our scientists, it seems important that waiting for the decision of the patent office does not block the possibility of publishing research results.

As I’ve already mentioned, the patent application date is binding, so scientists can publish the research results after submitting a patent application, but before obtaining the decision of the relevant office. In such case, somebody who would like to patent the identical solution after getting to know the publication, will not be able to do it in any patent office in the world.

Therefore, patent application does not stand in the way of scientific publication. However, earlier publication of research results – before submitting the application – can make it impossible to obtain a patent, which I’d already mentioned before.

Finally, I think it’s worth mentioning the connection between the university and scientists as authors of protected solutions.

You remain the author of an invention forever. Similarly to copyrights – this is the fundamental, non-transferable and non-expiring personal right of the author.

However, the solution itself, together with the granted protective right (e.g. patent for the invention) is the property of the University of Silesia as the employer of the author(s) of the invention. It happens that property rights are shared with other research centres or companies, if the authors of a single invention represent different units.

It’s worth emphasizing, though, that in the case of successful commercialisation of a specific solution, its authors, in accordance with the rules and regulations effective at the university, have the right to receive 50% profits from commercialisation. This share in profits is very high, which essentially happens only in research institutions. It’s supposed to work as an incentive and motivation for authors of inventions, so that apart from conducting research, they can also undertake cooperation with the units at our university which support the process of commercialising research results. I’m thinking particularly about the Industry Cooperation Office and SPIN-US Sp. z o.o., a special purpose vehicle of the University of Silesia.

What steps should be taken by a scientist who wonders whether the solution that they developed can be reported to the patent office?

It’s good to visit the Office of Patent Attorneys at the University of Silesia. We will talk and check whether a particular solution has the basic features of an invention. If so, we will tell you about the further actions to prepare the patent application and provide support during the whole procedure in the patent office. Please come to us.

Thank you for the interview.

Zdjęcie portretowe Mariusza Grzesiczaka
Mariusz Grzesiczak coordinates the work of the Office of Patent Attorneys at the University of Silesia | Photo by Julia Agnieszka Szymala



Office of Patent Attorneys at the University of Silesia
ul. Bankowa 12
40-007 Katowice
Room 150
Phone no. +48 32 359 11 45
e-mail: mariusz.grzesiczak@us.edu.pl

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