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Patent

Patent  protects new inventions and covers how things work, what they do, how they do it, what they are made of and how they are made. It gives the owner the right to prevent others from making, using, importing or selling the invention without permission.

For a invention to be protected by patent  it must fulfill the following criteria:

  • be new
  • have an inventive step that is not obvious to someone with knowledge and experience in the subject
  • be capable of being made or used in some kind of industry

If your invention meets these requirements, you may want to consider applying for a patent:

Patent

A patent is normally granted for physical products or processes, widgets or gadgets.  It is a national territorial right granted to the owner to exclude others from making or using the invention.  It is essentially an agreement between the inventor and the State, whereby in return for publication, the inventor receives a time-limited legal monopoly.

Often, in the development of an invention or creative idea important information will have to be shared with other people, businesses and organisations to facilitate prototypes, research and eventually the manufacture and marketing of a product.  As mentioned, novelty is an important requisite for the success of a patent application, and premature disclosure is commonly the reason for losing the right to protection.  Disclosure includes any kind of written publication, conference presentation or poster, displaying the invention in a public area or discussing the invention with third parties.  However, confidentiality can be maintained if the parties first enter into a legal confidentiality agreement (CDA) or non-disclosure agreement (NDA).

Rights associated with patents

Once a patent has been granted, certain rights are afforded to the owner and these include the right to prevent others from using, making, importing and stocking a patented invention.

Ownership and inventorship

If you have been involved in making or devising a new invention it is a legal requirement that you are named as the inventor on the patent application.  Often, multiple inventors will have substantially contributed to the invention and will consequently be named on the patent application (this is not necessarily the people who appear as authors on research papers).

In the UK, if an invention is made by an employee during their normal employment duties and whilst employed, the law dictates that the employer is the owner of that invention and any patent resulting from it.  In the public sector, and specifically the NHS, it is common for the employer to have a revenue sharing scheme to reward inventors for their efforts and encourage others.

Information required for patent application

For a patent to be granted and enter the examination process, detailed and comprehensive information regarding the invention is required, such as:

  • Background information, outlining the subject field of the invention
  • A statement of invention, which addresses the technical problems which have been overcome and solved
  • A detailed description, which describes how it is made, how it works  and how effective it is.  The detailed description should enable someone skilled in the same subject area to reproduce the invention
  • Examples, including drawings and diagrams
  • Claims, considered the crux of an application.  They claim the invention as a whole, along with the novel technical embodiments.

It is worth noting that UK patent law operates a 'first to invent' system which is different to the US and EU system, aptly named 'first to file'.  It is therefore important to detail the date the invention was conceived and the date the invention was put into practice, as this information would be needed for UK applications.

Patents requirements

For a patent to be granted, it has to be:

  • Novel:  means the invention must not have been publicly disclosed, in any way, before a patent application has been filed
  • Inventive:  means that the invention must not be an obvious development from anything already known
  • Capable of Industrial Application:  includes any kind of industry
  • Not Excluded:  excluded inventions include scientific theories, mathematical methods, discoveries, a scheme or business method and the presentation of information, methods of treating the human or animal body and diagnostic methods.

Patent examiners, or courts, when deciding the scope of protection afforded to a patent use and evaluate all information.  It is therefore important to ensure that patent applications are as detailed as possible.

The UK patent application process

Once an initial patent application has been filed, the Patent Office will issue the applicant with a priority date of application.  The priority date is important as it indicates when the invention came into registered existence.  From this date, the applicant has 12 months to develop the included ideas and reduce the invention to practice.  At the end of this period, it must be decided if the application is to be filed in other countries.

International applications

As patents are national territorial rights, there is no such thing as an international or worldwide patent application.  There are however mechanisms in the form of international treaties which allow multiple country designations to be filed on a patent application.  If the applicant wishes to file in a number of countries, an application can be filed under the International Patent Co-operation Treaty (PCT), claiming the priority date from an original application - if filed within 12 months from that original application.  At 18 months the application is published with an international search report.  At 30 months (31 months in some countries) from the priority date, the application will start to be reviewed and examined by the individual countries selected (termed the 'National Phase').  For this stage in the proceedings translations of the application have to be provided and extra fees need to be paid.

Time, costs and duration

The time involved from filing of the priority patent application to the time it is eventually granted can take between 2 and 6 years (8 years in Japan).  The costs involved in the patent application process can be considerable.  Drafting patent applications needs the enrolment of a skilled patent attorney, which will cost in the region of £2-£5,000 for initial UK filing.  There are also costs for each country designated on the application.  Therefore, the combined costs for attaining granted patents in Asia, Europe and the UK could cost in the region of £100,000.  If renewal fees are paid to keep the patent in force, the maximum patent life will be 20 years from the original priority date.

Patent governance

In the UK patents are governed by the Patents Act 1977, which is amended from time to time in order to achieve conformity with international treaties and conventions, along with EU legislation.

Factors to consider

  • Patents provide incentives and encourage innovation by offering an exclusive legal monopoly and recognition for creativity
  • The requirement of novelty is in most circumstances absolute.  It is therefore important to only disclose information regarding the invention under the strictest of confidence
  • A patent is not an automatic right to use or exploit an invention.  Sometimes inventions have new modifications or improvements over existing produces or processes, which themselves may be protected by a patent.  In cases like this, licences will normally have to be negotiated between exploitation.
  • There is no such thing as a world-wide or international patent; however mechanisms do exist allowing an application to cover multiple designated countries (PCT).
  • Patents are a territorial right granted nationally, the single European Community market does not override this.
  • Once a patent expires, the technical information regarding the invention falls into the public domain and is free to be utilised by anyone.

Further information

For further information regarding patents and the patent application process, please see:

For information concerning existing patents, there are publicly available databases containing all published patent applications please see:  www.gb.espacenet.com

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