Patents FAQ

Letters Patent
Author: Erasoft24
Source Wikipedia
Licensed by the author

Jane Lambert

9 Aug 2016, revised 28 Jan and 14 June 2017

What is a Patent?

A patent is a monopoly of a new invention. Where the invention is a product it confers the exclusive right to

"prevent third parties not having the owner’s consent from the acts of making, using, offering for sale, selling, or importing for these purposes that product;"

Where the invention is a process it confers the owner gets the exclusive right to

"prevent third parties not having the owner’s consent from the act of using the process, and from the acts of using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process."

Because a patent is a monopoly it was made known to the public in letters patent  - that is to say letters from the sovereign with the seal hanging from the document rather than enclosing it so that anyone could read what was written. We have long stopped granting patents in that form in the UK and Europe though the United States and many other countries continue to do so as you can see from the example to the left. However, the terminology has stuck. The word patent in this context is pronounced PAT-TENT with a North Country "A" and not PAY-TENT. The latter pronunciation is for shoes and handbags.

A patent is a reward for teaching everyone with the relevant skills and knowledge how to make or use the invention (see Patents). A patent, therefore, represents a bargain between a state and an inventor. The state grants the monopoly in exchange for the inventor's teaching those with the necessary skills and knowledge ("persons skilled in the art" or "skilled addresses") how to make or use the invention.

That is why a patent specification is in two parts. The first part is a description of the invention often with an explanation as to why and how it came to be invented and its perceived advantages. The second contains numbered paragraphs called the claims in which the owner ("the proprietor" or "patentee") stakes out his or her monopoly.

Are there any other Definitions?

The British Library defines a patent as follows:

"A patent for an invention is granted by government to the inventor, giving the inventor the right to stop others, for a limited period, from making, using or selling the invention without their permission."(see "What is a patent?" on the British Library website).

The WIPO (World Intellectual Property Organization), the UN agency for intellectual property, defines a patent as "an exclusive right granted for an invention" in its Frequently Asked Questions Patents. It

"In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problem.

There are lots of other definitions on the internet and the more useful ones will be added from time to time.

Who can apply for a Patent?

In the UK the person who devised the invention ("the inventor") is primarily entitled to apply for a patent.

However, if the inventor was employed in a capacity in which an invention might reasonably be expected to have resulted from his or her work (for instance, if he or she was employed in research and development) or if the inventor occupied a senior position with particular responsibilities such as managing director that person's employer will be entitled to apply for a patent.  If he or she is employed in any of those capacities the inventor is rewarded in the form of a salary, directors' fees or some other benefit. However, in exceptional cases, an employee may be entitled to an additional amount where the invention that has provided an outstanding benefit to his or her employer.

There are other relationships that entitle a third party to apply for a patent in preference to the inventor. Universities often require their graduate and sometimes their undergraduate students to agree to assign to them any inventions they may make upon matriculation. Similarly, consultants sometimes agree to assign their inventions to their clients.

Disputes over who is entitled to apply for a patent, or who is entitled to a patent that has already been granted, are determined in the UK by an IPO official known as a hearing officer.

How do I get a Patent?

First, you, your employee or contractor must invent something that is new, involves an inventive step and is capable of industrial application and does not fall wholly within a number of statutory exclusions. In the UK these include mathematical methods. methods for performing mental acts, doing business, computer programs and the presentation of information - things that are quite crucial to a modern post-industrial, information based, services economy.

You must then apply in the prescribed form to the patent or intellectual property office of each and every country for which you seek patent protection. Patents for the UK can be granted either by the Intellectual Property Office ("IPO") in Newport or the European Patent Office ("EPO") in Munich. In the past, it was necessary to make separate applications to the patent offices of all the countries for which protection was sought within a very short space of time. Now it is possible to make simultaneous applications to several European countries from a single filling through the EPO pursuant to an international agreement known as the European Patent Convention ("EPC"). It is also possible to make simultaneous applications to most other countries through another international agreement known as the Patent Cooperation Treaty ("PCT").

