An Introduction to Patents by David Morgan*
Based on an article by David Morgan Introduction to Patents - Protecting your good ideas published in International Gas Engineering and Management July/August 2003 Volume 43 Issue 6
A patent provides protection for the inventor and could be the only protection by which a commercial return on an invention can be secured. Without it anyone can take and exploit your idea.
In the case of patenting in the UK, there are four basic steps to secure patent protection. These are drafting and filing the application, requesting a patent office search, requesting the patent office to examine the application and overcoming any objections resulting from the examination.
In the first step a patent specification is drafted and filed in the UK patent office at Newport. Subsequent grant of the patent will then, in theory, allow the patentee to stop competitors using the invention.
Whether or not the patent does this effectively depends on the skill with which the patent has been drafted and on whether the effective allowed scope of the patent embraces the alleged infringements.
Scope of the invention
Within a year of filing the application the applicant must file a so-called ‘claim’ or ‘claims’, which are clauses defining the scope of the invention. Initially at least these should be drafted with as wide a scope as possible to catch all potential infringements. However the scope may have to be cut down subsequently by amendment as a result of relevant prior art also falling within the scope of the claims.
Also, within a year of filing the application, the applicant must request the UK patent office to conduct a search through its back catalogue of patent specifications and articles to locate any prior art documents of relevance. The patent officethen sends a search report together with copies of any relevant documents to the applicant. These documents may be so relevant that the applicant may decide to abandon the application to avoid further unnecessary expense.
Alternatively he may amend the claim to distinguish the invention from the prior art documents. However any amendment must be based on material already present in the specification. The inventor is not permitted to add new material to provide the distinction.
Patent published
Eighteen months after filing the application, it is automatically published by the UK patent office. The applicant is entitled to any damages for infringement carried out after the date of publication but he cannot sue the infringer until the patent has been granted.
One interesting fact here is that information scientists have determined that in virtually any technical field, published patent applications or patents comprise about 90% of all relevant publications, whereas published papers comprise no more than 10% of all publications. So if you are searching a filed for prior art you simply must search the patent library otherwise you will miss 90% of the art.
Within six months of the publication of the application the applicant must request the patent office to examine the application. In this case the specification is referred to a patent office examiner who will examine the invention to determine whether the invention is new, i.e. is distinguished from the prior art cited by the patent office in the search report, and if it is so distinguished whether that distinction is inventive, i.e. is not just an obvious variant of the known art.
If the examiner considers that the invention is not new and/or is not inventive, he will issue an objection to grant of the patent and this objection must be overcome either by argument or by a suitable and agreed amendment to the claim if the patent is to proceed to grant.
Assuming that there is no objection or any objection is overcome, the patent application proceeds to grant. Only at this stage can the patentee take action against infringers, including obtaining an injunction to prevent them from infringing the patent and also claiming damages back to the date of publication of the application.
Patenting not cheap
Patenting inventions is not cheap in the UK particularly if a large established city centre type firm of patent attorneys is used to carry out the professional work. However patent office official fees are very reasonable. The patent office charges no fee for filing an application and its fees for requesting a search and examination are £200. On the other hand the professional fees may comprise between £1000 to £3000 plus, for preparing and filing the application and requesting the search and examination and possibly another £500 for overcoming objections. Against these costs must be set the potential loss of profit in not protecting an invention.
Patent protection may also be sought overseas and with a European patent application it is possible to designate over 20 countries in one application including the UK, although at the end of the process patents are granted in each individual country designated.
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