Patents protect the way in which a piece of equipment is constructed or the way in which it works. Commercial processes are patentable, and it is also possible to patent a new use of an existing item.
To obtain a valid patent the product or process must not have been made public prior to the application date. (Confidential disclosures, e.g. to a patent agent or solicitor, do not count.) Also, the product or process must not be obvious compared with existing products or processes. This requirement gives rise to much legal argument, but as an initial guide, if it took time to come up with an idea it probably wasn't obvious.
Patents can give very comprehensive protection since they can be used to protect principles rather than details. Although it is necessary to give at least one detailed example in a patent specification this does not generally limit the scope of a patent.
Abstract schemes or business ideas which do not result in a tangible new product are not patentable. Methods of playing a game are not patentable, although the equipment may be. Similarly, methods of medical or veterinary treatment cannot be patented, but new drugs or medical equipment can. Computer programs cannot be patented per se, although again, a piece of equipment which operates in a different way can be patented even if controlled by software.
OUTLINE OF REGISTRATION PROCEDURES (FOR UK APPLICANTS)
The routes followed can vary widely depending on the circumstances of each case, but to assist clients to understand the basic steps involved we have put together the following outline. Note that the procedures can be accelerated in urgent cases, at additional cost.
Initial steps - Conduct searches to confirm whether invention is likely to be new. When we are reasonably confident of being able to obtain a patent, prepare detailed specification and file Application at Patent Office. Generally takes 2 to 4 weeks to complete. Initial Application gives 12 months provisional protection throughout most of the world.
Within 12 months - Decide on geographical scope of protection required. If overseas cover is to continue the appropriate National, European or PCT Applications must be filed. If UK only, file continuation papers, including Claims and search request. Note that no new matter can be added to a specification after this stage.
15 months from filing - Search report received. Evaluate any documents cited and file amended Claims if necessary. Application can be withdrawn prior to publication.
18 months from filing - Application documents made available for public inspection and printed "A" specification published.
After publication and within 24 months - File Examination Request.
Approximately 30 months after filing - Examination report issued. If any objections are raised file arguments and/or amendments to Claims.
Approximately 36 months after filing - PATENT GRANTED. Re-published as "B" Specification.
4th year onwards - Annual maintenance fees must be paid to keep the patent in force. Maximum term 20 years from filing.
WHY USE A PATENT AGENT?
It is not essential to use the services of a Patent Agent to obtain a patent or register a trade mark or design. However, if the protection that is offered by these forms of registration is to be of commercial value, and prevent people from encroaching on your invention, design or trade mark, it is essential to employ a professionally qualified Patent Attorney.
Obtaining a patent for a new invention is not simply a question of sending your invention to the Patent Office or filling out the appropriate forms. A patent specification describing your invention must be lodged. This is a highly specialized legal document which may eventually have to be interpreted in Court, or by skilled lawyers acting for a competitor or potential licensee. Your protection is embodied in the patent specification, and no matter how ingenious your invention might be, if your patent specification is deficient you will have no legal right to stop others from using your idea.
The form of a patent specification has been evolved over many years to give the broadest possible protection for a new invention. There are many legal requirements which a patent specification must fulfill, many of which conflict with each other. For example, on the one hand, there is a requirement to set out the scope of an invention in very non-specific language, so that the patent protection is not limited to any specific embodiment. On the other hand, there is a requirement to give very precise instructions as to how the invention could, in practice, be performed. Patent Attorneys are highly skilled at putting an invention into words in such a way that all the legal requirements are met and the Patent will be as strong as possible. They are also familiar with the extremely strict time limits and formal requirements which must be complied with for the successful grant of a patent.
It will help us to help you and keep our charges down if you can give us the information we require in a concise and easily readable form. The basic requirements are as follows:
1. Drawings to illustrate how the invention can be put into practice. In the case of a device, general external views, sectional views, and exploded views can all be employed. These should show how the device is constructed and how is will be used. Full engineering drawings are NOT required. Freehand sketches are acceptable provided they are clear and neat. We need a copy of each drawing which is completely free of notes and reference numbers, although duplicate annotated copies may be very useful.
2. How does the invention work? In simple cases this should be obvious from the drawings, but it is sometimes useful to provide a list of numbered points, e.g. listing the steps in a process.
3. Why did you feel the need to make the invention? We should know of any existing products or processes that work in a similar way, and if your invention has any advantages this should be made clear. Perhaps you just wanted to do it a different way, or make it cheaper, but it is still useful to know.
4. We need the full name and address of the patent holder and of each inventor (if different from the patent holder). A daytime phone number and fax number are also required for our records.
Novelty and infringement searches - Again, we need to know what your invention is and what you consider to be new about it. The information outlined above is generally more than adequate. Although we can do broad searches you are more likely to get accurate and useful results if you can pinpoint the aspects which are most likely to be new.
Specific Patents - To quickly locate a particular patent it is useful to have (in order of preference) 1. A Patent Number. 2. The full name of the likely patent holder. 3. The approximate date when the patent would have been filed. 4. The subject matter to which the patent relates.
FIND OUT MORE:
Visit the web site of the UK Intellectual Property Office
Visit the web site of the European Patent Office
Visit the web site of the World Intellectual Property Organisation (WIPO)
© Craske & Co., 1998
Last updated: 27 December 2010