5 things about patents you may not have known

What do you need to take into account when considering patent protection?

Patent protection is a valuable business asset which companies developing new products and processes should consider obtaining however there can be misconceptions. Here we answer 5 things about patents you may not have known.

1. Not everything is patentable

Unfortunately, not all ideas are patentable. For an idea to be patentable in the UK and Europe it must meet the following criteria:

  1. The invention must be “new” – the identical idea must not have been made available to the public before the filing date, anywhere around the world.
  2. The invention must involve an “inventive step” – the invention must not be an obvious modification of something already in the public domain.
  3. The invention must be “susceptible of industrial application” – the invention must be able to be made or used in some kind of industry.
  4. The invention must not fall into an excluded category – these include any invention relating to a discovery, scientific theory, mathematical method, aesthetic creation, schemes, rules and methods for performing mental acts, playing games or doing business, programs for computers or presentations of information.
  5. The invention must not be contrary to public order or mortality – the invention must not offend acceptable morality, must not induce public disorder, or be directed towards a technology that has its sole use in criminal or other proscribed behaviour.
  6. The invention must not relate to methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body – this does not include products, such as pharmaceuticals, vaccines etc., for use in any of these methods.

For advice on whether your invention is patentable, please get in touch to contact one of our experts.

2. There is no worldwide patent

Patents are a territorial right and so each individual patent only covers an individual sovereign state. No one patent can protect your invention worldwide.

Fortunately, several agreements have been created which makes obtaining patent applications in multiple countries more cost effective and easier.

Two of the most widely known of these agreements are the European Patent Convention (EPC) and Patent Cooperation Treaty (PCT).

The EPC a single application which, when granted, results in a bundle of national patents in each designated contracting state across Europe. All procedures leading up to the grant of a European patent, such as examination, are dealt with centrally. This reduces the burden of having to undergo examination or the same procedures in multiple European countries and thereby reduces costs. The UK is part of the EPC.

Similarly, the PCT (sometimes referred to as an “International application”) provides a single application which eventually results in a bundle of national patent applications across the world. This means that the PCT application must be split into national applications in desired countries and subsequently each country’s patent office will perform its own examination before granting a patent.

A PCT application saves a significant amount in initial filing costs, compared to filing individual patent applications around the world, and puts off national patent application examination costs for a further 18 months, giving the applicant time to commercialize the invention and generate income to pay for those filings.

For more information on the PCT and European patent procedure, please contact one of our experts.

3. Patents don’t last forever

Unfortunately, once granted, your patent does not give you a monopoly right over that invention indefinitely.

Generally, in the UK and Europe, patents only last for up to 20 years from the date of filing the application. However, for the patent application to last the full 20 years, an annual renewal fee must be paid. These renewal fees start from the 4th anniversary of the filing date in the UK and from the 2nd anniversary of the filing date in a European patent.

If a renewal fee is not paid on time or within a grace period of 6 months, then anyone is free to use your invention in the country in which the renewal fees were not paid.

Once your patent has lapsed or expired in the UK, any person may make, sell, use or import your invention in the UK. The same applies to lapsed or expired patents in other countries.

Resource: Download our patents leaflet to learn more about patent protection

4. It’s all in the patent claims

Patent applications typically include a description, claims and drawings.

The description generally provides an overview and background to the invention and describes the desired protection in detail. The description typically includes one or more embodiments of your invention and any advantages it provides, together with an example of at least one way of carrying out the invention.

The drawings may be any graphic form of representation which may help better understand your invention. These may include technical drawings or photographs of your invention, or graphs depicting any improved properties or technical characteristics of your invention.

Finally, the most important aspect of the application is the claims. The claims define the scope of protection. In other words, the claims are used to decide what subject matter your patent protects and thus whether a third party infringes your patent.

There are two types of claims: an “independent claim” and a “dependent claim”. An independent claim must have all the essential features of your invention and does not require the features of any other claims to be infringed. In contrast, a dependent claim makes reference to (“depends on”) another claim and so also includes all the features of that claim in addition to its own limitations.

The claims are scrutinized by patent offices during the patent application and examination procedure and will largely be used to decide whether your invention meets the criteria set out under point 1 above.

It is important that the claims are drafted appropriately so that they cover your invention and any simple alternatives which a third party could use to navigate around your core idea.  However, a careful balance must be struck between a claim which is too broad and does not meet the requirements under point 1, and a claim which is too narrow and does not sufficiently protect your invention and commercial goals.

Therefore, it is strongly recommended that you seek the advice of a patent attorney to draft an application for you.

5. Granted patents take time

In most countries worldwide, patents are not granted and enforceable instantly. Each patent application must undergo a process of strict examination by a local patent examiner who assesses whether your invention meets the criteria for patentability noted under point 1 above.

The examination process typically involves an examiner citing several published documents (usually patents and patent applications) which disclose inventions similar to your invention. There are then often several round of correspondence with the examiner, during which arguments for and against the claims meeting the criteria of point 1 are submitted, and very often amendments are made to the claims to restrict or clarify their scope, so that they meet the criteria.

Occasionally, a patent can be granted in as little as 9 months. However, more typically, it often takes as long as 3 to 5 years for a patent to be granted.

There are several ways to increase the speed of grant and to accelerate examination. Unfortunately, it is not possible for a patent attorney to estimate how long the procedure will last. Ultimately, the allowance of a patent is up to the patent office. In some cases, a patent application may go through the procedure fast and with relative ease, whilst other applications may struggle and incur greater costs before grant. The timeline is often not related to the quality of the invention. For example, a weaker patent with a narrower claim scope may be granted more quickly than a stronger patent with a broader claim scope.

Unfortunately, in some cases, the application will not result in a granted patent. In these cases, it may not be possible to convince the examiner that the application meets the requirements set out under point 1 and the application will be rejected. However, even in the case of rejection, there still may be benefits to filing a patent application, such as deterring competitors from developing similar technologies for the period of time during which the application is pending, or in increasing the commercial appeal of your business.

For advice on the likelihood that your idea may result in a granted patent or for advice on the examination procedure, please contact one of our experts.

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

Wilson Gunn