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Patent law

What is a patent?

A patent is a monopoly right which protects inventions. The key point about a monopoly right is that it protects the invention not merely against people who copy it, but those who independently devise or develop something falling within the scope of the patent’s claims. Patents can cover either processes or products.

Obtaining a patent is the best way of protecting an idea or invention because of the scope of protection it offers. However, it is both the most difficult form of protection to obtain and the one which is most expensive in terms of upfront costs, incurred before the patented product is marketed.

To qualify for patent protection, an invention must be new, useful and ‘not obvious’. It must also be something which is capable of technical application. In most countries the patent is awarded to the person who first files an invention, not the person who first invents it.

How do I patent an idea?

For a UK patent you must submit an application to the Intellectual Property Office (IPO), formerly known as the UK Patent Office. Patent registration can be a complex process and usually takes several years. Key dates in the process are the priority date, the filing date, the publication date and the date of grant.

Patents are usually national in scope and a UK patent will protect your invention only in the UK, but can form the basis for filing parallel patents in overseas jurisdictions. You will usually have up to twelve months from the date of filing the UK application to decide in which other countries you should seek patent protection. This twelve month deadline cannot be extended.

During the process, the patent application will be examined in the relevant patent offices to ensure that the invention meets the relevant criteria for novelty, lack of obviousness and inventive step. This will include comparing it to other patents and applications for similar inventions which were made prior to the priority date.

As a result of this examination, the applicant may have to make amendments to their application, so the scope of the patent which is eventually granted may end up being significantly different from the original application. To navigate your way through the above process, while ensuring that your invention has the best spread of protection possible, it is advisable to consult a patent attorney.  Most patent attorneys have advanced science degrees as well as professional qualifications.

We can advise you in your choice of patent attorney, as well as advising you about your overall intellectual property protection strategy.

Patent law: Filing for international patent rights

Expert advice is particularly important when you want to obtain international protection for your invention, as filing overseas patents can be a lengthy and expensive process. In addition to filing, examination and renewal fees, if you file patents in other countries you will also have to translate the patent into the local language(s).

Because the scope of a patent is defined very strictly by its wording, a mistaken word or even misplaced comma may have serious consequences for its scope and/or validity. This means it is particularly important that a technical translation agency is used, which is familiar with the importance of strict technical accuracy.

There are shortcuts to international protection, such as the Patent Cooperation Treaty (PCT), and filing via the European Patent Office (EPO) to make use of the European Patent Treaty (EPT). This reduces the number of individual filings you have to make and often streamlines the examination process.

There is also a proposal for a European Unitary Patent, which would give unified protection across the whole of the EU, along the same lines as the existing European trade mark and European registered design. Protection in other key overseas markets must be obtained by filing an application in the relevant countries. Some jurisdictions such as the United States take a rather different approach to patentable subject matter to that taken by the UK. Accordingly, it may be possible to obtain a patent in the US in circumstances where that may not be possible in the UK.

When should I apply for a patent?

To ensure that your patent rights are fully protected, you must apply for a patent before your invention or idea is disclosed in public. With this in mind, it is wise to begin the process of applying for a patent as soon as you can. It is also advisable to apply early to protect yourself against other people filing for something similar and blocking your ability to obtain a patent and exploit you invention.

Public disclosure goes beyond simply selling or marketing the patented product or service. It can also include giving a lecture or publishing an article on the principles behind the invention. It is particularly important to warn staff not to accidentally make disclosures of possibly patentable inventions on social media. In addition to this, public disclosure is not defined by the number of people who have had access to the material in question.

As a result, any inventor who is considering filing for patent protection must restrict any discussion of their invention to their professional advisors, and other people bound by enforceable obligations of confidentiality, until after the filing date. This does have the side effect that you may not have the luxury of knowing whether or not an invention is going to be a commercial success before you have to decide to file a patent application for it.

How long does it take to obtain a patent?

It generally takes several years to obtain a granted patent, although there are some fast-track options available.

Delays most commonly occur when:

  • Waiting for the application to be examined by relevant patent offices
  • Dealing with any objections raised on examination, for example by redrafting the patent or submitting representations to the relevant patent office(s)
  • Obtaining translations into relevant languages.

