Patents Making the intangible, tangible

This information has been adapted from CIPA

Patents protect inventions

They give the owner of the patent the right to stop anyone from making or using the invention without the owners permission.  A patent is a monopoly right to stop competition for the invention for a limited period of time in the territory that it has been granted.

The patent bargain

For an applicant, the essence of the bargain is the payment of certain fees and the giving of a full technical disclosure of the invention. This disclosure is published - usually within 18 months after the application is filed. For society the value of the patent bargain is, therefore, that it encourages the investment and the application of the skills necessary to generate and disseminate new technologies, processes and products. A patent is a negative right to stop others from using an invention rather than the positive right to perform the invention. The reason is that, as some inventions are modifications or improvements over earlier inventions, which are themselves patented, they can thus be used or exploited only with the permission of the owner of the earlier ‘master’ patent. 

Deciding to file a patent application

  • First, is the invention new? Absolutely no public disclosure before filing.
  • Second, does the invention contain an inventive step?  It is not obvious by following simple logical innovative steps to a skilled person having regard to the state of the art.  To be patentable, an invention must be non-obvious to someone who is skilled in the particular technology of the invention in the light of everything that was publicly known before the date on which the patent application was filed. 
  • Third, is the invention patentable?  Things that are not inventions are either abstract, e.g. discoveries, scientific theories, etc. or non-technical, e.g. aesthetic creations or presentations of information.
  • Fourth, is the invention commercially viable?  If the utility and benefits of the invention are not in demand by the market (people are not prepared to pay for it) then it’s not really commercially viable.
  • Fifth, would a patent be more valuable to you than maintaining secrecy? Patents can be reverese engineered as they’re published.  Trade secrets are not published but they can be disclosed and leaked.  

The first steps to patent protection

Getting a patent is one thing; getting a patent that properly protects your invention and gives you the best chance of making money out of it is something else.

It is important it is to get the wording of your patent specification right first time. In particular, the wording of your patent claims can make the difference between obtaining a financial return on your invention, or making nothing at all.  It is not possible to add details of further improvements to your application once you have filed it. However, a second application may be filed claiming the date of filing of the first and including its subject-matter together with details of the improvements. The second application will then replace the original application.

The patenting process

Having decided to file a patent application what process does it go through and what, in broad terms, does the applicant have to do?
Anyone who lives or has a place of business in the United Kingdom may file a patent application themselves. However, you are strongly advised to obtain the services of a qualified Patent Attorney since the patent procedure is not simple and mistakes can result in you not getting the best protection for your invention. It is the sad experience of many applicants who do not employ Patent Attorneys that their granted rights are not adequate for their needs or that it is too easy for a competitor to design around them.

The first step in the procedure is the filing of:

  • a request for grant of a patent (this is a standard pre-printed form which must be completed by the applicant or the Attorney);
  • a description of the invention (this is called the specification and must be a technical description which is clear and complete enough for the invention to be reproducible by a person skilled in the technology of the invention); and
  • any drawings referred to in the description.

Once the application has been filed, the Patent Office will carry out a formalities examination to see whether or not the formal requirements have been met. The Patent Office will give the application a date and number and issue a “filing receipt”. When your application has been filed, you have a “breathing space” of up to one year before you have to take any more active steps in the patenting process. These steps are the filing of:

  1. one or more claims (these define, in words, the matter for which protection is sought and thus will define the area of effectiveness of the patent once it has been granted);
  2. an abstract (this is a concise summary of the invention, preferably not more than 150 words); and
  3. the search fee.

You will also have to decide whether or not to seek patent protection in countries outside the UK. On completion of steps 1 to 3, the Patent Office Examiner will proceed to produce the search report which results from a documentary search through the Office’s extensive database to see what has been published which relates to the invention. This search report is sent to the applicant or the Attorney together with copies of any documents cited in the report. This report provides the chance to assess the patentability of the invention and amend the application if necessary.

The Office will publish both the application and the search report. Usually both are published together. In any case, the application is published as soon as possible after the expiry of 18 months from the date of initial filing. This publication enables anyone to see the details of the invention for which a patent is being sought.

If you wish to proceed with the application, you have 6 months from the date of publication of the search report to request the next major stage in the procedure, which is substantive examination. An examination fee must be paid for this. In essence, the examination is to determine whether or not the application meets all the requirements of the law, for example, is it new? Is it inventive? Is there sufficient disclosure? And so on. Quite often, the Examiner is not immediately satisfied, sometimes because the documents are unclear or are inconsistent and sometimes because the claims are not considered to define a patentable invention in the light of what was found in the search. At this stage, you can amend your claims within the disclosure of your application so as to define the invention in terms, which distinguish it in a clear and meaningful way. At the end of this process and once the Examiner is satisfied that your patent may be granted, the patent will be entered on the register and an annual renewal fee will have to be paid to keep the patent in force, starting from the fourth anniversary from the filing date and subject to a maximum term of 20 years.

The effect of the patent

On patent grant you become a patentee. This gives you the right to stop others from using your invention as defined by the claims of your patent. If anyone does use your invention without permission they can be forced to stop by taking action in the Court. Such actions are rare and those that are started are quite often settled by the parties without going very far. The mere presence of a patent is often sufficient to stop copying.

However, it is open to an infringer or anybody to attack the patent at any time after it is granted, saying that the invention is not new or is obvious. They may bring forward stronger or just different arguments from those raised by the Examiner. If these arguments convince the Court, then the patent is invalid and it will be cancelled. This does not happen very often and usually the parties agree to settle.

As we have seen earlier, patents are territorial and thus those countries where you have no patent protection are open for any of your competitors to exploit. Thus, ideally you should seek patent protection in all those countries where you expect to market or manufacture your invention, provided it makes commercial sense to do so. In other words, you should seek to evaluate the cost of obtaining patent protection in a particular market against the anticipated revenue or other benefits that might arise from that market, and make your patenting decision on purely business grounds.

When you seek patent protection for your invention in more than one country, it is important to know that under an international convention you can file a patent application in almost any country of the world and, provided you do it within 12 months of the first filing of your application, it will be treated by those other countries as if you had filed it with them on the same date as your first filing.

If you decide to get patent protection in two or more European countries that are members of the European Patent Convention (EPC), then the best course is usually to file an application at the European Patent Office (EPO) designating those countries rather than seek separate protection from each country.

You may however, decide that the market for your invention goes well beyond Europe. If such is the case, then you should consider filing a Patent Co-operation Treaty (PCT) application. The PCT is an international treaty administered by the World Intellectual Property Organisation (WIPO - a specialised United Nations agency head-quartered in Geneva). The PCT makes it possible to seek patent protection simultaneously in over 100 countries by means of a single application. A major commercial advantage of using the PCT route to patent protection is that it enables you to defer the high cost decisions such as the filing of translations for as long as possible.

Whatever route you decide to follow, your Patent Attorney will be fully aware of all the steps that need to be taken.

How long does it take?

It often takes several years to obtain a granted patent with the average time being about two and a half years in the UK; rather longer at the EPO. It is possible to request the UK Patent Office to expedite the processing of the application so that a granted patent can be secured more quickly. Under this procedure at least one patent has been granted within 10 months of the filing date. Here again your Patent Attorney will advise you as to the best course to take since rapid grant may not always be in your best interests.