Patents Overview

 General

Patent Rights are monopoly rights given by law to protect inventions. Patents offer significant protection against infringement. The patent must be registered. Patent protection lasts for up to 20 years. Renewal fees are payable after the fourth year.

The monopoly period generally lasts 20 years. In order to obtain patent protection, details of the invention must go on the public register in the Patents office so that it is available for study. Others are entitled to learn from the Patent. After 20 years the invention is available to anyone for use.

The purpose of patent protection is to enable individuals and organisations who have spent monies on research and development to recoup costs and exploit profits from the fruits of their work.  The intellectual property in the invention is an asset owned by its developer which patent law protects.

An application for a patent may be made by

• an inventor or joint inventors collectively
• anyone who has the right to apply in preference to the inventor by law
• successors in title whether as assignees for successors on death.

Patents can protect products or processes. It is common to have both the process and the product patented. In order to qualify for a patent, an invention must be novel or constitute an inventive step, be capable of industrial application and not be within any exclusion.  Novelty depends on the “state of the art” at that time at the day of application. The “state of the art” means everything in the public domain that is  not being kept secret or which is known.  Existing products or processes or inventions and technology described in journals would not be novel.

Inventive Step Required

An invention most involve an inventive step.Patents are registered when granted. They must be concisely described so that they are apparent from a search.

If the invention is obvious to a person  skill in the art, taking into account the state of the art at the priority date, then there will not be an inventive step. If what it involved would have been obvous to a skilled man at the relevant date, with knowledge of the existing state of the Art then there will not be an inventive step.

The commercial success of a product can be an indication that it involves an inventive step. A discovery, a mathematical period, scientific theory, a scheme or rule or the presentation of information will not be an invention. Patents aren’t about ideas. The invention must be capable of being put into practice.

Discoveries of natural phenomena are not inventions and so aren’t patentable. A computer programme could be patented, although it is usually protected by copyright legislation. If a programme has a technical effect or a practical application, it can be patented.

Patent Application

In order to obtain a patent, it is necessary to file a patent specification. The specification is a description of the claim. The description must disclose the invention sufficiently to be performed by a skilled person.

A patent specification can be a complicated technical and legal document. It needs to be prepared by someone with scientific or engineering knowledge in the relevant area. It is necessary that a description of the process is filed at the Patent’s Office sufficient to allow others to reproduce it.

The Patents office carries out an investigation in its initial examination of the Patent. Third parties can object after publication of a Patent.

The claim for patent sets out the scope of the monopoly right.  The claim will usually be in general terms followed by more specific terms. The patent must describe the process where one is involved.

The first person to file a patent obtains priority. Famously, Alexander Graham Bell filed his patent for the telephone a mere four hours before a rival  Elisha Gray. The priority date determines the date in which the invention is judged as new.

The Patent Office usually takes about 18 months to complete its initial examination of the application. It then publishes the application and it is put in the pubic register. Third parties have a right to object to the patent. If no major issues arise, patent protection will be granted within 6 months after publication. This two year period counts as part of the 20 year life of the patent.

The inventor is the person entitled to the patent. Inventions in the course of employment  will normally belong to the employer.

UK Application

The UK Intellectual Property Office deals with UK patents. The European Patent Office deals with patents covering all member states in the European Patent Organisation. The World Intellectual Patent Office covers states that are party to the Patent Cooperation Treaty.

The right to a patent depends on who is first to file, not who is first to invent.  A patent application can be made  for the U.K. through the U.K. Patents Office and European Patent Office or via an international application under the Patent Cooperation Treaty.  The European Patent System is not just European Union based and encompasses non EU states. The European Patent is effectively a bundle of Patent rights for different European countries together.

European / International Application

An application may be made for a UK patent a European patent or an international patent.

Most Western countries are party to the International Convention for the Protection of Industrial Property. An inventor may make an application in one state party and make further applications within 12 months in other state parties on terms that the priority will date from the date of first application.

International applications may be made under the Patent Cooperation Treaty to the national office. They are sent to the World Intellectual Property Office in Geneva. International searches are undertaken. The searches are published, and the application is sent to the intellectual property office for each country specified in the application. The application proceeds as if it were separate applications in each such country.

The European Patent Convention allows for single intellectual property office to cover all European countries nominated. The application may ultimately lead to a bundle of national patents for each state nominated.

The EU has sought to create the European Community patent under the Community Patent convention. The EU has not yet completed this process as not all states have ratified it.

The European Patent Court has commenced and lays the groundwork for the European patent Convention

A compulsory licence may be granted if the patent owner is not exploiting the patent or allowing it to be used over where this hinders the exploitation of other patent products

The enforcement of patents in the UK is undertaken through the Intellectual Property Enterprise Court in London. It as part of the Chancery Division. Larger claims must be made to the Patent Court (over £500,000).

If a patent is granted, its use may be licensed for use by the patent owner. It may be assigned. The grant multiple patents in different territories are subject to certain overriding EU competition law. it must not act to partition the single market.

Infringement

Infringement of a patent arises where a third party, without the consent of the patent owner, makes disposes of or imports products or keeps for disposal products in breach of the terms of the patent. Where an invention uses the process or offers it for use in the United Kingdom and knows or it is obvious to a reasonable person, that its use is without the consent of proprietor, there will be an infringement. It is also an infringement where a  party uses or imports a product obtained directly by means of a process in breach of patent.

In legal action the defendant frequently argues that the patent is partly or wholly invalid. If there was anything existing at the time of the patent which disclosed the process or product, then the patent is potentially invalid.

A claimant may seek to restrain misuse by an injunction. A claimant is entitled to an order of delivery  and destruction of the defendant’s goods, damages and to an account of profits unlawfully earned in breach of the patent