The procedure for applying for a British patent is summarized in the article Patents Step by Step on the IPO website. There is also an excellent Inventor's Handbook on the EPO website and some additional guidance in the WIPO's Frequently asked Questions on Patents.  There is also useful guidance from the IPO for applications under the PCT for private applicants (see Jane Lambert Applying for Patent Protection through the Patent Cooperation Treaty without a Patent Attorney 1 Nov 2016 NIPC Inventors Club).

The procedure in the UK is as follows. Your application will be considered by an official known as an examiner who will decide whether it satisfies the law.  For instance, the examiner will decide whether the invention falls within any of the exceptions that I mentioned above.  He or she will also check records of previous patents and patent applications to see whether anything like the invention already exists. If he or she thinks that the invention has been anticipated (that is to say, already been invented) or that it is obvious having regard to other inventions and the state of scientific or technical knowledge at the time, the examiner will put the point to the applicant or his or her patent attorney and request a response within a specified time. If the objection cannot be satisfied the application may be refused.  The examiner's decision is subject to an appeal to a hearing officer.

If the examiner does not object, or if all objections are resolved, the examiner will publish the application thereby giving the public an opportunity to make observations on why a patent should not be granted which the examiner may take up or ignore.  If the examiner adopts any of these observations he or she will forward it to the applicant and ask for a response.  If there are no observations or they are answered to the examiner's satisfaction, the application will be granted and the applicant will receive a certificate of grant in due course.

Do I have to use a Patent Attorney or Patent Agent?

While you are not obliged to instruct a patent attorney to make an application on your behalf, you are strongly advised to do so. Drawing up a patent application is not easy.  You have to be careful not to claim matter that has already been invented or which would have been obvious to a skilled addressee but the claim has to be wide enough for the invention to be economically viable. Also, the invention must be disclosed clearly enough and completely enough for the invention to be performed by a person skilled in the art. Finally, you have to make sure that each claim is supported by the description of the invention.  If you get any of that wrong the application may be refused or, if a patent is granted, it may be revoked at any time after grant which may be when you try to enforce it if the court or IPO decides that the patent should never have been granted. See Why you should use an IP attorney on the IPO's website.

So how long does that take and how much does it all cost?

It can cost a lot of money and take a long time depending on where you apply, to how many countries you apply, the professional advisers you instruct and whether there are any objections from patent office officials or interested third parties. An application made through a patent attorney for the UK alone is unlikely to cost much less than £4,000 even if everything goes smoothly. An application to the EPO for patents for several European countries could cost even more and an application through the PCT is more expensive still, particularly in what is called "the national phase" when the patent offices of the different countries consider whether the application satisfies local patent law.

There will be additional costs if the patent is granted. First, it will have to be renewed from time to time and in many countries renewal fees actually increase over the term. Sometimes there are applications to revoke a patent which involves more expense. If a patent is infringed, proceedings may have to be brought in the civil courts which can cost anything from £200,000 to £1 million in England and Wales according to Taylor Wessing.

Why do Businesses need Patents?

As I said above, a patent is a monopoly of am invention.

Unlike design right or copyright, you don't have to prove copying. If you have a patent and someone makes, imports, uses or sells anything that falls within any of your claims, that person infringes your patent. It does not matter if he or she developed his or her invention quite independently. It is irrelevant that he or she may never have heard of you or your invention.

For some businesses, that is exactly what is needed. A drugs multinational that has spent millions on developing a life-saving vaccine does not want a generics manufacturer to make a slightly cheaper version of its invention.

For many other businesses, however, a patent can be a complete waste of money. Patents are not cheap. It costs about £5,000 to get a patent for the UK alone and considerably more if you want patent protection elsewhere. Patents are expensive to maintain because there are renewal fees that actually increase with the passage of time in some countries. Patents can be revoked at any time without any compensation if a court or the IPO concludes that they should never have been granted.

The cost of defending a revocation action can be considerable, The cost of enforcing a patent can be even more. Anything from £200,000 to £1 million in England and Wales according to Taylor Wessing.

