Patenting your idea is the best form of legal protection you can get.  With a patent you have the legal right to stop others copying your invention and the IP (Intellectual Property) it provides can often have a value to potential investors or purchasers of your company.  We gets lots of enquiries from individuals who have come up with an idea and are looking to patent and develop it and this article covers some of the real world aspects involved in patenting.

Is It An Invention?

First things first.  You cannot patent an idea just because you believe you are the first person to come up with it.  A patent is there to protect an 'invention', not simply an idea.  When you apply for a patent what you are doing is specifying, through text and drawings, how your invention works.  In return for this public release of your invention, if it really is new the state will grant you exclusive rights to it for 20 years.  Therefore to be able to patent your idea, its core concept needs to be explainable in simple and direct terms

The other reason you can't just patent an idea is that it must involve a novel and inventive step.  The novel bit is easy but a common misconception is that many people think they can apply for a patent because they are the first person to come up with the idea.  However when you sit down for your first meeting with a patent attorney one of the first things they will want to establish is whether your invention is actually an invention.  It is really important to understand this, so that you don't waste time looking into patenting something that is simply not patentable.  A very simple explanation of this 'obviousness' test is as follows: Would a hypothetical skilled person, who knows everything but does not have the slightest spark of inventive ingenuity, come up with the same idea if they knew all the prior art (all previous ideas), but had not read your patent application?  If the answer is yes then your idea is not an invention, its simply the logical application of current day knowledge to a new problem and therefore you can't patent it.

This is a good description in more legal terms of the EU approach to judging inventiveness (the UK is slightly different): Is there any teaching in the prior art, as a whole, that would, not simply could, have prompted the skilled person, faced with the objective technical problem formulated when considering the technical features not disclosed by the closest prior art, to modify or adapt said closest prior art while taking account of that teaching [the teaching of the prior art, not just the teaching of the closest prior art], thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves? It's the "would, not simply could" that is the all important definition here.

The US is a bit different to Europe and actually this inventiveness step is regularly not properly tested or applied, leading to many many patents being granted in the US that are actually very obvious logical application of existing ideas.  Many companies have spent huge sums of money trying to overturn such patents but although a granted US patent can be overturned its is extremely rare that one is.  In many ways the US patent system is more akin to what many people assume about patents over here, if your the first person come up with an idea then you can patent it.  The obvious downside is that many bad patents have been unfairly granted and have unfairly blocked many others from being able to produce products that should never have been protected by patents in the first place.

Commercial Value

If you've got to here then hopefully you have an invention that may be patentable.  The next tests are often completely overlooked at the outset but are also really important.  The first and most important is what will a successful granting of a patent do for you?  Patents cost money.  Sure you can search and file yourself but its incredibly time consuming and like all things legal bringing in an expert, in the form of a patent attorney, is generally a much better route.  Carrying out the searches and filing your patent application through an attorney will cost a few thousand pounds.  You then have a relatively short period of time before you have to decide if you are going to file the patent in other countries throughout the world, which costs more money and if you are filing in lots of countries the translations can become very expensive.  Once you've got your patent you then have ongoing costs each year to patent offices to keep the patent active.  So whatever it is your looking to patent has got to be worth this from a commercial business perspective (if you are put off by the thought of having to spend several thousand pounds with a patent attorney is what your doing really worth patenting at all?).

Also bear in mind getting a patent granted can (and often does) take many years.  It can often come down to luck as to which examiner your patent is assigned to and how long their backlog is (think months / years here) and if they happen to leave who your patent gets re-assigned to.  Talk to your patent attorney, but getting a patent through to grant in say 3 years would generally be viewed as very fast! 4 years, 5 years, 6 years, or even longer is not uncommon especially if objections are raised by the examiner.

Many people and companies file for patents to gain the IP, so that they can then attract investors to help them take their invention forward.  If you've watched a few episodes of Dragon's Den on the TV then it should have become very obvious that investors do not take wild risks and if you want someone to invest in your company or idea they need to feel secure in doing this.  If you have a patent for a great idea that can be commercialised it will often provide exactly this protection for an investor so you are a stage closer to getting them to part with that all important cash (you'll probably have also noticed that although investors are sometimes not very nice people they tend to only want to do business with nice people!).

Another misconception is that once you have a patent no-one else can copy your idea.  Well although legally they can't, the State won't actually stop them.  If someone infringes on your patent it is down to you to stop them, typically by spending large sums of money with lawyers and using the courts.  If the infringer is a large company, or several companies infringe your patent you need to be able to fund the legal action.  If your invention is commercial enough then these legal steps will not be a problem as you'll find the money, win the case and eventually get much of it back.  However if your fighting a big company which has a lot of money to string out your legal action for a long time is it actually worth it?  Is the idea your looking to patent commercial enough to justify all this.

There are many smaller companies out there that view patenting as a waste of time and money and prefer to direct their resources, attention and money at being the first to market and first to innovate.  Should you be one of them rather than spending what could be a lot of your time and money protecting your idea?

