In the latest IP Doctor article, IP lawyer Niall Head-Rapson of McDaniel & Co answers your questions on Patents

What is a Patent?

A patent is an IP right covering new inventions. Patents generally have a life span of 20 years from the date of the patent application. Patents cover concepts, NOT what something looks like. By having a patent, the owner can take action to prevent others from using his invention.

The justification for having a patent system is to encourage inventors to disclose their inventions, and how they work, in exchange for a limited monopoly over the invention itself. After the patent has expired, the inventions are free for all to use which, in turn, could aid improvements and developments in that industry.

Examples of well known products covered by patents which have now expired are the Dyson vacuum cleaner and the Workmate workbench.

What are the requirements for a valid patent?

A patent must be

  • New
  • Inventive
  • Capable of industrial application
  • Not one of the excluded areas

An invention will be new if it has not been done before, anywhere in the world, prior to the date you apply. It is therefore important that before you apply for a patent, you take steps to ensure your inventions are only discussed under confidential conditions. It is also advisable that if you are thinking of patent protection, you consult a lawyer at an early stage. The last thing you want is for your patent to be invalid through your own actions.

For a patent to be inventive it must have what is known as an ‘inventive step’. The invention must not be obvious. The test is “the man skilled in the art” who is a hypothetical person (or persons), used by the Courts, and said to have common general knowledge of the sector of the invention concerned. They are also presumed to have no inventive capability. If the invention would be obvious to that person, then the patent will fail on these grounds.

To be capable of industrial application, a patent must simply be capable of being used in any kind of industry. It does not actually have to have been applied industrially.

There are various exclusions from protection which include discoveries, scientific theories, schemes, rules and methods for performing mental acts, computer programmes and the presentation of information.

Do I need to have a patent to protect my inventions?

Sometimes, businesses try to protect their inventions by keeping ideas and methods a trade secret and ensuring no-one else knows about them. For example, the coca cola recipe is a strictly guarded trade secret. Also see the BBC website article in respect of Irn-Bru at http://news.bbc.co.uk/1/hi/scotland/8066968.stm Attempting to protect your ideas, however, by keeping them secret, may be unsuitable. For example, a newly improved mechanical device, such as a folding ladder, is unsuitable for protection this way because as soon as one ladder is sold, the invention is seen.

Even with inventions which could be protected by way of keeping them secret the protection is still relatively fragile and requires stringent in house procedures to ensure the risk of the information becoming public is minimal. This will not however prevent other businesses using similar techniques; they just will not know yours. A patent would give a monopoly over that invention however arrived at.

What does it mean when a product is advertised as “Patent Pending?”

This simply means a patent has been applied for but it does not mean that the patent is going to be granted. The existence of a patent application, even if unlikely to result in the grant of a patent, can still have a deterrent effect. Those who seek to use the invention risk being sued when the patent is granted. It can also give the impression to potential customers that the product is in someway special or unique. It is, however, an offence to represent that a product is a patented product, or the subject of a patent application, when that is not the case.

Can I get patent protection in different countries?

Yes. Patents are territorial in nature which means they are granted on a country by country basis. At present, there is no European wide patent, covering all 27 member states, such as for trade marks and registered designs. There are however procedures in place to allow you to make one application to cover a number of European countries in that application. The result of a successful application is a bundle of individual patents in different countries at a lower cost than individual applications to each country.

You should seek advice from a lawyer on the best ways to protect your inventions and the methods of extending that protection abroad.

Article first printed 23/09/2009