Our patent infringement solicitors can advise clients on a range of patent and intellectual property matters including patent infringements and disputes.
Patents and protecting innovative technology
What is a patent?
A patent is the exclusive right to exploit or commercialise an invention for a set period of time within a particular country, granted by the state to an inventor, in return for the publication of a detailed explanation of how to make the invention work. During that period of time, the owner of the patent (or patentee) has a monopoly over the use of the invention and the making of products which include the inventive technology.
Patents are initially granted for 5 years (from the date when the application is filed) and can then be renewed annually for up to a total of 20 years.
Patent owners may grant a licence or permission to a third party to use the patented technology in return for a licence fee or royalty and the other conditions set out in the licence document. Equally, a patent owner may decide to transfer or assign all of its rights under the patent to a third party.
What can be patented?
In order to be patented, an innovative technology must:
- Be new or novel – that is to say it must not be part of what is called the ‘state of the art’ or the totality of publically available knowledge, anywhere in the world, in the relevant field of technology;
- Include an inventive step – this means that the invention must not be obvious to an unimaginative person who is skilled in the relevant field of technology;
- Be capable of industrial application – it must be possible to use the inventive technology or make the invention in any kind of industry; and
- Not fall within any of the exclusions.
What cannot be patented?
Patents cannot be obtained in respect of:
- Natural phenomena which includes discoveries, scientific theories or mathematical methods;
- Aesthetic creations such as literary, dramatic, musical or artistic works (because these are protected by a different intellectual property right, that is to say, copyright); or
- Mental acts such as schemes, rules or methods for performing a mental act, playing a game or doing business.
Can I tell others about my invention?
You must keep your invention secret or confidential before any patent application is filed.
If enough information is disclosed in public so that someone else could make the inventive technology work, your invention will no longer meet the requirement of novelty because it will have become part of the ‘state of the art’.
If you need to involve others, for example, employees or third parties in the commercialisation of your invention before a patent application is filed, it is vitally important to do so only under an obligation of confidentiality and which restricts the other person from using your invention beyond the agreed purposes. It is advisable to enter in a Non-Disclosure Agreement (or NDA) with any third party before you disclose any information about your invention to them.
Once the patent application has been filed, it is no longer vital to maintain the confidentiality but it may still be advisable to limit the number of individuals who know how to work your invention especially before the patent application is published.
How do I obtain a patent?
You have to make a detailed application to the relevant patent or intellectual property office, depending upon where you wish to obtain monopoly rights in your invention. In the UK this will be the UK Intellectual Property Office.
Patents generally work on a territorial basis, country by country, but there are procedures to make single or simplified applications for a bundle of national patents. For example, an application can be made to the European Patent Office for a bundle of national patents in some or all of 38 member states. An application may also be made under the Patent Co-operation Treaty (or PCT) to one or more of the 148 member states worldwide (including the UK) which will result in a bundle of national patents. There will also shortly be a process to apply for a unified (or single) European Patent which will be valid in 25 EU member states under a system known as the Unified Patent Court (or UPC).
In each case, a patent application will include both:
- a description of the invention, in sufficient detail that someone skilled in the relevant field or art will be able to understand how to work the invention; and
- details of the claimed scope of the invention
The relevant patent office will usually undertake a thorough examination of the application to ensure that it meets all of the requirements. This usually includes a search of all publically available information in the relevant technology to check that the invention is sufficiently novel and inventive. The details of the application are usually ready to be published by the patent office after about 18 months, although it may take several years before the patent is finally granted.
Although an inventor may file a patent application without professional assistance, most applicants instruct a patent attorney who will be able to advise upon the patentability of your invention as well as in relation to the drafting of the application and its progress through the system (known as ‘prosecuting’ a patent application). We have very strong relationships with a number of national firms of patent attorneys and would be delighted to introduce you to one of our contacts.
We have been helping clients across a number of different sectors, from advanced engineering and manufacturing businesses to music and software publishers, to protect their patented inventions. In particular we have:
- Advised a university technology spin out business in disputed collaboration relating to patented technology.
- Successfully defended court proceedings in respect of patented technology used in double glazing in the Patents County Court (now the Intellectual Property Enterprise Court).
- Drafting patent licence and assignment documentation for various clients.
- Advising on alleged patent infringement relating to audio-watermarking of sound recordings.
- Advising an inventor in relation to a contractual dispute under a patent licence relating to the inventor’s entitlement to licence fees.
- Advised in entitlement dispute over the ownership of a biotech patent;
- Advising on a patent dispute relating to a household product.