Patents

What is a patent?

A patent is a monopoly right in an invention. Patents generally cover how things work, what they do, how they do it, what they are made from of or how they are made. A patent can cover not only such things as an electronic circuit, a chemical product, heavy machinery or a control system, but also small household items such as a tin-opener. It can also cover processes such as a new or improved process of making a new material or a new method of navigation. In many situations, patents can also cover computer implemented and software-based inventions.

A patent is a right can be used to restrict others from, amongst other things, making, selling, importing or using an invention without permission.

Patents are national rights.  A UK patent can generally only be used to restrain commercial activity in the UK. To restrain activity abroad, you must have a patent in the relevant country.

What is patentable?

What is, or is not, patentable is determined by national law. However, all patent systems, to some extent require:

• novelty;

• inventive step;

• industrial applicability.

In addition, many patent systems, such as those in European countries have exclusions from patentability for certain fields.

Novelty and inventive step

To be patentable, an invention must be novel and also involve an inventive step at thetimeof filing. In the UK and Europe, the requirement of novelty is absolute. The invention must not have been published –made available to the public in verbal, written form, by use or in any other way – anywhere in the world before the initial patent application is filed.

A disclosure made under a duty of confidentiality is not generally considered a publication for the purposes of novelty.

Publication depends on whether the public is free and able to identify how the invention works. 

For an invention to have an inventive step in Europe, it must not be obvious to a skilled person having regard to the state of the art. In other words, to be patentable, an invention must not be obvious to someone who is skilled in the particular technology of the invention in the light of everything that was publicly known before the date on which the patent application was filed. 

The skilled person is assumed to have read all the relevant materials available but is not expected to be imaginative or inventive. An invention is obvious only if it follows plainly or logically from what has gone before. The nature of the problem solved, how the problem had existed, whether large numbers of people were seeking a solution and whether alternative solutions are available are all relevant when assessing inventive step. Only the prior art teachings available before the invention are considered for inventive step in Europe. Hindsight is an unfair test and is not applied.

Industrial applicability

This criterion is usually used to exclude ‘impossible’ inventions such as perpetual motion machines. In this context the term ‘industry’ includes agriculture.

Excluded subject matter

There are several areas of subject matter which UK (and European) patent law specifically excludes from being patentable. These are:

• a discovery, scientific theory or mathematical method;

• a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;

• a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;

• the presentation of information;

• any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a micro-biological process or the product of such a process;

• methods of treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body – products, substances or compositions for use in any such methods are patentable;

• inventions where the commercial exploitation of which would be contrary to public policy or morality.

For all but the last three areas, the exclusion only relates to the extent that the patent ‘relates to that thing as such’. Taking a mathematical method as an example, it has always been possible to obtain a patent for a non-obvious invention which uses a mathematical method to achieve an advantageous result. The use may, for example, be in the use of a device or in a process, or embodied in the final form of a device. In summary, a patent application for a mathematical method would be rejected but an application for a control system that used a mathematical method would most likely be accepted.

Computer implemented inventions

For many years there has been a misconception that software-based inventions are not patentable. However, there have been many tens of thousands of patents granted in Europe and in other countries covering computer software.

Part of the problem is that computers and software are often central to other categories of invention that are excluded from patentability. For example, a computer implemented business method should be excluded under exclusions for being a computer program and for being a business method.  However, a computer implemented image processing system that makes a technical change/improvement to an image should avoid excluded subject matter objections because it is said not to be a computer program as such.

If the end result of a computer implemented invention does not fall into one of the other excluded categories such as a mental act, presentation of information or method of doing business then the invention may be patentable in Europe – subject to novelty and inventive step.

While patent law in Europe is based on common concepts, its implementation has often differed. This is particularly the case for granting patents for computer implemented inventions. Many inventions fall into the definition of a computer implemented invention and are generally agreed to be patentable – for example, telecommunications systems, control systems, etc.

There are opponents of ‘software patents’, particularly the supporters of the open source software license model who argue that patents covering software are damaging to innovation and competition. This argument has little to do with software per-se and there has been a notable lack of evidence showing specific damage to the software field. It can in fact be argued that patents are one of the few ways a small innovative company can protect its ideas from the bigger players in the market. It is relatively common for the smaller companies to be bought specifically for their IPR and there is as much evidence that patents are beneficial as there is to the contrary.

Steps in obtaining a patent

Although individuals may file a patent application applicants are strongly advised to obtain professional advice since patent procedure is not simple and mistakes can result in not getting the best protection for an invention.

Many applicants who do not employ professional advice find that their granted rights are not adequate for their needs or that it is too easy for a competitor to design around them.

A patent application must include:

• a technical description – called the specification– of the invention that is clear and complete enough for the invention to be reproduced by a person skilled in the technology of the invention. The description does not limit the scope of protection and is merely illustrative; and 

• one or more claims that define, in words, the matter for which protection is sought. The claims are what limit the scope of protection and determine whether someone infringes or not. The claims are also what are evaluated for novelty and inventive step. If claims are too broad, they will not be novel or inventive – if they are too narrow, a patent would be granted for something that is easily designed around and therefore has limited value.

Patent applications are normally subjected to a prior art search and examination of novelty and inventive step by the respective national patent office.  Depending on the particular patent office, the search and examination may be done  separately or it may be combined.

The search is based on the claims and identifies any prior art published prior to the date of filing the patent application that the patent uffice considers falls within the scope of the claims.

At approximately 18 months from filing the application, it is published by the Patent Office (copies are available at http://worldwide.espacenet.com) along with the results of the search. This is the first time the contents of the patent application are available to the public. From this point onwards, details of the prosecution of a patent application are publicly available.

During examination, a patent office Examiner considers whether or not the application meets all the requirements of the law for example, is it new? Is it inventive? Is there sufficient disclosure? The applicant is advised of any objections and is given the opportunity to amend the application to address them. At the end of this process and, assuming all has gone well, a patent is granted.

After grant, an annual renewal fee will have to be paid to keep the patent in force – subject to a maximum term, normally of 20 years from the filing date.

At grant, the specification and claims are published again and it is this version that is relevant for infringement. If you look at published applications – their publication number ends with an A – the claims may look incredibly broad and unsupportable. However, for infringement purposes it is only the claims of the granted application – their publication number ends with a B – that is relevant. The claims will most likely have evolved and narrowed during examination.

The average length of time between filing a patent application in the UK and the decision by the Patent Office to grant or refuse it is 3 to 4 years.  Under the Patent prosecution highway, this can be reduced to as little as 12 to 18 months (to receipt of an indication of allowance which is sufficient for the USPTO, for example, to consider the application under the PPH system).