Ensuring ideas don’t become lost property

 Intellectual Property laws don’t have to be tricky to understand, and for a truth-seeking scientist, this knowledge is increasing important. Here, the Intellectual Property Office demystifies IP and talks through the patent application process...

 A patent is an intellectual property (IP) right that protects inventions which are new, not obvious developments of what already exists and broadly technical in nature. Patents tend to cover how things work, what they do, how they do it, what they are made of or how they are made. So a patent may, for example, be used to protect a new device or apparatus, a new technical process, a new material or a new class of chemical compounds.

However, patents don’t last forever; a patent gives the owner exclusive rights to the invention for up to 20 years. The basis of a UK patent is a legal document called a ‘specification’ and its content decides not only whether a patent can be granted, but also exactly what the rights of any patent granted cover. Part of the ‘deal’ for obtaining a patent monopoly is that the patent specification also explains in sufficient detail how the invention works – so that when the patent expires, others can benefit from this understanding.

IP is important to scientists because they often work on research that has never been attempted before. A scientist, or their employer, may need a patent if they have invented something and want to stop others copying, manufacturing, selling, or importing that invention without permission. A granted patent gives the owner the right to take legal action to stop others exploiting the invention in this way, and to claim damages from them if they have already done so. It also allows the patent holder to license the rights to make or import the invention to another person – thus generating royalties. Alternatively, a patent can be sold just like any other property. Because of their monopoly and potential uses, IP rights such as patents can also enhance the value of a business with investors and financing institutions or in case of a sale or merger.

As the patent application process can be complex in scientific areas, it’s advisable to consult with a Patent Attorney before applying. These professional advisers can assess whether your invention is appropriate for patent protection and guide you through the application process.

Many universities and research institutions have help available to facilitate the commercialisation of research which may include access to patent attorneys or other advisers. In many cases, any invention made by an employee in the course of employment will belong to the employer. The ownership of a patent application or granted patent may also be complicated if the invention arose during collaborative work and it is important to seek professional legal advice or to decide in advance who will own any intellectual property arising from the collaboration.

The first step in the application process is to file an application at which point you are given a ‘filing date’. When filing an application, it is necessary to provide a specification which includes: a description of the invention providing enough detail for the invention to be carried out by someone else, figures to illustrate the description and claims which define the scope of the monopoly being applied for. It is also necessary to provide a brief abstract summarising the important technical aspects of the invention.

The IPO then performs a search; a patent examiner looks for documents that will help decide whether your invention is innovative. These documents may have been published anywhere in the world before the filing date of the application and may include published patent applications and technical journals. The examiner is looking to see if the technical features set out in the claims are already known or are an obvious development. The results of the search are provided in a search report and help the applicant decide how to proceed. The application is then published shortly after 18 months from the filing date. If the applicant has decided to continue with the application, the next step is to request substantive examination.

Requests for substantive examinations are placed in a queue. When the application reaches the front of the queue, a specialist examiner will thoroughly examine the application to see if it meets all the requirements of the Patents Act 1977. If an application does not meet all the requirements, the examiner sends a report explaining any objections. A well-drafted specification should provide a number of ways in which the examiner’s objections can be overcome. A poorly drafted specification may make it impossible to amend the specification to meet the requirements of the Patents Act, particularly as adding new information to your application is not permitted. The process of amendment and re-examination may be repeated until the application is either allowed, and a patent is granted, or is refused.

People are often surprised how long the patent application process can take. It is common for it to take several years from first filing of the patent application to grant or refusal of the patent. But any part, or all, of the process can be accelerated on request and it is possible to go from filing to grant of a patent in around nine months. That said, only a small percentage of applicants want this – most prefer to have the time to assess their invention (in light of the various IPO reports), raise funding, make important commercial decisions, develop their product further, build prototypes, get production lines ready, and so on.

A granted patent gives the owner exclusive rights over an invention for up to 20 years and in order to keep a granted patent in force, an annual fee is payable. It is possible to choose not to renew or to voluntarily cancel the patent at any time.

Once a patent has been granted, the patent holder has the right to stop others from exploiting their invention. The patent holder can also choose to exploit the patent in other ways to best suit their business. As with other property, the patent owner may wish to sell their invention and all the IP rights, or the patent owner may license the invention to someone else but retain all the IP rights. Income can therefore be generated through licensing or sales of the patent itself and/or commercialisation of patent-protected inventions.

It’s important to ensure not only that your inventions are protected but that you are not infringing anyone else’s granted patent. This is particularly relevant when taking products to market or commercialising your work.  It is possible to search online for other patents in your technical area and professional “freedom-to-operate” searches can also find patents you might be at risk of infringing. If you think you may be infringing someone’s patent you should get professional advice quickly from a patent attorney or solicitor.

Patents cannot be granted for inventions which are not new i.e. the invention must not have been disclosed publically anywhere in the world prior to filing. A common mistake made by people new to the world of patents is to reveal their invention too early. If the invention is revealed in any way – by word of mouth, demonstration, advertisement, article in a journal or any other way – before a patent is applied for, the invention is usually considered to have been made public. This could mean that the possibility of being granted a patent is no longer available. A patent also cannot be granted for inventions which do not have an inventive step; this means that the invention must not be an obvious development of what already exists, such as a simple adaptation or combination of existing products.

Particularly important to those working in scientific research, there are some areas which are excluded from patentability. Patents cannot be granted for discoveries, scientific theories or mathematical methods. So however insightful or revolutionary a scientific theory might be, it cannot be patented – although new and inventive devices or processes which rely on that theory may well be patentable.

Also unpatentable are inventions which it would be considered contrary to public policy or morality to exploit (inventions which concern landmines are one example).  There are also several processes in the field of biotechnology which fall into this exclusion (processes for human cloning or which modify genetic identity, for example). The borderline between what is and is not patentable when it comes to these exclusions is a difficult area, and involves legal, technical or scientific considerations, and so it is an area where expert advice is almost always needed.

The IPO certainly sees some weird and wonderful inventions from time to time, but it is worth remembering that the overwhelming majority of the 22,000 or so patent applications filed each year concern incremental advances in technical or scientific fields of commercial significance.  Therefore, patent applications are seen across a wide field of endeavour including telecommunications, biotechnology, semiconductors, computer systems, organic and inorganic chemistry, nanotechnology, the automotive and pharmaceutical industries, and civil, mechanical and electrical engineering. Some applications are also received in more simple technological areas – for example concerning building, cleaning, clothes or toys. Occasionally the IPO does receive patent applications for perpetual motion machines, faster-than-light interplanetary travel or teleportation devices. Since one of the legal requirements for a patent to be granted is that the invention is not alleged to work in a manner which is contrary to the laws of physics, such patent applications are never successful!

http://www.ipo.gov.uk/p-basicfacts.pdf

http://www.ipo.gov.uk/types/patent.htm

http://www.ipo.gov.uk/whyuse/research/research-ukip.htm

http://www.ipo.gov.uk/types/patent/p-applying.htm