You may be looking to patent your invention to then licence it to another company to produce.  For 12 months from filing your patent you have international patent protection and you want to use the first 10 months of this to make sure your idea can be commercialised before having to decide on which other countries to also apply in and giving your attorney a month or two to carry out the necessary work. You have to move bloody fast! If you are approaching big companies they will often take a couple of months to get back to you before you can even show them the invention and start negotiations. If your doing this 6 – 8 months in its too late as they know you have no time and will often play for time to force you into a bad business position, or simply in the hope you wont complete the patent when the 12 months is up.  Whilst you can't tell anyone about your invention before you file you patent application you can get round this by asking companies (such as us) to sign non disclosure agreements and start work on the development of your product ahead of time so you hit the ground running the moment the application is filed.

If the above hasn't put you off then maybe you do have that elusive brilliant idea.  Book an appointment with a patent attorney (any good attorney should give you a first appointment for free) and get cracking!  For more information there are many great web resources on filing for patents which we won't try and re-create here.

A few patent help tips

When researching an invention you'll often need to read through existing patent applications to make sure your idea is new.  Patents can be many pages long and horribly worded, but generally its only the first primary claim in a patent that is critically important.  The rest will simply be lesser claims the patent can fall back to should the higher claims ever be overturned or rejected by the patent examiner.

Where there could be ambiguity in a claim the patent description is able influence the claims and may therefore have been deliberately written as such, so look through the description to see if it tries to provide this.

Patent claims are not exclusive.  Just because a claim describes one way of doing something doesn't imply that it couldn't be done differently.

Patents include a detailed description which is generally intended to provide an explanation / instructions of how the invention could be utilised.  Bear in mind that this only needs to cover one specific use of the invention and doesn't exclude the claims being used in other ways.

Claims generally relate to an Apparatus (equipment designed or assembled for a particular purpose) or a Method (a way of doing something), and often patents include both with the intention that the method claims can be fallen back on should the apparatus claims be rejected. (This is also why using a good patent attorney is so important, once you get into the nitty gritty of potentially fighting objections with a patent examiner, the wording of your claims and fallback claims can suddenly become critically important in stopping your expensive and now fixed application becoming worthless – claims can be removed and even reworded slightly at examination if needed to try and solve issues raised by the examiner, but you can't add in new claims or ideas).

Interestingly one of the aims of patents is to promote invention and innovation.  Whilst blocking other companies from copying ideas may seem to do the exact opposite, the natural reaction when faced with a patent is to try and work around it.  We've worked with several companies and done exactly this, having been briefed with a product they want to produce and the existing patent seeming to block it.  There is almost always a way round a patent but the  aim is to try and do it in a way that leaves you with a commercial product which still serves its purpose in an affordable way (great patents block this by protecting against all the economical ways of achieving the same thing).

Filing a patent application doesn't mean that any searching will be done. All that happens is the application is filed and given the once over. It will then be examined in detail by a patent examiner but even if the patent is awarded it can be overturned at any time if prior art can be proved.  If you want your application to have a level of commercial value (if you're doing it for IP purposes) you need to also do a search.  However even then bear in mind that searches are not necessarily as skilled as you may expect and patent office searches will not necessarily search anything other than previous published patent applications and filings.  If you are just filing in the UK then a UK patent office search will of course be the best route, but if you plan to file internationally bear in mind that searches carried out for EU or international applications will often be significantly more detailed and thorough.  The reason is that there are far more EU patent examiners and this tends to mean that individual examiners are able to be much more knowledgeable in their specialised areas.  You can pay for third party searches but whilst these are often very expensive (£1000 and upwards)  they are not necessarily much better than the search the UK patent office provides unless you spend a lot of money (the cost of the UK search is subsidised).  The thing to always remember about searches is that its very hard to quantify a search result.  Just beacuse a search didn't find prior art doesn't mean that a different search won't.

There is no point giving the patent attorney too much information. They need to write the patent from their knowledge and experience, not from your bad attempt. Here's what should be ideally provided:-

  • Drawings and descriptions of the drawings to get the idea across.
  • The advantages of the invention.
  • Modifications that are possible to the invention.
  • Crucial points and optional points.
  • Don't include loads of existing patents – they'll only have to read them and that will therefore cost more. One or two might be helpful though.

That said don't ever just assume your patent attorney is the expert on what you are trying to patent.  They are the expert in writing the patent and negotiating with examiners, but you are the expert in your invention and how you want to commercialize it.  Always always check your attorneys work to ensure it still provides the protection you want and hasn't opened up a new hole to the patent being worked around by a competitor.  This can be especially important if you end up needing to adjust wordings at examination – personally check any new claim wordings with the same obsession as when the original application was created!

 

USEFUL?
We benefit hugely from resources on the web so we decided we should try and give back some of our knowledge and resources to the community by opening up many of our company’s internal notes and libraries through mini sites like this. We hope you find the site helpful.
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