It seems these days, that IP
(Intellectual Property) is rearing its head in the news increasingly more often
with big companies fighting over Patent rights, having Trade Mark disputes etc.
In my career as a patent attorney
I’ve seen a lot of people and small businesses fall foul of IP, sometimes
through not knowing key facts about IP, and sometimes for not even considering
it at all when starting a new business venture!
This short introductory article
is simply set out to answer some of the most common questions and dispel the
most common misconceptions people have about patents.
Can I get a single worldwide granted patent?
No. Patents are generally granted
on a country by country basis. If you want worldwide patent protection, you
will need separate patents in all of the countries that you require the
protection to be in. For example you cannot use a French patent to stop a
competitor making/copying your product in the UK – you need a UK patent for
There is no single pan-world
patent right. There is also not, at present, a European wide single granted patent
right. However, there are streamlined procedures available from different
organisations that allow you to centrally apply for patents. The European Patent Office (EPO) is one such
organisation that allows you to submit a single European patent ‘application’.
The EPO will examine and review your application and has the power to grant
separate national patent rights in the majority of countries in Europe from
your European patent application.
What can I get a patent for?
The answer depends on which
country you want the patent right to be in, but for the purpose of this article
we shall assume UK/European law. On the whole, patents may be granted for both
products and/or processes that are ‘industrially applicable’ – i.e. not purely
abstract in nature.
The law does however have some types of invention that are
excluded from being patentable even if they are industrially applicable, including
methods of surgery, purely business methods, artistic works, as-well as a few others.
If you have made an invention that is industrially applicable and not excluded,
then the patent office requires your invention to be both novel (new) and inventive
(not obvious even if it is new) before it can grant you a patent.
Novelty is a
worldwide requirement and requires your invention not to have been made
available to the public anywhere in the world. Being ‘available to the public’
covers all forms of disclosure, written, verbal or otherwise.
For example, if
before filing a patent application you were in Australia and verbally disclosed
full details of your invention to a room full of random people, then that
disclosure could prejudice you filing patents for your invention in most
countries around the world. It is therefore very important to keep your
invention secret until you file your patent application.
If you do need to talk
to external parties about your invention before you file a patent application,
make sure that any meetings and correspondences are in strict confidence. Preferably
arrange for a Non-Disclosure Agreement (NDA) between you and the external party
before you start having discussions regarding the invention.
Do I need a patent to make my product, use my process?
No. There is nothing currently in
the law that states you absolutely need a patent to make your product, however
whether someone else out there has a patent right to stop you is another
question; if you are going to start launching products, it is advisable to
check out what other IP is out there already!
Does a patent give me a legal right to make my product/use my process?
No. This is one of the most
common misconceptions about patents. If you have a granted patent, it only
gives you the right to
stop others making products (or using processes)
covered in the claims of your granted patent.
What rights does a patent give me?
Firstly, in the UK and most other
countries, you can only take preventative legal action against a third party
once your patent is granted. In the UK, you cannot sue someone using a patent ‘application’.
The scope of protection of your patent is dependent upon what is contained in
the ‘claims’ of your granted patent. The claims of your patent should describe
the key essential features of your invention.
A granted UK Patent gives you the
right to stop others within the UK making products covered by your claims,
disposing of the products (for example selling) and keeping the products. It
also allows you to stop the importation of the products into the UK. If your granted
UK patent claims a process then your patent allows you to stop others in the UK
using the process or offering to use the process as well as the disposal, use
or importation of a product directly made by the process.
How long does my patent last for?
In the UK and the majority of
major industrial countries in the world, your patent can last for up to 20
years from the date you file your patent application. The continuance of your patent
for the full duration of 20 years requires you to pay ‘renewal’ fees. For a UK
Patent, these are due annually after your patent is granted.
Can I keep my invention secret to the world and still have a granted
Generally, no. The standard procedure
for the patent office is to publish your patent ‘application’ around 18 months
after you file it. This publication of the application is not a grant of the
patent but a simple public disclosure of your application to give the public a
chance to comment on whether your application should be granted.
Are patents only worthwhile for large businesses?
While it may seem from the news
that patents are only used by large corporations in fighting technology wars,
many smaller companies, even single individuals reap the benefits of having a
targeted patent strategy. One of the more un-measurable benefits of patents is
the ‘keep off the grass’ effect. By having a patent in place for your product,
it is a clear warning sign to your competitors not to copy your product.
Dr Robert McDougall is a
Chartered UK and European qualified patent attorney working for Phillips &
Leigh. Phillips & Leigh are a London based firm of Patent and Trade Mark
Attorneys who have just set up a satellite office in Swindon.
information or to get in touch please visit the Phillips & Leigh website via the link below.