THE PATENT PROCESS (1) – FILING A PATENT APPLICATION

There are many reasons individuals, companies and other corporate entities consider filing a patent application for an idea, innovation, improvement or concept. Probably the most common is that the idea is potentially valuable, such that if it were not protected in any way, it would most probably be copied. In the very simplest of terms, what is worth copying is worth protecting.

If it is desired to obtain protection for an Invention (a particular type of idea being usually a new or improved product or process) then filing a patent application is the most appropriate course of action. Furthermore, the filing should usually occur as soon as reasonably practical…the sooner that a filing date is established, the better.

That said, before any patent application is filed, it is necessary (and prudent) to consider the following:

  • SECRECY/CONFIDENTIALITY/NON-DISCLOSURE
    Is the idea/invention still secret, or has it be disclosed in any way and if so, was such a disclosure “confidential” ?
    Legally speaking, for any patent to be valid, the invention it covers must be completely new, in that it has not “been made available to the public” by “written or oral description, by use or in any other way” (s.2(2), UKPA 1977). This is an extremely broad definition of “new”, and without going into the legal complexities of patent novelty, it basically means that any public disclosure (or publication) of the invention, by any means, by any person, anywhere in the world prior to filing a patent application will invalidate it.
    For example…
    – any publication of the idea or invention on the publicly available internet will usually destroy novelty, regardless of whether such publication has actually ever been viewed or downloaded;
    – publishing only on a corporate intranet not accessible to the public will not usually amount to “publication”;
    – articles published in academic journals, or a thesis written as part of a university degree, masters or doctorate, are examples of “publications”, and this is true even if a subscription might be required to access such articles or theses;
    In short, you should be extremely sensitive about disclosing the idea or invention (except to your Patent Agent, of course) before filing a patent application.
  • OWNERSHIP
    Who is/are the inventor/s ? Is it clear, or has the invention resulted from a collaboration of any kind ? Are there any other contractual arrangements which might influence or dictate ownership ?
    The individual or group of individuals who devised the idea or invention must be identified – such persons are the inventor(s), and not only do they have a right to be mentioned on any patent, but the correct ownership of a patent is ultimately determined with reference to the true inventors(s). If the true and proper inventors are not correctly identified from the outset, there is a risk that the patent might be granted to someone other than the true and proper owner, and be therefore vulnerable to attack.
    Identifying the inventor(s) is usually quite straightforward as it will be clear that only a single individual has devised the idea, either for himself or in the course of his duties as an employee. However, more complex situations can readily arise, for example in collaborative and other joint-venture arrangements where employees of two or more companies are jointly involved in a project from which the idea or invention arose.
    Therefore, identifying the inventor(s) is essential for establishing the correct and proper ownership and should always be done before filing a patent application for any invention.
  • SUBJECT MATTER/EXCLUDED CATEGORIES
    Does the invention fall into an excluded category or type of invention ? Does the invention relate wholly and exclusively in that excluded category “as such“, or are there other more technical aspects to the invention ? 
    In the UK and Europe at least, there are  a number of categories of invention which are specifically (i.e. in law) excluded from being considered as patentable:
    – 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;
    (see s.(1)(2)(a)-(d), UKPA 1977)
    Also, methods of treatment or diagnosis of the human or animal body, or surgery or therapy practised on the human or animal body are not regarded as being patentable inventions because they are not considered as being “industrially applicable” (see ss.(4)-(4A) UKPA 1977).
    Any idea or invention which has any important or essential element in one (or more) of the above excluded categories is almost inevitably going to be more difficult to obtain a granted patent for, but by no means are such inventions unilaterally excluded. Many of the world’s software giants have many thousands of granted patents for computer software…so how is this possible ?  The answer is that the inventions covered by such patents don’t relate wholly and exclusively to the excluded category “as such“, that is they are not simply programs which run on a computer in an entirely abstract fashion…they produce a technical end result, or enable the computer to function in a somehow new and improved and thus advantageous fashion, as opposed to merely providing a set of instructions to the computer.
