5 most frequently asked questions about patents

We answer five key patent questions.

Patent protection can be a valuable business asset which companies developing new products and processes should consider obtaining. Here we answer 5 of the most frequently asked questions about patents.

1. Can I obtain a patent for my invention?

In general, inventions are patentable if they are “novel” and have an “inventive step”.

An invention is novel if exactly the same idea has not been publicly disclosed prior to the filing date of the application. A public disclosure can take many forms: examples include previously filed patents and patent applications, websites explaining the invention, sales of the invention, and a public use of the invention. In the UK and Europe (and many other territories around the world) public disclosures carried out by the inventor and/or applicant prior to filing a patent application will destroy the novelty of the invention. As such, it is incredibly important to keep an invention confidential prior to filing a patent application.

An invention has an inventive step if it has one or more new features which provide a technical advantage over known products, systems or methods, and it would not be obvious to incorporate these features into known products, systems or methods.

There are some exclusions to patentability which apply in the UK and Europe (and many other territories around the world). Typically, the most relevant exclusions are that the following are not inventions:

  • a scheme, rule or method of doing business;
  • a program for a computer; and
  • the presentation of information.

However, the above are not patentable only to the extent that a patent or patent application relates to that thing as such. This means that inventions in these areas may still be patentable, depending on exactly what the invention relates to.

In the UK and Europe, it is not possible to obtain a patent for methods of treatment of the human or animal body by surgery or therapy;  however, this does not prevent obtaining a patent for medical apparatus or for new pharmaceuticals for use in the treatment of humans and animals.

2. If I obtain a patent for my invention, does this mean I am free to use the invention commercially?

In short, no.

A patent does not allow you use an invention commercially. Rather, it allows you to prevent others from using the invention commercially.

Whether you have the freedom to use your invention commercially depends on whether there are any valid patents covering your product, system or method in the territories you wish to operate in.

Whether an invention is patentable and whether you have the freedom to use the invention are two entirely separate issues. It is entirely possible for your invention to be patentable but for you not to have freedom to use it due to an existing patent. Conversely, it is possible that your invention is not patentable but you do have freedom to use it.

3. From when will I have patent protection?

Once a patent application has been filed, a patent must be granted before it can be enforced against another person. It can take several years before a patent is granted, since the patent office will carry out a search and rounds of examination to determine whether the invention is novel and has an inventive step. It may be possible to accelerate this process, and in the UK it may be possible to obtain a patent in less than 2 years.

You will have some provisional protection for your invention once the patent application is published, which typically occurs 18 months after filing an application. If and when a patent is granted it may be possible to obtain damages or an account of profits for infringements which occurred after publication but before grant.

In the UK, so long as a third party starts using the invention after you filed the patent application, you can still enforce a resulting patent against them even if they started using the invention prior to the patent being granted (or the patent application being published).

Resource: Click here to download our patents leaflet to learn more about the process of obtaining a patent.

4. Do I need to wait until a patent is granted before I start using my invention commercially?

No, you don’t need to wait for a patent to be granted before starting to commercially use your invention. It is important to not commercially use your invention prior to filing a patent application, since this could impact the novelty of your invention and prevent you obtaining a valid patent. However, once your patent application is filed you are free to commercially use your invention without impacting your chances of obtaining a patent, so long as the patent application contains all the details of your invention.

5. Can I obtain patent protection worldwide?

Patent protection is territorial – i.e., a UK patent application will result in a UK patent, which you can only use to prevent a third party from operating your invention commercially in UK.

To get patent protection in other territories, you will need to file patent applications in each territory of interest.

There exists a system of “priority” which allows you to file a patent application in a first territory (e.g. the UK or Europe) and then file corresponding patent applications in other territories within 12 months. The corresponding applications can claim priority back to the original application, and in so doing will be treated as having been filed on the same date as the original application for the purposes of determining if the invention is patentable. This allows you to delay the costs of filing multiple patent applications, without the later filed applications lacking novelty over the original application.

It is possible to file an international patent application (commonly called a PCT patent application). Filing an international patent application is equivalent to filing national patent applications in 153 territories (including most major territories, such as the USA, Europe, China, South Korea and Japan, although notably not Taiwan). However, an international patent application will not result in an international patent. Instead, an international patent must be eventually split up into the territories in which patent protection is of interest, and will become national/regional patent applications in those territories. As such, filing an international application is a great way to keep your options open in relation to in which territories to obtain patent protection, whilst establishing if your invention is commercially viable.

At Wilson Gunn, we are experts in patent protection. If you would like help obtaining a patent for your invention, please get in touch to speak to one of our attorneys.

For further information about the process of obtaining a patent, click here to download our patents leaflet.

Wilson Gunn