Patents

A patent protects innovations in any kind of industry. It is an exclusive right granted for an invention that prevents others from making, using, selling or importing the invention without the permission of the proprietor. In return for this monopoly, the state publicly discloses the invention.

The first step in securing a patent is to file a patent application at a Patent Office. An Examiner checks whether the application meets the required criteria. Think of a driving licence; not only is it necessary to make an application by filing a form, the driver must also pass tests to gain the licence. The patent process follows that same model.

First of all there has to be an invention which is patentable. A patent protects things which are technical and physical rather than abstract. The invention also has to be both new and inventive or ‘non obvious’. The invention is new if it is not known to the public. It is inventive if it is not an obvious development of what is already known.

There is no definition of ‘patentable’, except that the invention has to be made or used in any kind of industry. However, there is a list of things excluded from patent protection. Excluded items include methods of doing business, presentation of information, mathematical methods, computer programs ‘as such’, artistic works and methods of medical treatment and diagnosis. There is a body of case law from the European Patent Office (EPO) and from the English courts which enables patent attorneys at Beck Greener to advise you on whether your invention is patentable.

An invention is new or novel if it is not known to the public. Novelty is assessed based on the ‘prior art’. The prior art includes all publicly accessible knowledge available before the date of filing of the patent application.

An invention is not new if others have made or proposed the same thing. Published documents in any language can destroy novelty, even if no-one has ever read them. This encompasses scientific and patent literature, internet disclosures and newspaper articles. An inventor can also destroy the novelty of his own invention by telling people about it, for example by presenting the idea at a conference, or when trying to market the idea. Use or manufacture of the same thing anywhere in the world also destroys novelty.

Computer programs ‘as such’ are excluded from patentability. However, this does not mean that computer implemented inventions cannot be patented, and many patents protect inventions rendered in software. For further discussion see our patent update here.

Beck Greener has the knowledge and experience to advise if your computer-related invention will be patentable.

In order to be patentable, an invention must be both new and inventive or ‘non-obvious’. Novelty is a question of fact. Whether an invention is obvious is a more subjective test. First it is necessary to establish what is already known. Then it is necessary to ask, is it a trivial or obvious development to get to the invention from what is already known? At Beck Greener we can advise you as to the likelihood that your invention will be considered to be obvious.

Inventors can readily determine if their invention is new. First they need to keep the invention confidential. This means not revealing details of it to outsiders unless there is a non-disclosure agreement. (An example of a non-disclosure agreement can be found here, and other examples are available on the website of the United Kingdom Intellectual Property Office (UKIPO)).

It is then possible to make searches to establish if anything similar has been the subject of a patent application. (Put keywords into Espacenet here.) Making a simple search by Google can also be effective.

A patent application includes:

• A request form identifying the applicant, who will become the owner of the granted patent;
• A form identifying the inventor(s) if they are different from the applicant;
• A patent specification; and
• An abstract.

The patent specification is a document containing a technical description of the invention and claims setting out in language the scope of the legal protection. Many patent specifications are accompanied by drawings.

All the patent attorneys at Beck Greener are skilled at preparing patent specifications. The description describes the invention, by reference to any drawings, in sufficient detail to enable those knowledgeable in the same field to make and use the invention. The patent attorney identifies from the description significant elements of the invention which are essential. These essential features are included in broad language in claims. Granted claims define the legal protection afforded by the patent. To infringe a patent, a product has to have all of the elements in a claim.

A claim in a patent for a three seater car had the following text:

“A seating arrangement for a vehicle, said seating arrangement having at least three seats and comprising two spaced rear passenger seats aligned substantially transversely, and a driver’s seat arranged substantially centrally and in front of said two rear passenger seats, wherein said front driver’s seat extends transversely to overlap part of each said rear passenger seat.”

The claim for the three person seating arrangement describes the features a rival car has to have to infringe the patent. The practical car was actually a prestige sports car which could seat three persons. Clearly, a two seater arrangement would not infringe the claim, and neither would a car with two seats in the front with a jump seat behind for another person. Similarly, a car with just a central driver’s seat, but no rear seats, would not infringe.

