Patents

What is a patent?

A patent is a legal monopoly lasting 20 years which covers an invention. Each invention is a new idea capable of being made or used in industry and involving a non-obvious inventive step. Patent protection is enforceable by law and gives the inventor the right to prevent others from manufacturing, employing or selling the invention without the permission of the inventor.

A patent is territorial and must be applied for. Unlike, copyright it is not an automatic right. Only once a patent granted by the Government of the Country in question does the inventor have the rights as described above. A patent can be cancelled at any time if it is found to have been wrongly granted.

Is my invention patentable?

In order for an invention to be patentable it must fulfil the following conditions:

Novelty: An invention is not patentable if it has been publicly disclosed before a patent application is filed; even an inventor's own prior publications can count against a patent. The public disclosure can take the form of a paper, poster, verbal presentation (or even a conversation which has not been stipulated as confidential), listing on the internet or a public demonstration. (See Confidentiality).

Inventive Step: The invention must not be obvious to someone with a good knowledge of the area (such a person is described as 'skilled in the art').

Industrial Use: The invention has to encompass some new idea capable of being made or used in industry.

Under UK Patent Law the following are not patentable (but some may be patentable under the laws of other countries):

• Scientific discoveries, theories or mathematical models
• Aesthetic creations e.g. literary, dramatic or artistic work
• New animal or plant varieties
• Method of medical treatment or diagnosis
• Some computer software (dependent upon its nature) or the presentation of information
• Methods for performing a mental act, game or doing business
• Inventions which are offensive or immoral.

The inventors are determined by the intellectual contribution made to the inventive steps claimed within the patent application. This is not like authorship of a publication, where an author is included if they have been involved in the work. All true inventors must be included in a patent application.

Is my invention patentable?

In order for an invention to be patentable it must fulfil the following conditions:

Novelty: An invention is not patentable if it has been publicly disclosed before a patent application is filed; even an inventor's own prior publications can count against a patent. The public disclosure can take the form of a paper, poster, verbal presentation (or even a conversation which has not been stipulated as confidential), listing on the internet or a public demonstration. (See Confidentiality).

Inventive Step: The invention must not be obvious to someone with a good knowledge of the area (such a person is described as 'skilled in the art').

Industrial Use: The invention has to encompass some new idea capable of being made or used in industry.

Under UK Patent Law the following are not patentable (but some may be patentable under the laws of other countries):

• Scientific discoveries, theories or mathematical models
• Aesthetic creations e.g. literary, dramatic or artistic work
• New animal or plant varieties
• Method of medical treatment or diagnosis
• Some computer software (dependent upon its nature) or the presentation of information
• Methods for performing a mental act, game or doing business
• Inventions which are offensive or immoral.

The inventors are determined by the intellectual contribution made to the inventive steps claimed within the patent application. This is not like authorship of a publication, where an author is included if they have been involved in the work. All true inventors must be included in a patent application.

The patent process and costs

The Intellectual Property Management (IPM) will ask a patent agent to draft and file a patent application on our behalf. Drafting the patent involves writing the specification of the invention - the description and the claims, and requires considerable input from the inventors(s). A patent specification is a legal document which can determine the strength of the patent eventually granted (and indeed if it is granted). Employing a patent attorney may increase costs in the short term (the costs are borne by the Intellectual Property Management), but it is likely to provide a more secure patent.

What do we need from you?

• Detailed information from you about the invention (including a completed form about the products/processes known before your invention.
• What problems, if any, you were addressing when you made your invention and what are the disadvantages of previously known products/processes.
• The advantages of your invention and the features giving rise to them.
• At least one way, in detail, to implement your invention.
• How it could be used/applied.
• Modifications and variations which could be made. Drawings of mechanical inventions are also very useful.

When to contact us

As patents can only be obtained for inventions which have not been made public, we ask you to contact us as early as possible. We are happy to discuss things at the ideas stage before you have a lot of data. See Protecting your IP

UK Patent Filing

An application for a UK patent must be filed at the UK Patent Office. After filing, we have a year in which to develop the ideas, produce further data and investigate its commercial possibilities before we have to do anything more.

At filing we will have made a request for a prior art search and paid the appropriate fee. The UK Patent Office will search for documents showing similar inventions and then issue a search report which lists any relevant documents from around the world that they have found in reference books, scientific journals or other patents. This search gives an early indication of how likely we are to obtain a patent.

PCT Application

There is no such thing as an 'international patent'. However, it is possible to file an international patent application (also called a 'PCT application') which, for a certain period of time, takes the place of the many individual foreign patent applications that would otherwise be required for protection abroad (called the International Phase). At the point of filing a PCT application, an international search is also requested.

These PCT applications are made possible by the Patent Cooperation Treaty (PCT), which is an international agreement administered by the World Intellectual Property Organisation (WIPO) and covers most of the major industrial countries of the world.

Publication

The international patent application will be published 18 months from the priority date (initial UK filing). Publication can only be prevented by withdrawing the international patent application no later than about three weeks before the expected publication date.

Note that the PCT system does not examine patent applications fully and it does not grant patents. However, the PCT system does enable a delay in the very expensive step of filing many individual foreign patent applications, and it does provide some information for assessing the prospects of actually obtaining granted patents, and their potential scope of protection before major costs are incurred.

Entering the national/regional phase

The PCT application itself will never become a patent. Instead, the PCT application must be taken into the National/Regional Phase in those countries/regions where patent protection is to be sought. This must be done by the appropriate deadline. Each of the resulting individual National/Regional Phase patent applications is then pursued, before the respective patent offices, in order to obtain individual granted foreign patents.

The deadline for entering the National/Regional Phase is 30 months from the priority date (UK patent filing). In general, we will need to decide in which countries/regions we wish to proceed well before the deadline. Note that, if desired, it is possible to enter the National/Regional Phase 'early', before the deadline.

The requirements for entering the National/Regional Phase are different for each country/region, and usually involve appointing a foreign attorney as a representative, filing a few formal documents, paying certain official fees and submitting a translation of the application into a local official language if necessary.

Further examination

When the PCT application enters the National/Regional Phase, it is handled according to the usual treatment of patent applications in the countries or regions involved, and all of the local time limits, laws, rules, and procedures must be observed. Some countries/regions, such as the USA and the European Patent Office, may perform their own supplementary search before examining the application.

Patenting Costs

The cost of drafting and filing the patent specification at the UK patent office is approximately £4,000 - £5,000. The cost of filing a PCT application, including the official fees, is approximately £5,000.

The cost of entering the National/Regional Phase in a particular country/region is in the range £1000-£4000, plus the cost of preparing a translation into a local official language if necessary.

Annual renewal fees must be paid to keep the patent in force in each country/region in which it has been granted. These fees increase as the patent gets older.

All patents will normally be paid by the Intellectual Property Management if we are working with the inventor to commercialise the technology. The Technology Transfer Assessment Group (TTAG) is responsible for authorising IP expenditure and the IPM will present each case to them.

Patent costs are taken out of gross income from exploitation in line with UoR IP code.