Most people know that that you can protect inventions with a patent, but the details are often shrouded in mystery. This guide introduces patents and takes you through the requirements for obtaining one.
What is a patent?
There are three main types of registered intellectual property: trademarks, registered designs, and patents. These rights protect entirely different aspects of new creations.
Trademarks protect the name of a product or service, registered designs protect the look of a new aesthetics, and patents protect the functionality of an invention.
A patent is not an automatic right. First a patent application must be submitted to the Patent Office where it is examined. The examination process can take several years but, if certain rigorous standards are met, a patent will be granted.
Having a granted patent gives you the right to stop other people from exploiting your patented invention, such as by making it, selling it or using it. This monopoly usually lasts 20 years, provided you pay maintenance fees to the Patent Office.
Patents are territorial such that having a patent in one country means you can only enforce it in that country. For example, you cannot use a UK patent to prevent your competitors from copying your invention in China. However, you can use that patent to prevent the importation of infringing items into the UK. Consequently, you do not need to obtain a patent in every country and can focus your efforts on the commercial markets that are important to your business.
A patent application (“patent pending”) cannot be enforced against competitors but can still be a very useful marketing tool and, if you are looking for financial backing, shows investors that you are serious about your invention.
That said, when a patent is granted you can sue infringing competitors for damages or an account of profits for damages or an account of profits back to the earlier of i) the date of publication of the patent; or ii) the date on which the infringing competitor was informed of your patent application.
What are the requirements for a patent?
Patents can be a very powerful form of IP and there are therefore numerous legal hoops through which you must jump to obtain one. Patentability requirements vary from country to country but, in general, a patent will only be granted for an invention which is new, inventive, and not otherwise excluded from patent protection.
An invention is new, or ‘novel’, if it has not been non-confidentially disclosed anywhere in the world before the patent application is submitted. For example, selling products embodying the invention, disclosing the invention on the Internet, or even using the invention in a public place can be seen as novelty-destroying disclosures. Everything that has ever been non-confidentially disclosed is referred to in the patent world as ‘prior art’.
In general information disclosed by the inventor counts against a patent application submitted afterwards, although some countries provide a short period of grace against such “self-disclosure”. The most important of these if the in the US, where there is a 12-month grace period. Nevertheless, an invention should only be discussed in confidence before submitting a patent application. All patent attorneys at London IP have an automatic professional duty of confidentiality.
An invention is inventive if it is not obvious when compared to the prior art. It can help to think of an invention like a jigsaw puzzle; the completed puzzle may be new, but if all the individual pieces are well known it might not be inventive. However, if an invention adds just one completely new piece to the puzzle, or it was not obvious how to fit all the pieces together, then there is a good chance that it might be inventive.
Finally, some things are excluded from patent protection such as works of art and scientific discoveries. Of course, a scientific discovery can form the basis for a patentable invention, but the discovery itself cannot be patented. In UK and European patent law there is a list of things that are not considered to be inventions. One of the items on the list of is computer software.
However, this list of excluded subject-matter can be misleading as it is often overlooked that it is tempered by the caveat ‘as such’. Thus many people wrongly believe that computer software is not patentable, when in fact it is often patentable.
In the UK/EU a computer program can be patented provided that it solves a problem which is considered “technical”, such as making the computer work faster or saving on printer ink. If the computer program is merely being used to automate a known non-technical process, then it is unlikely to be patentable in Europe but may still be patentable in the US.
For a more detailed guide to the patentability of software please see:
https://www.londonip.co.uk/can-you-patent-software/
London IP attorneys will be able to help you understand whether your invention meets these patentability requirements and can arrange for an initial prior art search to identify potentially new and inventive features of your invention.
