Frequently Asked Questions: Patents
What are patents and what do they protect?
Patents protect technical inventions in all fields of technology. They are valid in individual countries, for a specified period. Patents give holders the right to prevent third parties from commercially exploiting their invention. In return, applicants must fully disclose their invention. Patent applications and granted patents are published, which makes them a prime source of technical information.
In the most European jurisdiction patents are granted only for inventions that are new, involve an inventive step and are industrially applicable. An invention meets these requirements if it:
- was not known to the public in any form,
- is not obvious to a person skilled in the art, and
- can be manufactured or used industrially.
Discoveries, mathematical methods, computer programs and business methods as such are not regarded as inventions. Surgical and therapeutic procedures, diagnostic methods and new plant or animal varieties are completely excluded from patentability.
The Patent Offices do not recognize inventions whose commercial exploitation would be contrary to 'ordre public' or ethical principles. These include, for example, means of cloning human life or the use of human embryos for commercial or industrial purposes.
What is meant by the invention having to be new in order to be patentable?
The invention may not form part of the prior art at the moment the (first) patent application is filed. The prior art is defined as all information which has been made available to the public anywhere in the world. An invention which is known for instance on internet or in another country is therefore no longer new. Very important is that the novelty of your invention can also be nullified by your own actions. A patent application, in which the invention is described, must be filed before you go public with your invention, for instance in order to approach outsiders. It is worth noting here that the product to be protected and/or the method to be protected does not have to be wholly new: the invention to be protected can be an improvement to an existing product.
What is meant by the invention having to be inventive in order to be patentable?
The invention may not follow from the prior art in a manner which is obvious to a someone working in the field (“skilled person”). This assessment is not always that simple and requires expertise and knowledge of existing case law and other factors.
What is meant by the invention having to be capable of industrial application in order to be patentable?
The invention is capable of industrial application if it can be made or used in any kind of industry, including agriculture. An exclusive right does not cover the private use of the invention.
I have an invention. How can I find out if something similar already exists and has been patented?
One way of checking whether or not your product or idea has already been invented and patented by somebody else conduct a patent search on the databases of the relevant Patent Offices.
What information is needed to file a patent application?
Before coming in to speak with us, it is helpful if you spend some time preparing one or more of the following:
A description of your invention and if applicable, some drawings or a flow chart that convey how it works. It is also helpful if you know what has been done before in the area, for example what is common practice in the industry. A quick search for relevant patents on the internet can help with this. You should also consider the problems with any existing products or solutions in the market place and consider how and why your invention solves those problems. If you are aware of any equivalents to features or components of your invention you should note these down.
If there is more that one person that has contributed to the invention it is helpful to have each person's details and an explanation of the contribution they made. It is also important to let us know whether individuals were employed or contracted to help and whether they were contracted personally or through another company. That way each inventor can be correctly acknowledged in the application and have the invention and rights in the invention assigned correctly.
If you would like further information, you can arrange a no obligation consultation with one of our patent specialists today.
What are the patent claims?
With the patent claims you determine the scope of protection of your patent. They should therefore formulate the claims very precisely; all technical features to be protected must be specified exactly in the claims. Examples can be found at the end of the leaflet for patent applicants or in patent documents.
What is the description of the invention?
An essential part of the patent application is the description of the invention. The description should begin with:
- the name of the invention you used in the application form, and
- Information on the technical field to which it belongs.
The description should show and contain concrete information:
- the known state of the art,
- the problem underlying the invention (defects in the state of the art),
- solving problems and improving the known state of the art (i.e. the invention itself, namely which technical problem was solved by which means),
- at least one example of the invention,
- the advantages obtained with the invention.
If you file parts of the description later, your filing date will be postponed to the date of receipt of the parts of the description.
What happens in the patent examination procedure?