And the tragedy is that many patents are never worked and many of those that are worked never do more than cover their costs.

In that case, why on earth does anyone apply for a Patent?

Good question and I think the answer must be that it provides the most extensive protection.  It protects the way the invention works rather than how it looks or how it is put together which is the most to be expected from unregistered design right or copyright.

So why do so many Businesses apply for Patents?

Compared to many other European countries we in the UK don't apply for all that many patents. There were 7,095 applications for patents from the UK in 2015 compared to 31,670 from Germany, 13,370 from France, 8,451 from the Netherlands with a third of our population and 8,354 from Switzerland with one-eighth. But even that figure is high when you consider how few of those patent applications actually make money.

There are lots of reasons why businesses apply for patents. It may be a condition for a grant or investment. It may be for marketing reasons in that a patent portfolio may make a business look as though it carries out lots of research and development work. It may be for personal vanity because it looks good on a CV. It may be because inventors cannot be sure whether the invention will take off or not in the early days. It may be simply that the inventor or his or her employer did not know enough about patenting.
What sort of Businesses apply for Patents?

According to the IPO's Facts and Figures Patent, trade mark, design and hearing administrative data 2014 and 2015 calendar years the companies with the most applications for British patents were Rolls Royce, Jaguar Land Rover, Ford, ARM and Halliburton. In the EPO it was Philips, Samsung, LG, Huawei and Siemens (see EPO Facts and Figures) and internationally it was Huawei, Qualcomm, ZTE, Samsung and Mitsubishi (see WIPO Who filed the most patent applications in 2015).

Why do Governments grant Patents?

Patents are a way of encouraging investment in R & D and the diffusion of scientific and technical knowledge. They form part of a bargain between the public and inventors the terms of which I set out in The Inventors' Bargain on 21 Dec 2008:

“If you can persuade us that you have invented a new, inventive and useful product or process that does not fall within a number of exceptions, if you teach everyone in the industry how to make or use it, and then pay us a lot of money we shall register a specification of your invention at our intellectual property office. Registration will give you a monopoly of that product or process in our territory known as a “patent” and so long as you keep paying us a lot of money periodically, you can enjoy that monopoly for up to 20 years. We can’t promise that you will make any money from your invention. That’s up to you and your customers. If they like it they will buy it and if they don’t they won’t. However, if members of the public do buy your product or products made from your process, you have the right to prevent others from making, importing, supplying or using your invention during the term. That should be more than enough time for you to recoup your costs and make a tidy sum on the side if your invention is any good. If anyone tries to make, import, sell or use your invention during that time, you have the right to ask our courts for “injunctions” or orders to stop them, order them to pay “damages” to compensate for any loss or damage that you may suffer or both. Of course, you must have a good case and be prepared to pay your costs of going to court and maybe the other side’s if you lose. It will not be a crime to infringe your patent, so you won’t be able to complain to the police as you can if someone steals your watch or handbag. You must remember that while your patent is in force there will be restrictions on what you can do with it. You may not, for instance, threaten to sue shopkeepers just because they stock a product that you think may infringe unless it turns out that it does in fact infringe. After your term is up, anyone in the world can make the product or use the process in this country. Oh, and if at any time we find that we should not have granted a patent in the first place (which we may well do when you try to enforce it in infringement proceedings) we can take away your monopoly just like that. If we do that, you won’t be able to rely on any trade secret or other legal protection because the whole point of this bargain from our perspective is that you dedicate your invention to us. If we do take away your monopoly, all your efforts and investment will have come to nought, but, hey, that’s life. These are our terms, mate. Take them or leave them.”

Patents are a great source of technical and scientific information that is available to anyone with a computer and internet connection. Not just our database but also those of other countries some of which are massive in comparison. Alternatives to patenting have been tried. Inventors were rewarded with certificates in the former Soviet Union and its satellites which afforded them certain advantages but that ceased to be possible once the means of production, distribution and exchange were returned to private ownership.

Are there Alternatives to Patenting?

