PATENTS:
some basics to get you started

So, you've had an idea, and now you want to protect it. But what exactly is a patent, what can it do for you, and how do you get one?

What is a patent?

A patent is a form of legalised monopoly, which the government gives to an inventor for a limited period of time. In return, the inventor discloses publicly how the invention works. A patent document is a dual purpose document, in that it contains the public disclosure of how the invention works in the form of a description and drawings, and a definition of the scope of the monopoly granted in the form of the claims.

What can a patent do for you?

A patent gives you a legal monopoly in the exploitation of your invention, which enables you to prevent anyone else from exploiting the invention without your permission during the term of the patent. As a piece of 'intellectual' property, a patent can sold, mortgaged and inherited, and licences can be granted which permit the licensees to exploit the invention with your permission. Licences can be a valuable source of revenue.

How do you get a patent?

To get a patent, an application must be filed at an intellectual property office, which includes the description, drawings, claims and details of the applicant and inventor. The application will undergo a search and examination process which occurs in a number of stages over several years. Although applications can be accelerated, many applicants are happy for the process to be spread out over several years as this also spreads out costs.

The big question - how do I know whether I will be able to get a patent?
Things you need to know

To get a patent, your idea must fulfil two main criteria:

1. it must be new
2. it can't just be an obvious development of what is already known

You'll also hear patent attorneys and examiners talk about 'novelty' and 'inventive step'. These are just fancy words for the same two things above - having novelty means the idea is new, and inventive step means that it's not just an obvious development.

Unfortunately, you will find that patent attorneys speak a different language to the rest of humankind. We'll try to restrain ourselves from getting carried away, and will put things into terms you can understand. If you do have any questions, feel free to contact us on (+44) 02476 992662 or by email

There are two other main criteria as well as the two above.

Your idea must be capable of industrial application, which means that it must be an idea which is practical. This rules out the perpetual motion machine! There are also some ideas which are excluded

Novelty and inventive step are important concepts so we will now explore these a little bit further.

Novelty - is your idea new?

Your idea must be new in comparison with anything which has been publicly disclosed anywhere in the world by anyone before the earliest filing date relating to the application. There is an important consequence of this.

Important!

If you publicly disclose your idea before the earliest filing date of your patent application, then that public disclosure could count against you and invalidate your patent application. So, it is very important that any disclosure of an invention made before a patent application is filed, is a non public, confidential disclosure.

Inventive step (or obviousness) - is your idea just an obvious development?

If your idea is new, then it also needs to fulfil the second criteria, which is that it should not just be an obvious development of what is already known. One example of an obvious development would be a product which has previously been made in metal, and is now to be made in plastic. The product is novel, since it has never been made in plastic before, but since it is common to provide plastic versions of metal products, this would be regarded as a development which is obvious to the skilled person.

The hindsight argument

The trouble with thinking about obviousness is that, having had the blinding flash of inspiration, your great idea does now appear to be obvious. But ask yourself the question, whether it would have been obvious to somebody else skilled in the technical field before your blinding flash of inspiration. This isn't always an easy question to answer, but the hindsight argument is one that is accepted in the world of patents, and if you can construct an argument as to why your invention would not have been obvious to the skilled person, then this will often be accepted.

The key question: How do you know whether your idea is new?

Every inventor instinctively knows when they've devised something new. It's that famous Eureka! moment, when you leap out of the bath and embarrass everybody. However, it is a good idea to back up that instinct with some solid investigation, and specifically to do some thorough internet searches on search engines such as Google and Espacenet.

Patent searching

Espacenet is a comprehensive patents database, which you can search using keywords. Be imaginative in the keywords you use in your searching. It can be quite time consuming, but using Espacenet will give you an insight into patents and the technical area in which you are interested. If you locate a knockout, don't despair - you've actually saved yourself potentially a lot of money and heartache!

You can access Espacenet yourself.

If you find some potentially relevant documents, we are happy to have a look at them for you and advise as to their relevance.

Alternatively, we are can undertake patent searching for you, and can offer a number of different searches to suit your budget - just call us on 02476 992662 or email us to ask about patent searching.

Excluded inventions

There are a number of inventions which are excluded from patentability, including:

• aesthetic creations and works of art
• scientific discoveries and theories
• mathematical theories
• methods of performing a mental act
• methods of doing business
• rules for playing games
• computer programs where there is no 'technical contribution'
• the presentation of information
• methods of treatment of the body by surgery or therapy
• methods of diagnosis practised on the body

In each case the exclusion relates to the invention 'as such', which leaves open the possibility that the invention might be patentable if it comprises more than just the excluded aspect. For example, if the invention includes hardware of some kind, then the invention might then cross the line into patentability. As you might begin to appreciate, this is a complex and still developing area of the law, in which the law also varies between jurisdictions. Hence expert advice should be sought for each individual case.

At IP-Active.com, we have experience of advising clients in relation to patenting software and other borderline excluded inventions.