Whilst it is possible for an individual to prepare and file a patent application, it is not advisable. Patent attorneys generally train for 5 or more years, and the core skill they learn is how to draft effective patent specifications with useful claims. Those skills are then honed by experience. An individual without this training and experience is unlikely to be able to come up with language providing worthwhile protection.

All the Beck Greener patent attorneys are both Chartered patent attorneys and European patent attorneys. We are, therefore, regulated by both IPReg in the UK and by the European Patent Institute (EPI) in the EU. The EPI code of professional conduct, in particular, forbids a qualified patent attorney from acquiring any financial interest in a patent application. Therefore, we are not able to contemplate providing our services on any basis other than charging an agreed price for our services.

A patent specification describes and claims an invention. One or more individuals have had the original idea and thought it through to a form when it can be illustrated and described. Those individuals are the inventors. All the rights to any patent derive from the inventors, so it is most important not to include the team leader, or a backer, for example, as an inventor just to ‘be nice’ to them.

The applicant will eventually become the owner of the patent, known as the patentee, and must be entitled to own the rights. An individual inventor will be an inventor/owner and will apply personally. Where the inventor comes up with the invention as part of his job, the invention and any patents will probably belong to the employer. It is important to correctly identify the inventor(s) at the outset, and then to work out who is entitled to own the rights. Patent attorneys at Beck Greener can assist.

The duration of a patent is 20 years from the date on which the application is filed, subject to the payment of renewal fees. In the United Kingdom renewal fees are due annually.

At present, worldwide or international patents do not exist. Patents are territorial rights and, for example, a British patent only has effect in the United Kingdom. All developed countries, and many other countries, have a Patent Office to receive and consider applications. In general, an application for a patent must be filed, and the patent granted and enforced in each country in which you wish to seek patent protection, in accordance with the law of that country. Currently more than 185 countries have their own Patent Office.

Making individual patent applications in each country is the traditional way to obtain patent protection, and is still possible. However, there are now systems to assist in getting protection in a number of countries. These include the European Patent system, for protection in up to 38 European countries, and the International (PCT) patent system facilitating applications in up to 148 countries. There are other regional systems enabling the filing and prosecuting of a single application to cover a number of countries, namely (EAPO) for Eurasia, (ARIPO) for generally English speaking African countries, and (OAPI) for generally French speaking African countries.

At Beck Greener we try to work as cost effectively as possible. For individuals and small companies with whom we have not worked before we are happy to offer a face to face free consultation of up to one hour to advise on whether the invention is likely to be patentable, and to discuss novelty and obviousness. Where necessary we can offer to perform searches, or we encourage making of searches by the client (See: Can I establish if an invention is new?)

If the invention is suitable for a patent, that is it appears to be patentable and new, and we advise that it is likely to be non-obvious, we can prepare and file a patent application. It might cost £2000 to £3000 to undertake that work. However, we would give an accurate estimate for the work before proceeding, and there would be no further charges for filing.

Whilst our charges might seem expensive, a well-protected invention would be expected to earn the revenue to pay for its patenting. A patent provides you with a competitive advantage, as third parties wanting to exploit your invention will need to obtain a license from you in order to do so. A patent can also attract investment and funding and provides a better negotiating position with regard to competitors.

Many companies are willing to pay for advertising, for example, but think patenting is not for them. For the cost of one half page advertisement in an English national broadsheet newspaper, we can file and prosecute patent applications covering the whole of the EU, Japan, and the USA. These patents will last for 20 years, while the newspaper advert will be binned the next day!

It is only successful inventions which competitors try to imitate. Where there is success, there should be an income stream which could be used to fund measures to stop competitors infringing. However, in the United Kingdom only about 1% of all granted patents are involved in any sort of contentious proceedings and only about 10% of those proceed all the way to trial. There is also now a reinvigorated Patents County Court which offers a very cost effective, and cost sensitive, means to litigation. It is also possible to obtain insurance to fund proceedings.

As indicated above, it is rare for infringement proceedings to be needed. Xerox never had to sue anyone for infringement of their patents relating to their first photocopiers, but as soon as the patents expired competitive machines quickly appeared, showing that the competitors had refrained from entering the market when the patents were in force.