    Again, a couple of examples to explain further:  various image processing algorithms exist to improve and/or compress a digital computer image…the net result of such algorithms is “technical” in that the resulting digital image has either improved quality as compared to the original, or occupies much less physical space on a disk  drive or in memory. These are examples of clearly patentable subject matter, as evidenced by the valuable, but now long since expired LZW (Lempel-Ziv-Welch) digital compression patent, US 4558302, formerly owned by Unisys.
    An example of computer software which was held to be unpatentable was IBM’s proposed “replacement of difficult terms” algorithm in word processing software (see T38/86); merely subjecting a document to computer processing to remove terms or words which the alogirthm considered complex with “simpler” terms was not consider by the European Patent Office Appeal board as a patentable invention.
    Deciding whether an invention would be entirely excluded from patentability on any of the above grounds is rarely straightforward…why not submit a confidential comment on our site or send us an email to get our preliminary (free) opinion ?
  • SEARCHING
    Should you perform a search for what is known as “prior art” before filing a patent application ? If so, what type of search should you perform ? How extensive should your search be ?
    There are three main reasons for considering searching an invention prior to filing a patent application for it:
    (i) To establish whether there are any existing patents or applications which might be infringed if the invention were commercialized (a so-called Freedom to Operate or Clearance search),
    (ii) To obtain some insight as to whether the invention in question has already been published by someone else, and therefore establish, at least to some extent, that the invention is likely to be patentable (commonly referred to as novelty, validity or patentability searches), and
    (iii) To establish what is known as the state of the art; this type of search tends to be much broader than a validity search because it’s aim is more to establish what is known as the patent landscape surrounding the invention, or more simply, to get a feel for who is patenting what in the general field of technology with which the invention is concerned.
    The decision as to whether to search, and if so what type of search to conduct, depends entirely on context and circumstance, and without knowing these, it is impossible to advise whether a particular type of search would be more appropriate than any other, or indeed whether searching would be appropriate at all. (Do of course contact us if you’d like our opinion on any search related issue you might be facing).
    Except for Freedom to Operate/Clearance searches, which are generally always advisable in certain circumstances, we generally advise caution when considering pre-filing Patent or other technical literature searching, because
    – searching in general is a notoriously open-ended process, and it easy to expend large amounts of time, effort and thus cost, either trying to find something that might not exist, or trawling through lengthy search results, the vast majority of which bear little if any resemblance to the invention in question,
    – if you decide to file a patent application, then a formal patent search will be carried out in any event, by a dedicated National or Regional patent office (e.g. UKIPO, EPO, USPTO etc.) search department; usually this validity search is highly competent and focused, and often more reasonable in cost than other searching strategies, and
    – the costs which might be involved in conducting pre-filing validity searches are almost always better employed towards the actual filing of a patent application; remember that at the end of a potentially length and costly searching exercise, you still have to file a patent application for the invention if the search doesn’t reveal anything relevant.
  • ENABLEMENT
    Can the idea/invention actually be physically and/or technically implemented ? Is the idea/invention technically possible ? Can you demonstrate any proof of concept ?
    A time-machine or a perpetual motion machine are undoubtedly great ideas, but if you cannot provide sufficient information which would enable someone (commonly referred to as “a person skilled in the art”) to reduce the invention to practice, then your patent will inevitably fail. Although time- and perpetual motion machines are extreme examples, it is surprising how often we see such “inventions”.
    If there currently little or no indication of how an invention might be implemented, or reduced to practice, or at least partially prototyped, then it could be argued that the invention isn’t currently enabled, and at least some further work should be carried out before any patent application is made. Another example of the enablement requirement, specifically related to patent/patent application documents rather than inventions, arises in the practice of deliberately excluding essential information from the text of the patent/application document so that it makes it very difficult if not impossible to put the invention described in the text into practice. Such practices can have serious consequences for your patent, and “being cute” like this is not generally advised.
    By contrast, if your idea or invention is such that any skilled person could implement it once the idea/invention was disclosed to them, but to the best of your knowledge no-one has done this yet, then don’t hesitate…filing a patent application for the idea should be completed as soon as possible.

 
 
 
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