Patent briefing papers:
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© Hutchinson IP Ltd, 2012
A patent is a legally-
Patents do not provide a positive legal right to do something, but rather a legal basis to sue if a third party commits an infringing act. Therefore, even though you may have a patent, your making, selling, importing, using etc. products or processes falling within the scope of that patent may nevertheless infringe the rights of an earlier patentee. Conversely, if a competitor were to commit an infringing act, it would be the responsibility of the patentee to detect this and to take appropriate legal action to prevent it.
There are many “justifications” for the patent system, chief amongst which being
the concept of a trade-
Not everything can be patented however: there are strict criteria that must be met, namely:
The invention must be completely new. In the UK and Europe, this means that the invention has not been made available to the public anywhere in the world, in any way whatsoever, prior to the filing date of the patent application. (Different criteria apply elsewhere, however, most notably in the US, Australia and South Africa).
The invention cannot be obvious to a person skilled in the art. The invention does
not need to be better, or an improvement over what has gone before, merely non-
Capable of industrial application and not falling within an excluded category of invention:
The invention must be workable, at least in principle (which rules-
A patent is obtained by applying to the Intellectual Property Office (IPO) of the
country in which protection is sought. This can be done on a country-
At the present time, there is no such thing as an “international patent”, although one can make an international application under the Patent Cooperation Treaty (PCT), which is equivalent to having made a national patent application in each of the PCT contracting states. Nevertheless, the PCT application still needs to be converted into a national application in each country where protection is sought, albeit at a much later stage (usually by which time the commercial prospects of the invention concerned are better understood).
One could also opt to apply for a European patent under the European Patent Convention
(EPC). This route is different to the PCT inasmuch as it can result in a centrally
granted European patent. However, the European patent, once granted, still needs
to be validated in each member state where protection is sought to give it the same
legal effect as a national patent obtained via the national IPO concerned. European
patents can also be opposed centrally, so for a 9-
It is possible to use a combination of “routes”, for example, a UK patent application providing the basis for a priority claim of a PCT application, which later matures into a European patent, which is then validated in the UK and elsewhere. Choosing the appropriate strategy and route is a matter of judgment and balancing various factors such as overall cost, the time it takes to get a granted patent, the amount of flexibility you need to assess the invention and/or market conditions, and the possibility of deferring costs. These are all matters that we can advise you on.
Specific details regarding the application, prosecution and grant process vary enormously from country to country. However, most patent systems involve a number of distinct stages, namely:
This is where the invention is described in a written document that is filed at a
particular patent office. The filing date is crucial as it often forms a reference
date for the various deadlines that crop-
Most applications undergo an initial search to check that they comply with various formal requirements. In addition, most IPOs carry out a search to check whether the subject matter of the claims of the application is new and/or inventive. The issuance of the IPO’s Search Report is usually the first stage whereby the applicant can properly assess the application’s prospects of success and the likely scope of protection that might be available.
It is often possible to make voluntary amendments to the application once the Search
Report has been issued. Whether or not any amendments are filed, the application
is usually published by the IPO around 18-
Most applications undergo substantive examination whereby the IPO raises objections
regarding the patentability of the invention disclosed in the application. The Examination
procedure is usually, but not always, a two-
Patent applications and granted patents are subject to renewal fee payments which must be paid a specific intervals to keep the application/patent in force. Patents usually last for a maximum of 20 years from the filing date, whereafter they expire and the subject matter thereof becomes available for anybody to use.
It is the responsibility of the patentee to detect any potentially infringing activity and to take appropriate action to stop it. We can provide opinions in relation to patent infringement and validity, and advise on possible offensive and defensive enforcement strategies.
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