However, once the patent application has been published, its existence acts as a deterrent to anyone thinking of straying onto your patented rights. Using terms such as “patent pending” on packaging helps put people on notice of your rights.

Patent law: How long does a patent last?

The standard period of patent protection is twenty years, but it can be shortened by the patent lapsing  or being revoked. Patent holders can also surrender patents, by declaring they no longer want them to be enforceable.

Supplemental protection certificates are available for pharmaceutical patents, to compensate for the delays caused in getting pharmaceutical products to market because of the need for clinical trials. These extend the ordinary patent term by up to five years.

Another way in which the protection caused by patents may be effectively extended is by filing patents for successive improvements. Provided the improvements are themselves inventive, a new patent can be obtained for the “improved version”.

It is essential that renewal fees are paid on time and all deadlines imposed by relevant patent offices are met. Failure to do so will lead to patents and applications lapsing. Once it has lapsed, it is usually impossible to revive a patent or application, although in very unusual circumstances a patent office may consider such an application.

Patent protection

To protect your patent:

  • Make sure that your patent (and application) is not vulnerable to revocation. This includes filing required documents and paying required fees in plenty of time. Deadlines in patent matters are almost invariably non-negotiable and being late will put your patent at risk.
  • Draw attention to the patent’s existence. You can do this by putting patent numbers on your patented product and its packing, and by requiring any licensees you appoint to do the same.
  • Monitor the market place. It is possible to put in place patent watch services at relatively modest cost in order to see what patents are being filed by your professional rivals and alert you in advance to ones which you may need to challenge.
  • Make sure you thoroughly understand your patent claims – what is protected by your patent and what is not. This will make it easier for you to know if your patent has been infringed.
  • Defend against patent infringement. Keep alert for infringers and take appropriate action against any you discover. Where infringement takes place prior to the date of grant but after the publication date no action can be taken until the patent proceeds through to grant. After the grant date, however, the patent holder can sue for damages for acts of infringement which took place between filing and grant.
  • Ensure your licensees are obliged to keep you informed of any infringing issues they discover and that they are fully compliant with their licence terms. Properly drafted licences should provide for audit rights, and you should be prepared to exercise these if need be.

If you are enforcing a patent, a counter-claim for invalidity is very likely so it is important to be aware of any areas of risk, such as any acts or omissions made pre-filing.

It is important never to ignore a threat to sue for patent infringement, even one you feel is far-fetched, and always take expert advice on it.

Our patent services

Our patent lawyers can:

  • Offer general advice as to patentability and specific issues relevant to your invention.
  • Recommend a patent attorney experienced in the specific technical sector relevant to your invention, and work closely with them and with overseas patent attorneys to see your applications through to grant.
  • Provide a strategic overview on patent protection and specific risks in your particular area.
  • Assist with enforcing patents by means of actions for infringement in the High Court and Intellectual Property Enterprise Court and coordinate multi-national patent enforcement actions.
  • Put your patent portfolio in order by ensuring that assignments and licences are properly recorded on relevant registers and ensuring that patents are assigned out of dormant companies before those companies are dissolved.
  • Set up licensing structures including working with tax experts to ensure that your patent exploitation strategy maximises your opportunity to obtain tax incentives, and that you can manage and incentivise your licensees to maximise sales of the licensed products.
  • Provide specialist corporate support in relation to transactions including mergers and acquisitions, where patent rights can be among the most valuable assets the target company possesses. This includes intellectual property due diligence, as well as drafting relevant intellectual documentation to support a corporate transaction.
  • Assess infringement risks and propose strategies for mitigating those risks, including advising upon patent clearance searches and freedom to operate reports.

Like the vast majority of law firms we do not file patents ourselves, but have close links with patent attorneys who can provide filing services. We recommend and select patent attorneys based on their experience in different technology sectors in order to ensure the best scope and depth of protection for our client’s inventions.

Contact a patent lawyer

Our lawyers are always happy to have a free initial chat. If you would like to find out more about patent law and patenting your invention, you can contact Roy Crozier or Susan Hall directly using the details given on their profile pages, or by calling 0800 652 8025.

Clarke Willmott has offices in Birmingham, Bristol, Cardiff, London, Manchester, Southampton and Taunton and we provide IP advice both to clients located within the UK and around the world.