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Introduction Example

In 1995, a Spanish research team developed the first fractal antennas for mobile communications. Before publishing their idea, the researchers began to secure their invention by filing a patent application. During the application process, the office first examined the formal requirements (correct documentation, clear patent claims) and then the substantive requirements: novelty, inventive step, and industrial applicability. After several rounds of examination and response, the patent was finally granted in 2003. From that point on, the research team had a patent that was valid for 20 years from the date of application. To exploit the patent, one of the researchers founded a company that initially used its technology in its own antennas and later marketed it through licensing agreements. This enabled the patent to generate considerable income over many years. After the maximum term of protection of 20 years expired, the technology fell into the public domain. Since then, it can be used freely by all manufacturers.

Discovering inventions

The following section presents the chronological history of a patent. Success stories of groundbreaking inventions often tell of concepts that relate to completely new products, such as the steam engine, wireless voice transmission, the microscope, or even everyday items such as the tea bag or the electric razor. In all these cases, the invention is already contained in the product idea itself. This means that the inventive concept is at the beginning of the product development cycle.

In 1995, the team worked on the idea of significantly reducing the size of antennas for mobile phones. Even at this early stage, the inventive concept was the focus: an antenna should be folded so that it fits into a small mobile phone without losing performance.

However, it is important to understand that inventions do not always have to be at the beginning of such a cycle. They can also occur in later phases of product development and relate to specific details that were not yet known at the time of the original product idea.

During further development, it was noticed that the fractal structure not only saves space, but in certain cases can also cover multiple frequencies—a detail that was not included in the original idea.

Another step after the development of the product idea is often the feasibility study. During this phase, it may be necessary to modify the original idea in certain ways to make the product functional or economically viable. Patentable inventions can also arise during this phase, for example when new solutions are developed to ensure feasibility.

Laboratory tests showed that the antenna only works reliably if certain geometric shapes are chosen. From this, the team developed a special fractal structure, which was later recorded in the patent.

During the testing phase of a product, it may become apparent that certain features need to be adjusted to ensure functionality. For example, the service life of a product could be extended by a new technical detail that had not been considered previously. However, tests can also yield unexpected results that lead to a new invention. A well-known example of this is the drug sildenafil, which was originally developed as a heart medication but later came onto the market as Viagra because it showed a different, unforeseen effect in clinical trials.

Stress tests on the fractal antenna showed that it was not only more compact but also more robust against signal interference with certain geometries. This unexpected property of a particular geometry was added to the patent claims.

Inventions can also occur during the manufacturing phase of a product. It is often only during mass production that it becomes apparent that a certain feature cannot be reliably manufactured or that the production process needs to be improved in order to increase efficiency. Such process innovations can also be the subject of a patentable invention.

When antennas began to be produced on a larger scale, the manufacturing process had to be adapted so that the fractal structures could be produced precisely and cost-effectively—here, too, new, protectable ideas emerged.

Further inventions can also arise after a product has been launched. User feedback or market requirements often lead to certain features of the product having to be adapted or improved. These further developments may also be patentable, as they often offer new technical solutions to existing problems.

After market entry, there was demand for antennas that also covered Wi-Fi and Bluetooth. The team then developed new iterations of the fractal antenna, which were again patented.

Inventions can occur at any stage of the product development process—from the initial product idea to the feasibility study and testing phase to manufacturing and even after market launch. It is important for companies to closely monitor these different phases and identify potentially protectable inventions at an early stage in order to take the necessary steps to patent them.

Filing and examination of the patent application

The filing date is a crucial moment in the life of a patent. From this date, the maximum term of the patent of 20 years begins to be calculated. Similarly, any publications that took place before the filing date may contribute to questioning the novelty of the invention.

The application for the fractal antenna was filed with the European Patent Office in 1995. If the applicant had published his results in detail at a conference beforehand, the novelty would have been challenged – the patent might not have been granted.

After the patent application has been filed with the patent office, it is examined. The office decides whether the invention meets the legal requirements for patenting. After a procedure lasting 18 months, the patent application or the submitted content is published. This publication is for the information of the general public and is independent of whether or not a patent is ever granted.

Puente's patent application was also published by the European Patent Office 18 months after the filing date. From that point on, competitors could see what the applicant had been working on and could check whether their own products might be affected.

The time between filing and granting a patent is typically two to three years. Once granted, the patent's protective effects take effect. From this point on, the owner can take action against patent infringements and, for example, assert claims for injunctive relief and damages.

