CHAPTER 13 INTELLECTUAL PROPERTY IN THE MINING INDUSTRY: TO UNDERSTAND IP IS TO UNDERSTAND PROTECTION
| Jurisdiction | United States |
(Sep 2015)
INTELLECTUAL PROPERTY IN THE MINING INDUSTRY: TO UNDERSTAND IP IS TO UNDERSTAND PROTECTION
Sheridan Ross P.C.
Denver
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DOUGLAS W. SWARTZ: With more than 25 years of experience in patent prosecution, technology licensing, and intellectual property counseling, Doug Swartz represents national and international companies in global intellectual property audits, strategic planning processes, and due diligence investigations, competitive patent landscape analysis, and product and process clearance reviews. His extensive experience allows him to advise clients in the development of a customized global intellectual property protection plan reflecting the unique competitive pressures, business goals, funding constraints, and personnel capabilities of each business enterprise. He has considerable expertise in hardware and software, Internet technology, business methods, telecommunications, wireless communications, optical devices, chemical and metallurgical processes, clean technology, water purification, textiles, aluminum alloys, magnets, and energy storage, automotive, and medical devices. Early in his career, he was a clerk for Justice Erickson of the Colorado Supreme Court and an extern for Judge Dorothy Nelson of the Ninth Circuit. Doug earned his bachelor's degree in mining engineering from the Colorado School of Mines and his law degree from UCLA.
Increasingly challenging ore mineralogy, lower ore grades and metal prices, and more demanding environmental regulations are forcing mining companies to develop innovative metallurgical processes. Even small improvements in efficiency can yield significantly higher returns. These processes can provide a mining company with distinct competitive advantages that can be leveraged in acquiring royalty or working interests in mineral resources.
The competitive advantages of technological innovation can be protected against use by competitors through strategic use of intellectual property rights. Intellectual property rights can not only protect a mining company from being copied by competitors but also are a corporate asset, that can be sold or licensed to competitors or used to secure loans. Many countries provide tax incentives, such as tax concessions for patent related profits, to obtain and exploit patents. Patents are a valuable defensive weapon that can be used to deter competitors from initiating infringement proceedings against the patent owner and enable cross-licensing by the patent owner to gain access to the patents of others.
From patents, trademarks and copyright to trade secrets and a wide variety of licensing agreements, protecting intellectual assets has taken on a heightened sense of importance. Through proactive and thoughtful IP protection, mining companies gain and maintain advantages in mining, extraction, and delivery of valuable materials that can lead directly to improved profitability and long-term success in an increasingly competitive landscape. Intellectual property protection has become a vital element in the mining industry's business equation.
To truly understand Intellectual Property is to truly understand protection. Although intellectual property legal interpretations, rulings, prosecution and litigation can create complex scenarios for innovators across the mining industry, an understanding of the complete portfolio of IP protection, coupled with advice by experienced IP counsel can enable formulation and implementation of effective legal strategies by mining companies.
To help understand some of the intricacies of IP law, the article below introduces the various types of intellectual property rights and lays out industry specific scenarios, trends, successful licensing examples and company case study results to help demonstrate the critical, growing role IP protection plays in today's increasingly competitive mining landscape.
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I. Types of Intellectual Property in the Mining Industry
A. Patents
1. General. A patent is a government authority or license conferring a right or title for a set period, especially the sole right to exclude others from making, using, or selling an invention. To get a patent, an application must be filed with the patent office of the selected country, which determines whether a patent application meets the requirements for issuance.
2. Territoriality. Patents are territorial, meaning that one must apply for patent protection in each country where protection is sought. In other words, U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions.
3. Requirements. The procedure for granting patents, requirements placed on the patentee, and the extent of the exclusive rights vary widely between countries according to national laws and international agreements. Typically, however, a granted patent application must include one or more claims that define the invention. A patent may include many claims, each of which defines a specific property right. These claims must meet relevant patentability requirements, such as novelty, utility or usefulness, and non-obviousness (or have inventive step). The patent applicant and examiner exchange written communications to negotiate a suitable claim scope in light of the prior art. In most countries, a patent is granted for novel, useful, and non-obvious inventions generally for a period of 20 years from the filing date of a patent application.
4. Filing and Prosecution. A patent is requested by filing a written application at the relevant patent office. The person or company filing the application is referred to as "the applicant." The applicant may be the inventor or its assignee. The application contains a description of how to make and use the invention that must provide sufficient detail for a person skilled in the art (i.e., the relevant area of technology) to make and use the invention.
In some countries there are requirements for providing specific information such as the usefulness of the invention, the best mode of performing the invention known to the inventor, or the technical problem or problems solved by the invention. Drawings illustrating the invention may also be provided. The application also includes one or more claims that define what a patent covers or the "scope of protection."
After filing, an application is often referred to as "patent pending." While this term does not confer legal protection, and a patent cannot be enforced until granted, it serves to provide warning to potential infringers that if the patent is issued, they may be liable for damages.
Once filed, a patent application is "prosecuted." A patent examiner reviews the patent application to determine if it meets the patentability requirements of that country. If the application does not comply, objections are communicated to the applicant or its patent agent or attorney through an office action, to which the applicant may respond. The number of office actions and responses that may occur vary from country to country, but eventually the patent office sends a final rejection, or it grants the application. When a patent is granted, the applicant is then required to pay additional fees, which leads to an issued, enforceable patent. In some jurisdictions, there are
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opportunities for third parties to bring an opposition proceeding between grant and issuance, or post-issuance.
5. Grant and Enforcement of National and Regional Patents. The grant and enforcement of patents are governed by national laws, and also by international treaties, where those treaties have been given effect in national laws. Patents are granted not only by national but also by regional patent offices. Examples of regional patent offices include the procedures under the European Patent Convention (EPC) [constituting the European Patent Organization (EPOrg)], African Regional Intellectual Property Organization and its counterpart, the analogous treaties among African countries, and the nine Commonwealth of Independent States members that have formed the Eurasian Patent Organization. These regional treaties centralize some portion of the filing and examination procedure. Lists of the member countries of various regional organizations are attached as Exhibit "A."
6. Paris Convention Treaty. A key international convention relating to patents is the Paris Convention for the Protection of Industrial Property, initially signed in 1883. The Paris Convention sets out a range of basic rules relating to patents, and though the convention does not have direct legal effect in all national jurisdictions, the principles of the convention are incorporated into all notable current patent systems. The most significant aspect of the convention is the provision of the right to claim priority: filing an application in any one member state of the Paris Convention preserves the right for one year to file in any other member state and receive the benefit of the original filing date. A list of the signatories to the Paris Convention is attached as Exhibit "B."
7. Patent Cooperation Treaty. Another key treaty is the Patent Cooperation Treaty (PCT), administered by the World Intellectual Property Organization (WIPO) and covering more than 140 countries. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application. A PCT application does not itself result in the grant of a patent, since there is no such thing as an "international patent," and the grant of a patent is a prerogative of each national or regional authority.
In other words, a PCT application, which establishes a filing date in all contracting states, must be followed by entering into national or regional phases to proceed towards...
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