When is an innovation patentable?
Where research is being done, innovation often follows. And in many instances, it may be desirable to use patents to protect innovations and restrict other parties from using them.
In any research project, one of the important questions to ask early on is who will own any intellectual property (IP) which is generated by the project. This is especially important in the case of collaborations. Will one party own all of the IP? Or will it be shared? If it will be shared, how will it be divided up? How will protection for the IP, such as via patents, be obtained? Whoever owns it, would the other party be free to use the technology, for example through a licence under a resulting patent?
Taking a step back from these questions, it is important to understand which kinds of innovations can be protected by patents. Patent systems operate under the laws of individual countries. There is reasonable harmonisation between many countries on the basic requirements, but there are also important variations. The following comments relate to the situation in Europe.
What qualifies as an “invention”?
Generally speaking, inventions fall into one of two categories: products, such as machines or drugs; or processes, such as methods of making or using something.
The former can be referred to as product inventions. Examples of product inventions include a new apparatus, part of an apparatus, a new assembly of apparatus, a new compound or a new physical form of a known compound, a new product made from a new or a known compound, a known compound with new properties, a new formulation, a new intermediate.
Turning to processes, examples of process inventions include methods for making something, methods for purifying or separating something, methods for analysing, testing or measuring something, or methods of using something. Importantly, this not only includes ways of using a new product, but also new uses for a known product.
When is an invention patentable?
Once it is clear that there may be an “invention”, the next question is whether the invention may be patentable.
To be patentable, an invention must:
- be new (“novel”)
- not be obvious (“have an inventive step”)
- have industrial applicability
- not be excluded from patent protection
To meet the requirement of being novel, an invention must simply be different in some way to anything which was already known to the public at the date of filing the patent application. The difference need not be large.
In patent terms, everything which was already known is referred to as the “prior art”. All types of disclosure are relevant, including peer-reviewed publication, inclusion on a website (even if subsequently removed), disclosure on a poster, or by oral presentation. In order to determine whether your invention is novel, you need to look at each individual piece of prior art, e.g. each scientific article, on its own. If your invention differs at all, then your invention should be novel.
Importantly, if you disclose your own invention to the public, that disclosure becomes part of the prior art for any subsequent patent application, even your own! This is why, if you are considering patent protection, it is very important not to disclose the invention until the patent application has been filed.
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 at the heart of discussions with the patent office when deciding if an invention is patentable.
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.
Exclusions from patentability
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 addition, certain things are excluded from patentability because the law does not regard them as “inventions”; in many countries, this includes computer programs and business methods.
Having said that, even if an invention falls within one of the exclusions, in practice it is often possible to obtain patent protection for related concepts. The application of the exclusions should therefore always be reviewed on a case-by-case basis.
Identifying patentable aspects
A research project will usually give rise to several different – but related – inventions. Some may be patentable, while others may not be.
We recommend regular reviews of any research project for the possibility of patentable technology. Particular signs to look out for include situations where hurdles were faced and overcome, surprising results were obtained, or a new tool was made to achieve a result. Such indicators should always trigger a discussion about possible patent protection.
By reviewing research projects regularly, a conscious decision can be made whether or not to pursue patent protection, rather than the opportunity for protection simply drifting past and being missed. Once an invention has been disclosed to the public, patent protection is no longer available.
Discuss with us!
If you are involved in a research project and suspect that a patentable invention may have been made, please feel free to discuss with any of us at Greaves Brewster. We are always happy to support clients in the process of deciding how to protect any intellectual property arising from the work that they are doing.