The examination procedure only begins once you have filed an "application for examination of the patent" and paid the application fee). Your invention will then be examined for patentability (novelty, industrial applicability and inventive step). If your application does not meet these requirements it must be rejected.
If your invention meets these patentability criteria, the examiner will grant a patent.
A reference to grant appears in the patent gazette and a patent specification is published.
If no objection is filed, the patent becomes legally valid and can be valid for a maximum of 20 years.
Can I discuss details of my invention with a potential investor before filing a patent application?
It is important to file a patent application before publicly disclosing the details of an invention. In general, any invention which is made public before an application is filed would be considered “prior art ” (although the definition of the term “prior art” is not uniform at the international level, in many countries, it refers to any information which has been made available to the public anywhere in the world by written or oral disclosure before the filing date).
In countries which apply the above definition of the term “prior art”, an applicant’s public disclosure of an invention prior to filing a patent application would prevent him/her from obtaining a valid patent for that invention, since the invention would not comply with the novelty requirement. Some countries, however, allow for a grace period – usually between 6 and 12 months – which provides a safeguard for applicants who disclosed their inventions before filing a patent application. Further, the novelty criteria may be interpreted differently depending on the applicable law.
If disclosing your invention before filing a patent application is unavoidable – for example, to a potential investor or a business partner – then any disclosure should be accompanied by a confidentiality or non-disclosure agreement. It should also be kept in mind that applying early for patent protection will generally be helpful when seeking financial support to commercialize an invention.
Why should I patent my invention?
- Exclusive rights: Patents provide you with an exclusive right to prevent or stop others from commercially exploiting an invention for twenty years from the date of filing of the patent application.
- Return on investments: Having invested a considerable amount of money and time in developing innovative products, through exclusive patent rights, you may be able to establish yourself in the market as the pre-eminent player and to obtain higher returns on investments.
- Opportunity to license or sell the invention: If you choose not to exploit the patent yourself, you may sell it or license the commercialization of the patented invention to another enterprise, which could then be a source of income for your company.
- Increase in negotiating power: If your company is in the process of acquiring the rights to use the patents of another enterprise through a licensing contract, your patent portfolio will enhance your bargaining power. That is to say, your patents may prove to be of considerable interest to the enterprise with which you are negotiating, and you could enter into a cross-licensing arrangement where, simply put, your enterprise and the other agree to license respective patents to each other.
- Positive image for your enterprise: Business partners, investors and shareholders may perceive patent portfolios as a demonstration of the high level of expertise, specialization, and technological capacity within your company. This may prove useful for raising funds, finding business partners and raising your company’s market value.
Are utility models and trade secrets alternatives to patent protection?
In many cases, where an enterprise has merely improved an existing product and the said improvement is not sufficiently inventive to be deemed patentable, utility models may represent a good alternative, if available in the country in question. On occasions, it may be advisable for your company to keep its innovations as trade secrets which requires, in particular, that sufficient measures are taken to keep the information confidential.
Another alternative strategy could be to ensure that no one is able to patent your invention by disclosing it (commonly known as defensive publication), thereby assuring its place in the public domain. However, you should carefully reflect on using this strategy, since if you disclose your invention before filing a patent application, you will severely limit your possibility to obtain patent protection.
Can Computer software be protected as a patent?
The term "software" is considered to be ambiguous, because it may refer to a program listing written in a programming language to implement an algorithm, but also to binary code loaded in a computer-based apparatus, and it may also encompass the accompanying documentation. So in place of this ambiguous term the concept of a computer-implemented invention has been introduced.
A computer-implemented invention is one which involves the use of a computer, computer network or other programmable apparatus, where one or more features are realised wholly or partly by means of a computer program.
Under the EPC, a computer program claimed "as such" is not a patentable invention (Article 52(2)(c) and (3) EPC). Patents are not granted merely for program listings. Program listings as such are protected by copyright. For a patent to be granted for a computer-implemented invention, a technical problem has to be solved in a novel and non-obvious manner.