The fractal antenna patent was granted in the late 1990s. From that point on, the patent holder—a newly founded company—was able to take action against imitators and later conclude licensing agreements with major mobile phone manufacturers. Without this grant, it would have been much more difficult to secure the market success of the technology.

Renewal and end of patent protection—annual fees

In order to maintain the patent, so-called annual fees must be paid. These annual fees must be paid to the patent office in order to renew the patent each year. In many countries, especially in Europe, these fees must be paid annually. If the fee is not paid, the patent expires at the end of the respective year; the invention can then be freely used by anyone interested.

The patent holder had to pay annual fees to the European Patent Office for his patents on a regular basis. For a small spin-off company, this meant a considerable financial burden in the early years. However, without these payments, the patent would have lost its effect prematurely – a major risk, as large mobile phone manufacturers had begun to show interest, particularly in the start-up phase.

The amount of the annual fees varies from country to country. The annual fees increase each year of the patent term. This increase is deliberately designed to prompt the patent holder to make a decision: Is the patent for the protected technology still of economic importance, or should it be abandoned? Since older patents often lose their relevance, many patent holders abandon their patents after about ten years to avoid the rising fees.

In the 2000s, the patent holder was repeatedly faced with the decision of whether it was worthwhile to continue paying fees for the ever-increasing number of patents. The company deliberately allowed some less central property rights to expire because the technology had become obsolete. However, it retained the core patents, including the one for the fractal antenna in mobile phones, as these formed the basis of its licensing business.

If the patent holder forgets or fails to pay the annual fees, most countries allow a grace period of six months. Within this grace period, the patent holder can make the payment, but with an additional surcharge. If the fee is paid within this period, the patent is reinstated as if it had never expired.

When a fee for a less important patent was initially overlooked, this option was used. Thanks to the timely additional payment, the patent could be reactivated without having been legally expired in the meantime. This was crucial for negotiations with licensees, as such a loss of property rights cannot be restored after the grace period has expired and would have greatly weakened the negotiating position.

Patent protection expires definitively 20 years after the filing date at the latest. From this point on, the technology is in the public domain and can be used by anyone. This is regardless of whether the owner is still interested in the technology or whether it is still being used commercially.

The first patent for the fractal antenna, which was filed in the mid-1990s, expired definitively in 2015. Since then, other manufacturers have also been free to access the technology described therein. Even though the technology could now be used by the general public, the owner had applied for further advanced technologies and new patents on further developments, so that his licensing model could continue to exist.

Invalidity of patents

The following section discusses another aspect that can cause a patent to lose its effect, namely invalidation. A patent is always subject to the uncertainty that it may not meet all the requirements for patentability. In particular, the novelty of an invention, i.e., the fact that the patented invention had not already been published before its application, cannot be fully verified by the patent office during the application process.

After the patent has been granted A competitor later discovers an old technical publication in which the patented antenna principle had already been described a year before the application date. Although the patent was initially granted, it turns out that the invention was not new at all – thus, the patent is vulnerable. The patent office simply overlooked this publication.

To avoid burdening the general public with patents that should never have been granted in the first place, a third party can apply for the patent to be declared invalid, for example by proving that the invention was already publicly known before the filing date. Depending on the legal system, the procedures for declaring patents invalid are carried out by the patent office or by special courts.

A major mobile phone manufacturer applies to the European Patent Office to have the fractal antenna patent declared invalid. It argues that similar geometric structures for antennas were already shown in an older university lecture. The patent office must now examine whether this publication is sufficient to invalidate the patent.

In principle, anyone can apply for a patent to be invalidated, regardless of whether they wish to use the patented invention. In practice, however, it is mainly companies that are economically hindered by a patent that file such applications. Especially when the patent holder enforces their patent against third parties and patent infringement lawsuits are already pending, one defense strategy is to have the patent invalidated.

When the patent holder sues an antenna manufacturer for using fractal antennas in their smartphones and refusing to purchase a license, the antenna manufacturer responds with a counterstrategy: It files a request for invalidation in an attempt to invalidate the entire patent.

If a patent is declared invalid, this has retroactive effect. This means that the patent is deemed to have never existed from the date it was granted. All associated rights and claims that the patent holder may have asserted are retroactively invalidated. Even if patent infringements have occurred in the past, these are no longer considered as such, as the patent never existed from a legal point of view. The declaration of invalidity thus retroactively revokes the legal status of the patent, and any protective effect originally granted by the patent is retroactively nullified.

If the patent on the fractal antenna were declared invalid, all previous claims by the owner against all competitors would also be invalid. License agreements that had already been concluded would no longer generate any income. For the owner, this would mean that the decades of protection on which they had relied had never actually existed.