AN INTRODUCTION TO PATENTS, WHAT CAN BE PROTECTED AND WHAT HAVING PATENT PROTECTION REALLY MEANS.

Patents are used to protect technical advancements – inventions. A granted patent should allow the patent holder to stop others from using their invention without permission.

What is an “invention”?

Usually, inventions fall into one of two categories: products, such as devices, machines or parts thereof and chemical compounds or compositions; and processes, such as methods of making, doing or using something.

What are the requirements for patentability?

To be patentable, an invention must:

• be new (“novel”)
• not be obvious (“have an inventive step”)
• have industrial applicability

Novelty

To be novel, an invention must be different from what has been disclosed publicly. The difference need not be large.

In patent terms, everything that has been disclosed is called the “prior art”. All types of disclosure are relevant, including peer-reviewed publications, mentions on a website (even if subsequently removed), or oral disclosures.

Importantly, if an inventor discloses their own invention to the public, that disclosure becomes part of the prior art for any subsequent patent application, even their own! If you are considering patent protection, it is vital not to disclose the invention until the patent application has been filed.

Inventive step

An invention “has an inventive step” if the invention is not obvious to a skilled person in view of the state of the art.

The “state of the art” is all of the known prior art together. The “skilled person” is a notional person, or team of people, who know everything there is to know in their field, but have no imagination.

An invention does not necessarily need to be “clever”, but it should not be an obvious development of what was already known, such as a mere juxtaposition of known elements to achieve an expected result. This can be a very subjective assessment, and is often key to deciding whether an invention is patentable.

Industrial applicability

The requirement of “industrial applicability” is a relatively low hurdle – the invention must simply be useful in some way. In practice, this requirement is often used to weed out any “inventions” which contradict the laws of physics, such as perpetual motion machines. There are very few inventions for which this requirement is not met.

Are there any exclusions?

In addition to the requirements above, patent law excludes certain inventions from patentability. In Europe, this applies for example to some inventions in the field of medical treatment and diagnosis. In many countries computer programs and business methods are also excluded from patentability.

Even if an invention falls within one of the exclusions, though, in practice it is often possible to obtain patent protection for related concepts. You should not discount patent protection, just because your invention appears to fall within one of the excluded areas.

Why might you consider filing a patent application?

Patents can be powerful tools, allowing you to stop others using your invention. This can be important if copying of your invention by competitors would have significant adverse effects on business. This is typically the case where the marketability of a product or service is based on it being innovative.

Even if you do not intend to use your patent to stop a third party acting, it may still be worth considering patent protection. A patent (or patent portfolio) can add significant value to a company, and can be very helpful in attracting investment. Patents can also generate significant licensing revenues and in some cases can help you obtain tax breaks.

Are there any other considerations?

A patent requires disclosure of how the invention works, which typically occurs before examination of the application. If disclosure is not an option, then it may be better to consider trade secrets. We’ll be discussing this more in our webinar next week.

The granting of a patent says nothing about the risk of your invention infringing earlier patents and it is important to consider whether you have “freedom to operate”, i.e. whether working your invention will infringe anyone else’s rights. We’ll be looking at this in more detail in a subsequent briefing.

When to file a patent application

Filing a patent application begins a process that involves continued financial throughout the patent lifetime. If overseas protection is required, significant costs typically occur about 2.5 years after filing. Make sure you understand how this cost burden fits into your business plan before filing that first application.

A patent application must include sufficient information to make it plausible that you actually have an invention. Where this is not apparent from the description alone, there should be data demonstrating an inventive technical effect. Ideally, an application should not be filed until this threshold has been reached. We’ll be discussing sufficiency in an upcoming briefing.

Should you have any questions about patent protection, please do not hesitate to contact our patents team. This briefing is for information only.