Patent briefing papers:

The patent application procedure

Abandoning a UK patent

What to do if your patent application is “apparently knocked back”

“Keep off the grass” patent strategies

Patent links:

PCT contracting states

EPC contracting states

Paris Convention Countries

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© Hutchinson IP Ltd, 2012

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A patent is a legally-enforceable right to prevent others from copying a new and non-obvious, technical invention. Patents are normally obtained by making an application to the Intellectual Property Office (IPO) of the country or countries in which protection is sought. Normally, patent applications are searched and examined by the IPO concerned to check whether they meet the relevant criteria (which vary from country to country), and if so, a patent can be granted. Thereafter, the patent must be maintained (normally by paying renewal fees) and enforced (usually via Court action) by the patentee.

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-off between the inventor and the State. The existence of a patent system is supposed to encourage innovation (because inventors can recoup the cost of their R&D effort by charging a premium or by keeping the competition away for fixed period) and in return, the patentee must make all of the details of the invention available to the public. In addition, once the patent has expired, the content thereof becomes available for anybody to use. The inventor benefits by virtue of the monopoly secured on the invention and society benefits by the publication of patented technology and the "free-for-all" that is created upon expiry of the patent.

Not everything can be patented however: there are strict criteria that must be met, namely:

Novelty:

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).

Inventive step:

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-obvious. Accordingly, most patented inventions relate to incremental developments to, or alternative ways of implementing, existing technology.

Capable of industrial application and not falling within an excluded category of invention:

The invention must be workable, at least in principle (which rules-out patents for “perpetual motion” machines) and must not relate to certain types of excluded subject matter, such as certain types of business methods, surgical & diagnostic techniques and computer programs (although many business method- and computer-implemented inventions are patentable) and inventions that contravene accepted principles of morality.

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-by-country basis, or one can make an international or regional patent application.

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-month period after grant, the patent can be opposed on certain specific grounds, which could result in it being revoked centrally.

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:

Filing:

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-up during prosecution. In addition, the filing date triggers the start of a one-year period within which further patent applications can be filed (in the same country or elsewhere) and yet be backdated (to the extent that the latter application contains the same information as the earlier one) to the earlier application’s filing date by a procedure called “claiming priority”.

Search:

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.

Publication:

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-months after the application’s filing or priority date. Early publication can be requested in many countries, as can accelerated processing. Once the application has been published, it becomes available for anyone to inspect. Most applications nowadays are published online and in paper format.

Examination:

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-way, iterative, process between the IPO and the applicant whereby agreement is reached as to what claim scope is allowable. This will usually involve gradually narrowing the scope of protection (from what was often a somewhat speculative opening gambit) to just avoid the prior art. The applicant will usually try to obtain the broadest possible scope of protection for the invention, which sometimes results in disagreement with the IPO. In certain circumstances, “Oral Proceedings”, an “Examiner Interview” or a “Hearing” is required, which are often akin to a “mini-trial”. If agreement can be reached, then the patent may be granted in due course.

Grant:

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.

Enforcement:

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.

Patents and inventions...