What can be patented?

Novelty

The invention must be novel. In other words, it must not be an innovation that has already been made accessible to the public, regardless of the inventor, date, place, method and form in which it is presented to the public.

There is no legal obligation to check the novelty of an invention before filing a patent, but failing to do so presents a risk. There are various resources and strategies for carrying such checks, depending on the technical field concerned, the degree of urgency and the competitive environment.  A search of existing patents will also ensure that you are not infringing someone else’s patent.

If your invention or a technical equivalent has already been disclosed before you apply for your patent, your application will not be successful.

For example, suppose an engineer has devised a clean fuel. He publishes its composition in a scientific journal and, on the day after publication, applies for a patent.  But the application has been made too late! His invention is no longer novel and the fact that he himself disclosed it is immaterial.

Consequently, until the patent is filed, your invention must remain an absolute secret. In any commercial negotiations prior to filing your patent application, you must ensure that your partner does not reveal the invention by having them sign a non-disclosure agreement.

A Soleau envelope can be used to prove the date of your current plans and inventions, while maintaining secrecy:

• Before approaching a future financial, industrial or commercial partner, if the idea or plan has not yet been realised, and negotiating non-disclosure agreements containing a reference to your envelope;
• Before filing a patent, if the inventor wants to finalise his plan or design (a new product, an improvement to an existing product, an innovative product);
• During the research and development phase, to protect work and minimise the consequences of any information leaks.

Important: while a Soleau envelope can be used to file a creation and precisely date its contents, it does not constitute a right of industrial property. It gives no direct protection and the Soleau envelope is not a substitute for a patent.

Industrial application

The invention must be capable of industrial application, meaning that it must be capable of being made or used, regardless of the industry concerned.

Inventive step

National patents granted by the Government of the Principality of Monaco do not necessarily require an inventive step. However, if you are planning to extend the patent to other countries, this criterion will form part of the patentability assessment, and it is therefore important to understand exactly what it means.

An invention is considered to involve an “inventive step” if, having regard to the state of the art, it is not obvious to a person skilled in the art.

A “person skilled in the art” is a practitioner with standard qualifications, possessed of common general knowledge in the technical field concerned on the date the patent application is filed.

This is known as the “problem-solution” approach.

Since an invention is considered to be a solution to a technical problem, the “inventive step” involved is assessed on the basis of the problem the invention is intended to resolve, and the manner in which it resolves it.

This criterion is judged according to a set of documents from the same technical field which must not suggest the invention. It is therefore advisable to conduct a prior art search on the invention before filing a patent application, to properly ascertain the state of the art.

Below a certain threshold of originality and simplicity, a technical innovation will not merit being classed as an invention. It is because an invention is ingenious that its disclosure, while helping to advance the cause of science, is considered socially useful. In other words, an invention is deemed to be inventive if it makes a technical contribution.