Patent Post

Patent Post

Applying for a patent

Nick Burrows takes us though the process of patent application and offers easy solutions to complications that arise during the same

2006061517-6342806Patents are a long established means of encouraging innovation. A patent confers on its holder a legal monopoly for a limited period, in the commercial exploitation of an invention. In return for the monopoly, the inventor must disclose the nature of the invention so that others may utilise the knowledge. These details are published by the patent office and made available in patent libraries.

When applying for a patent in the UK, there are two paramount issues that are to be considered. The first is that the invention needs to have been kept secret and the second is the importance of getting professional advice.

In order for an invention to be patented, it needs to be:

  • New— not already revealed to the public before the date of application;

  • Inventive— not an obvious modification of what is already known; and

  • Capable of industrial application— meaning that it can be made or used in the industry.

It is often disappointing and costly to discover that an idea or invention is not new. Therefore, a thorough search of published patents and other documents, such as trade catalogues is advisable before applying for a patent. Such searches can either be done personally, using the patent library, or by commissioning a professional body.

The most common mistake that is made before applying for a patent is revealing the invention too early. If an inventor reveals his invention in any way before filing an application, this could be counted as a prior publication and could prevent the application being granted. It is essential that an inventor makes the disclosure under conditions of strict confidence. However, any conversations held with a solicitor, patent agent or patent office staff is considered confidential and will not count as revealing the invention early.

Invention promotion companies can be sought for further professional assistance. Such companies help evaluate, develop and market an idea. Some of these companies offer free information on how to patent and market an invention.

While deciding to use an invention promoter, an agreement is to be drawn up between the parties. Such an agreement is no different to any other commercial agreement. All the terms of the agreement should be considered and independent legal advice should be sought. The Department of Trade and Industry advises individuals and companies to take care while dealing with invention promoters to avoid expensive mistakes. Some promoters promise to promote and market a product for a fee and once paid, do little or nothing. However, a reputable invention promoter will carry out research and provide a market evaluation so that an inventor can review his invention’s potential. When entering into an agreement, care needs to be taken while considering the advice given. It is important to remember that no one can guarantee an invention’s success.

Before entering into such an agreement the following common guidance should be considered to avoid blunders:

  • Details of an idea or invention should not be disclosed to the promoter without a prior confidentiality agreement
  • The cost of providing its services should be discussed and set early on
  • The firm should be asked to provide evidence of its skills and expertise in the field of particular interest to support the activities that it plans to undertake
  • The success rate of the firm should also be considered as it may help in breaking down the rejection rate
  • Any assertions that are made about the firm’s contacts in a particular industry should be supported with evidence
  • If a firm offers registered patent agents, evidence of their qualifications should be provided

When to file a patent?

There are no precise rules on the time of patent application. However, the idea must be secret on the day the application is received by the patent office. Whilst applying early may ensure that an inventor is ahead of the game, it may also be worth delaying the application until a prototype is made. This will help if there is a risk that the product may not be fully developed or that the market may not be ready for the product.

By applying early, the inventor is also prevented from easily amending his invention’s description. Once the application is filed, variation will only be permitted with the filing of a new application. If such a variation is required and a new application is submitted within a year of the original application being filed, then the original filing date (priority date) may be kept. This effective date of filing is important while considering if the invention in the patent application is novel and inventive. By delaying a patent application, there is an increased risk that someone else may come up with the idea and apply first. However, it often enables further development and analysis of an invention.

Confidential disclosure agreements

Sharing new knowledge and original work requires a high degree of mutual trust. The invention needs to be new for it to merit a patent. And hence, it is critically important to consider confidentiality before discussing an invention with anyone. In addition to patenting an invention, unpatented but confidential ideas known as trade secrets, can be equally important.

Confidential Disclosure Agreements (CDAs) or Non-Disclosure Agreements (NDAs) are legally binding documents that enable the inventor to record the terms under which secret information is exchanged. If an inventor wishes to discuss his idea with another person, he should ensure that they sign a CDA. A signed CDA allows discussion of an idea without the fear of it becoming public.

There are some companies which, for perfectly valid business reasons, do not want to sign a CDA. This is usually because they do not want any conflict within areas on which they might work. It is highly recommended that, while using a CDA, a solicitor or a patent agent is consulted. Certain companies may have a precedent CDA that they wish to use, serving both parties’ interests. It is also helpful when suggesting a CDA that a draft is supplied to the other party in advance for consideration. It is also sensible to ensure that a record is made of what is specifically disclosed at the meetings.

Procedure in applying

It is very important to ensure that all the features of the invention that the inventor may wish to protect are described

The basis of a UK patent application is a legal document called specification. It is very important to ensure that all the features of the invention that the inventor may wish to protect are described. The patent specification must enable a reader to understand the invention and be able to put it into practice. A patent specification must also include a set of claims defining the monopoly that the inventor seeks. The claims are the most important part of any patent specification. They are a series of numbered paragraphs that define the scope or extent of protection of the invention that is sought. Claim 1 is very important and must recite only the essential features of the invention and in the broadest possible terms; thereby protecting the broad underlying principle or concept of the invention, rather than any specific embodiment of it.

In order to ensure that the document is filed correctly, it is sensible to instruct a solicitor or registered patent agent. Both will have the necessary technical and legal skills to prepare the specification. A patents form 1/77 ‘request for grant of a patent’ should also be completed.

In UK, there is a facility to apply for patents online using the online patent filing service. However, while applying online, one should be conscious of the impending legislation, concerning electronic communications. The new legislation provides for the ability to apply online for a patent but states that where an application is not delivered in accordance with such directions or it has not been acknowledged it will be treated as having not been delivered.

Once filed, the patent application will remain secret for 18 months. In this time, the UK Patent Office will conduct a search through previously published patents and patent applications to check whether the invention meets the requirements of novelty. The examiner inspects the patent application in light of the disclosure in each of the documents found in the search and issues an official letter setting out his opinion on patentability.

It usually takes two to three years before a patent is granted and once granted, it will be published and a copy of the specification will be available to anyone who wishes to see it.

In summary, applying for a patent is a lengthy, costly and complicated process. In order to avoid expensive mistakes and increase the chances of obtaining a patent, both legal and technical expertise are essential. However, one should also be conscious of the fact that when applying for a patent, there is no guarantee that an invention will make money or give any protection from others from infringing the patent.

(The writer is a qualified solicitor and a partner at Blandy and Blandy Solicitors-Company and Commercial Department, UK)