• to give a short, simple insight into the world of patents;
• to provide some basic guidance to help you decide whether or not applying for a patent is the right thing for you to do; and
• to outline the procedure for obtaining patent protection. The guide does NOT attempt to give a comprehensive explanation of patent law nor does it seek to cover all the many factors that may affect or influence a particular application.

Patents protect inventions by giving the owner of the patent the right to stop anyone from making or using the invention without the owners permission. This right, granted by the UK Intellectual Property Office (UK-IPO), is enforceable in a court of law. A patent can last for up to 20 years. In other words, a patent is a right to stop competition for the invention for a limited period. This right to stop competition exists only in the country for which a patent has been granted. Thus, a UK patent will only enable the owner to stop competition in the UK, a German patent can stop competition in Germany and so on. Generally speaking patents are used to protect the markets in which an invention is to be exploited.

It is clear therefore, that, providing an invention is commercially viable, a patent is a valuable right to own. But what is the nature of the bargain the patent owner has to enter into to get this right and what does society get out of it? For the applicant, the essence of the bargain is the payment of certain fees and the giving of a full technical disclosure of the invention. This disclosure is published - usually within 18 months after the application is filed. This publication means that patent documents form one of the greatest sources of technical information available in the world today. For society the value of the patent bargain is, therefore, that it encourages the investment and the application of the skills necessary to generate and disseminate new technologies, processes and products. You may wonder why a patent is a right to stop others from using an invention rather than the positive right to perform the invention. The reason is that, as some inventions are modifications or improvements over earlier inventions, which are themselves patented, they can thus be used or exploited only with the permission of the owner of the earlier “master” patent.

In order to help you decide whether or not to seek patent protection for your invention, here are a few basic questions that should be addressed:

• First, is the invention new? As far as patents are concerned, “new” is defined in most laws as meaning there must not have been any public disclosure of the invention before the date of filing your patent application. In this context, disclosure means not only in writing but also in any way at all, including oral disclosure or actual use.

  Consequently, if the features of your invention were publicly disclosed anywhere in the world before the date on which you file your patent application, then you cannot obtain a valid patent. So, if you have a good invention and have not yet filed a patent application, keep it confidential since, if you allow it to become known, you will have ruined your chances of protecting it. Because of this fundamental requirement that an invention must be “new” to be patentable, it follows that a search of relevant literature, particularly patents, before you file your patent application could help you to save time and money.

• Second, does the invention contain an inventive step? In this regard, an invention is considered as involving an inventive step if it is not obvious to a skilled person having regard to the state of the art. In other words, to be patentable, an invention must not be obvious to someone who is skilled in the particular technology of the invention in the light of everything that was publicly known before the date on which the patent application was filed.

  But what does “obvious” mean? Usually, this issue is addressed in the context of the question: “What technical problem does the invention solve?” Does the solution offered by the invention merely follow plainly or logically from what has gone before or is it more than that? This is not an easy issue to determine. To non-patent experts, many inventions may appear to be obvious, particularly with the benefit of hindsight, but that is not the proper test. So, unless the feature that makes your invention “new”, compared with what has gone before, is utterly trivial, then it is usually best for you to assume that it does involve an inventive step. In all cases of doubt it is best to consult a patent attorney.

 

• Third, is the invention patentable? The patent law does not define what an invention is but it does specify certain things that cannot be patented and certain things that are not regarded as inventions. These exceptions are relatively few and it is true to say that the overwhelming majority of patent applications are not affected by this requirement. Here again, if you have any doubts at all, take expert advice. Things regarded by the law as not being inventions are either abstract, e.g. discoveries, scientific theories, etc. or non-technical, e.g. aesthetic creations or presentations of information.

 

• Fourth, is the invention commercially viable?  Your invention may be technically brilliant but is there a market for it? It is no use producing a product or process that no-one wants to buy. If your invention is a result of work carried out to meet a perceived market need then you have answered this basic question. Other business type questions then arise such as “Does my invention meet this market need?” and “Can I sell enough at a price that will make a profit?”.

  If, however, your invention has not resulted from knowledge of market needs, then it would be advisable to undertake some market research before getting too far into the patenting process. In many instances libraries, chambers of commerce and numerous other bodies can provide very useful market information to help you.

 

• Fifth, would a patent be more valuable to you than maintaining secrecy ? If your invention is such that the moment you put it on the market it is possible to determine how it is made, for example, by analysis or reverse engineering, then, if you wish to stop competition, you have no alternative but to patent it. However, you may have invented a process that you decide to keep secret rather than patent, since it would be impossible for anyone to discover the process details from the product sold. An example of this might be a new cleaning process for specialist equipment, since the product of the process is simply clean equipment. However, you should of course always bear in mind the fact that secrets can leak out and, if they do, you have no protection.