Mailbox patent applications
August 29, 2022

A major element of reform and cooperation in the field of intellectual property came in the form of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, which was implemented by the World Trade Organization (WTO) in January of 1995.

The TRIPS Agreement is applicable to all jurisdictions which are a party to the WTO, and among a variety of IP related provisions, the Agreement obligates all WTO member states to provide the possibility of patent protection in relation to pharmaceutical and agricultural chemical inventions.

At the time the TRIPS Agreement was enforced, however, the national legislation of some developing countries of the WTO did not allow for the filing of patent applications in relation to agrochemical or pharmaceutical inventions. As a result, the WTO afforded these countries a transitional period of up to 10 years to implement compatible national legislation that would provide for such patent protection, concluding on January 1, 2005. It was from this allowance that the concept of a “mailbox patent” was born.

The WTO obliged the countries which were allowed to delay implementing domestic law in line with the TRIPS Agreement to still accept patent applications from January 1, 1995, despite the fact that a decision on whether to grant patent protection did not need to be made until the end of the 10 year period. This afforded patent applicants the opportunity to still meet the patentability requirement of novelty by securing a filing date in such countries.

This obligation was extended for the Least Developed Countries (LDC's) following requests from several jurisdictions, and the time period for implementation of provisions to allow for the granting of such patents has subsequently been extended until July 1, 2034.

The term "mailbox" patent was coined in light of this obligation, as any patent applications pertaining to agrochemical or pharmaceutical inventions were stored in a metaphorical mailbox once filed until relevant national legislation was implemented and the applications could be assessed.

A second obligation was also required of the member states which opted to utilize the transitionary period, in that if a pharmaceutical or agrochemical product was allowed to be marketed during said period, the country had to provide the applicant with exclusive marketing rights for the product for either five years, or until a decision on the grant of the patent was made, whichever was shorter.

Brazil is one example of a country in which mailbox patents were introduced, with TRIPS Agreement compatible national law eventually being implemented on May 14, 1997. Other countries including Argentina, Cuba, Egypt, India, Kuwait, Morocco, Pakistan, Paraguay, Tunisia, Turkey, United Arab Emirates and Uruguay also notified the WTO that they intended to make use of the transition period for mailbox patents.

What’s priority right?

What’s priority right?

Priority right, which is activated by the first filing, shows that you’ve been the first to apply for an invention, industrial design or trademark. To make use of it, you need to claim your priority right when filing abroad.

What’s the time limit for claiming priority?

Applicants have “twelve months for patents and utility models, and six months for industrial designs and trademarks” (Paris Convention, Art.4) from the filing date of the initial application to take further actions.

Why shall I claim priority?

The Patent Office will decide on the novelty of your invention (check out our post on novelty) based on the priority date. If you filed without priority, all the information that became known in the world (including your first application, if published) would be a part of the state of the art, and your invention would no longer be considered new or novel.

All in all, priority claim preserves the rights of the applicants who want to obtain protection for their intellectual property in more than one country.

What’s industrial applicability?

Today, we again discuss the three “pillars” of patent law and explore industrial application or applicability, which is one of the patentability requirements. The invention is considered to be industrially applicable if subject matter experts can reproduce and make use of it based on their general knowledge.

The definition is more or less the same in many European countries: the possibility to be “made or used in any kind of industry, including agriculture” (Art. 57, the EPC).

Until recently, interpretation of the industrial application was limited to what is stated above, but in 2005 the Boards of Appeal of the EPO ruled that the requirement of industrial application is only fulfilled if there is commercial benefit from the practical application of the invention.

Fun fact: this requirement excludes a range of absurd inventions from being considered as patentable. For example, if an invention contradicts the laws of physics, it cannot be industrially applicable and is, therefore, not patentable.

Foreign filing restrictions

The first step on the way to securing your rights is filing of an application. However, there is one issue to consider before launching the process – can you make your first filing abroad?

In many countries, there is a foreign filing license requirement obliging inventors to file first in the country where they created an invention OR obliging nationals of the country to file in their home country before seeking protection abroad.

For example, India and Kenya apply this requirement to their nationals or residents only, while Russia, China, and the USA require first filing of applications for the inventions made in the country regardless of the inventor’s nationality.

If you are not sure where to file first, seek legal advice or feel free to contact us for support.

Inventive step. How does it work?

The last (but by no means the least) patentability requirement – an inventive step, which may be the most difficult requirement to define precisely.

Inventive step is a universal demand by the Patent Offices helping them to make sure that an invention, even if it could have been based on a bad idea, is not obvious to try. This non-obviousness defines patentability of inventions in the first place, since no other form of IP protection (even utility models) should meet this requirement in most of the jurisdictions.

The EPO puts it like this: “An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.” (EPC, Art.56)
A “person skilled in the art” is an expert in a particular field with knowledge of “what was common general knowledge in the art (meaning industry)” at the date of filing an application.

So, to recap, an invention is not merely a new combination of known features, but their innovative mix which was not envisioned before even by the professionals and which requires that extra step of creativity. 

Patent and Trademark Search Who needs it?

When searching for information about IPR protection, you may come across such terms as patent and trademark search. Is it obligatory, who conducts these searches and how to know if you need one?

Patentability search is also known as prior art, patent or novelty search. It is conducted to find out if the same invention has already been disclosed by someone else, or if similar invention exists. Patentability search is not obligatory and is conducted when drafting your patent application. Besides, this type of search can be performed by the patent office when examining your application.

As for the trademark search, it helps to determine whether the same trademark has already been registered. In most of the countries, you are not obliged to conduct trademark search prior to filing; but you should know that it is a part of the examination process in many countries.

How to know if you need one? Results of the patent search can help you to decide whether the invention is worth patenting, evaluate the chances of getting a patent, prepare to possible Office Actions.

With trademarks the benefits are also considerable: you can avoid accidental infringements, consider your future actions before filing an application and discover potential competitors who can file oppositions.

For conducting a search, it is better to reach a professional trademark or patent attorney.