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Patents and confidential information

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Prior artPrevious posts in our “general introduction to IP” series have provided an overview of different Intellectual Property Rights and have taken a closer look at issues arising in the area of Copyright and Designs. In this article however we are going to take a look at patents, protecting your invention and confidential information.

What is a patent?

A good starting point might be to ask what a patent actually is? Patents are legal rights that enable the owner of the patent to stop someone else from making use of an invention.

It’s important here to recognize that this is a right to prevent others from using your invention and not a right that necessarily gives you the right to use your own invention! This may sound a little strange. Surely, you might ask, if I have a patent then I can use my invention?

The answer is, not necessarily. Many patents actually relate to inventions that are improvements over an existing invention. If that existing invention is covered by a granted patent that is in force then you may find that you need permission from the earlier rights holder to use your invention because your improvement naturally uses the protected parts of their invention.

It should also be recognized that patents are territorial rights, a patent is required in each country of interest if protection is required in multiple countries.

When we refer above to “making use of an invention” we should note that patents grant their owners exclusive rights to prevent others from making, using, selling, importing or distributing the patented invention without permission.

An invention may reside in a physical product (e.g.  a new type of door lock, a new fuel injector), a process such as a method of manufacturing something or a control system (e.g. a computer control system for a braking system). Most inventions are improvements on something that has come before and relate to technical advances that solve technological problems.

“Is it secret? Is it safe?”

These words may have been spoken by Gandalf the Grey in Lord of the Rings to Frodo in respect of the One RingTM but they have relevance to the world of patents (bear with me here….).

There are many hurdles to overcome before your patent application reaches the grant stage but it is extremely important not to publicly disclose your invention, for example by including details on your website, before you’ve filed a patent application. Any disclosures that you make become part of the “prior art” and could be cited against you when your patent application is examined by the Patent Office. So, in a worse scenario your own disclosures could preclude you from getting a patent through to grant.

It is also worth stressing here that public disclosures mean any disclosures be they to a company, at a conference, on the TV, in the newspapers, online or even to an individual!

So, to return back to Gandalf’s comment, you should be asking yourself whether your invention has remained secret in the period leading up to filing your patent application. Remember to Keep it Secret, Keep it Safe until you can speak to your patent attorney and decide on the best way to protect yourself.

Now, it should be acknowledged that in some circumstances you may find yourself needing to disclose information to someone outside of your company, e.g. to an investor, to a developer etc. A confidentiality arrangement is vital in such circumstances but if possible, think about filing a patent application before you make the disclosure.

“But I’ve not built a prototype yet so I can’t patent it”

You don’t need to have built a prototype or validated your new process before you can apply for a patent application. As long as you’ve worked it out in sufficient detail that you could describe it to a skilled person in enough detail to allow them to reproduce the invention then you can consider filing a patent application.

What hurdles are there to getting a patent granted?

The invention described in a patent application must meet three main requirements in order for a patent to be granted: it needs to be novel, inventive and have industrial applicability.

Novelty and inventive step are judged with respect to prior known systems, products or methods – the ‘prior art’. Patent applications are therefore examined by Patent Office Examiners to determine whether they meet these criteria in light of any relevant prior art.

Novelty – A patent specification will contain a series of legal statements, the ‘claims’, which define the scope of protection. If a claim contains, say, three features (A, B and C) then that claim is regarded as having novelty if there is no single document in the prior art that discloses the same combination of features A, B and C. Novelty is assessed against any disclosures by anyone (the patent applicant or a third party) anywhere in the world – although some territories, such as the USA, have slightly different approaches for assessing novelty.

Inventive step – If the prior art only includes a document that discloses features A and B, then a claim  to A, B and C has novelty. The examiner then has to consider if the missing feature C makes the claimed invention inventive or if it would be obvious to a skilled person to add that feature to the known combination of A and B based on any disclosures that are already known in the technical field in question.

Industrial applicability – the invention must be capable of use in industry.

In many territories around the world, including the UK and Europe, certain types of inventions are more difficult to patent than others. Such inventions often relate to computer implemented inventions and business methods.

“But I’ve got a software invention. You can’t patent software”

Don’t believe the hype!

As long as certain conditions are met, patents can be obtained for software inventions (or computer-implemented inventions) – (see also our 5 common misconceptions about software patents post on IPcopy).

It is true that there may be additional issues to consider compared to hardware based inventions and there may be instances where the invention in question falls within a class of subject matter that cannot be patented but this assessment is not necessarily obvious. It should also be appreciated that the approach in other countries (e.g. the US and South Korea) is different to the approach in Europe and the UK. So even if something is unlikely to be patentable here, it may still be patentable elsewhere.

Patents are evil/I’m never going to sue anyone so why bother?

There are many reasons to consider filing a patent application to your invention. The classic use of a patent is to prevent others from using/working the invention described in your patent. However, there are other reasons to consider patents, namely:

  • Patents can be used to raise money from investors. Just think how often the Dragons on Dragon’s Den ask if the product is covered by a patent.
  • They can be important in Licensing and M&A proceedings
  • They can be a deterrent to competitors
  • They can control your supply line. Imagine you develop a new product and sub contract for the provision of certain components or parts that you’ve developed as part of the product. Your sub-contractor may be tempted to commercially exploit the components they’ve worked on but if you have a patent to the parts in question you can control what the sub-contractor can and cannot do.
  • They can reduce your corporation tax. The UK’s Patent Box regime will, once it is fully in effect, reduce your corporation tax to 10% from 21% on the qualifying parts of your profits. For this to be an option however you need to have a granted UK or European patent (or a limited number of other granted patents in Europe) and a UK company. If you’re wondering whether Patent Box is worth it for your company then we can put you in touch with people who can give a rough answer to that question within 20 minutes!

So I’ve read this far, what should I do now?

If you’ve go this far then congratulations! My advice at this stage would be to collect all the information you have that describes your invention and then seek out your friendly neighbourhood patent attorney. Most patent firms will probably offer some kind of introductory session free of charge and it would be worth taking that time (usually a meeting of around an hour) to speak to a professional adviser. There should be no obligation to continue if you don’t want to but any such meeting will give you the information you need to make an informed choice about patenting your idea.

The take home suggestion from us is: If you’ve developed something you think is new or cool/solves a problem then go and see a patent attorney for their input. You never know, something might be patentable!

Mark Richardson  27 May 2015

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