Patents

Intellectual Property

Patents

1. A patent is a monopoly and is granted for an invention. Because it is a true monopoly it is not a sufficient defence for an infringer to say "I didn't know about this patent right and therefore I ought not to be blamed for infringing the patent". Ignorance is rarely an excuse.

2. A patent is obtainable for an invention. "Invention" means something that is new and non-obvious. For the purposes of judging whether an invention meets these criteria in relation to all of the "prior art" (i.e. all of the information that is already in the public domain), it makes no difference whether earlier knowledge of the invention was acquired from the inventor or from some third party. If it is in the public domain without fetter of confidentiality, here or abroad, the invention is deemed already known, and it will not be possible to obtain a valid patent for it. Accordingly, do not contact "invention brokers" of any sort unless and until a patent application has first been filed.

3. No action for infringement can be commenced until the patent is ultimately granted. However a claimant who is successful in infringement proceedings is usually entitled
a. to a Court Order restraining the defendant from continued sales,
b. to costs, and
c. to damages, and these damages can often be backdated to the date of publication of the application.

4. It takes between 4 to 4½ years from initially filing a patent application with the UK Intellectual Property Office (UKIPO) until, if the application is successful, UKIPO ultimately grants a patent. The procedure involved is rather complex. Essentially, UKIPO conducts a Search to check whether the invention is indeed new and non-obvious, and whilst relevant earlier information (so-called "prior art") is located during the Search stage, its actual relevance to the monopoly being claimed under the patent is determined during a later Examination stage. In theory this multi-staged procedure allows the applicant to minimise his start-off costs and decide early on, when the Search results are to hand, whether to continue with his patent application or to drop it. Thus, although the legal rights are somewhat delayed, they have a measure of retro-activity which, in commercial terms, can persuade a potential infringer against jumping on the inventor's bandwagon.

5. Infringement damages can sometimes be avoided if the patent owner failed to mark his product with the Patent Number. One should ensure that such marking is always effected.

6. Another point to watch is that it can be dangerous to give anyone cause to think that he is going to be sued for patent infringement. That might be deemed 'a threat' entitling the infringer and the threatened party to substantial financial and procedural remedies or benefits. If there is an infringement situation, ask a patent agent or an experienced solicitor to write the appropriate letter.

7. The cost of initial preparation of a patent application, filing it at the Patent Office, and being responsible for seeing that application through to patent grants, varies from case to case. You should ask your patent agent/attorney for an estimate - and bear in mind that his charges are primarily time-based and it's difficult to guess in advance how long he/she will spend thinking, drafting and then finalising the text of your patent description and monopoly Claims. It is these Claims that define the scope of the monopoly and govern what acts will infringe and what acts will not.

8. If any foreign patent is wanted, this must also be sought before the invention is disclosed. Invalidating disclosure can be by the inventor, by the owner of the invention, by someone to whom the invention was disclosed without fetter of confidentiality, or even by UKIPO when they publish the GB application 18 months from the initial filing date. To avoid such a secrecy hindrance, most countries of the world have signed an International Convention which allows a foreign application that is filed within 12 months of a home country application to claim priority from that home country filing date. In other words, for novelty purposes, the foreign application is notionally 'back-dated' to the home country filing date.

9. For such foreign patent cover, it used to be necessary to file separate patent applications in each country within this 12-month priority period - and this is still true for certain countries, notably Taiwan. However such a procedure was expensive - especially where, before filing, the text had to be first translated into the local language - and meant much duplicated effort as the same invention was subjected by each national patent office to its own search and examination. To minimise or delay these upstream costs, two new systems were instituted in 1978. One is the European Patent Convention under which a single application, designating up to 34 European countries, is filed at the European Patent Office. The EPO performs search and examination, and ultimately grants a single patent which can then be translated where necessary and separately validated at each national patent office - a mainly formal procedure. The main expense of translation and "foreign" patent establishment is now significantly reduced and moved downstream, when the issue of patentability has already been decided. The other system is the filing of a single International patent application designating over 130 countries worldwide that are signatories to the Patent Cooperation Treaty. The single PCT application is subjected to a central search and examination by a patent office authorised by the World Intellectual Property Organisation (a UN body). For Europe, this authorised body is the EPO wearing a different hat. Following examination, the authorised body issues a Written Opinion of patentability. This supports the several national applications that can then be filed at the national patent offices based on the PCT application. This system is generally more expensive overall, but some of the costs are postponed even more downstream so that the commercial value of the invention can be better judged - and funds accrued to pay for the procedure.

Members of the EPC are listed on the European Patent Office website and members of the PCT are listed on the World Intellectual Property Office website.

The comments above should not be regarded as a definitive statement of the law and are provided for general information purposes only. For further details, advice, and an indication of likely costs, please contact us.

© Johnsons 2004 & 2008