Simply keeping the invention under wraps and relying on the law of confidence to prevent unauthorized use or disclosure is the usual way. That has proved to be spectacularly successful in the case of recipes for beverages like Coca-Cola and Chartreuse (see the paragraph on "Protection" in the Wikipedia article on Trade Secret). In contrast to patenting, imposing an obligation of confidence on an employee, contractor, consultant or supplier costs nothing or next to nothing to set up and can be enforced indefinitely. The drawback is that the obligation is discharged once the information enters the public domain otherwise than through a breach of confidence. That can happen because a product is lawfully reverse engineered once it is put on sale or the secret is discovered by parallel independent research.

Sometimes another IP right can be relied upon such as unregistered design right in the design of the circuitry or mechanism of a product or copyright in the source code of a computer program. That again costs nothing to set up but neither a design right nor copyright provides a monopoly. It does not protect the technology as such. Only the way in which a product has been designed or a program has been written. Not even that if it can be shown that there was no copying.

How is a Patent infringed?

Once a patent is granted the person the patentee has the exclusive right to do the things in relation to the invention that are listed in What is a Patent? above.

That begs the question "What is the invention?" and the answer is that the invention is whatever is set out in the claims. Thus, if a person makes, imports or sells a product that falls within any of the claims he or she infringes the patent. If you are a patentee you have to indicate the claim on which you rely, the item that falls within the claim and the act that is alleged to have been done in relation to that item.

When deciding whether there has been an infringement the first step is to construe (that is to say interpret) the claim or claims that the patentee identifies.  There is a Protocol and a large body of case law with guidance on how that is to be done.   Usually, the claim is broken down into individual integers or features. The next step is to look at the allegedly infringing item to see whether it has those features. If it does, then all that needs to be decided is whether any of the acts that are reserved to the patentee has been done in relation to that item.

What are the Defences to a Claim for Infringement?

There are usually fall into two, namely that the patent has not been infringed or that it is not valid.  The first defence usually focuses on the construction of the claim and the second on whether the invention was obvious in the light of previous technology.

What happens if a Patent is infringed?

The patentee can sue the alleged infringer in the civil courts.  The remedies for patent infringement are much the same as for the infringement of other IP rights ("IPR"). The patentee can claim an injunction (that is to say, an order of the court to refrain from infringing the patent on pain of fine, imprisonment or other penalty for disobedience), damages (compensation) or an account of profits (computation and surrender of ill-gotten gains) and a contribution towards the patentee's costs.

If the infringement is alleged to have taken place in England and Wales the claim must be brought in either the Patents Court or the Intellectual Property Enterprise Court ("IPEC") multitrack.  These are specialist intellectual property courts within the Chancery Division of the High Court of Justice with judges experienced in patent law applying their own modified practice and procedure.  IPEC is for claims of £500,000 or less that can be determined in no more than two days. Recoverable costs are capped on a fixed scale with an overall limit of £50,000.  No court other than the Patents Court and IPEC has jurisdiction to hear patent cases. Patent claims cannot be brought in IPEC's small claims track.

Unlike copyright, rights in performances, trade mark and now registered design infringement, there is no criminal liability for patent infringement.

Can Patents be bought and sold?

Patents can be assigned and licensed just like any other IPR.

Assignments and exclusive licences must be in writing and signed by the patentee. The IPO should also be notified.

How long does a Patent last?

Twenty years from the date of the first application though a patent may lapse or be revoked well before that date.

Where can I look up the Law?

The patent law of the United Kingdom has been codified by the Patents Act 1977 a useful consolidation of which appears on the IPO website (see The Patents Act 1977 (as amended). A number of statutory instruments implementing the various provisions of the Act have been made of which the most important are The Patents Rules 2007 and The Patents (Fees) Rules 2007 which have also been consolidated by the IPO (see The Patents Rules 2007 (as amended) The Patents (Fees) Rules 2007 (as amended).

if you seek a European patent you will need to look up the European Patent Convention and the Implementing Regulations which are to be accessed through The European Patent Convention portal on the European Patent Office website.

Decisions of the Patents Court, Intellectual Property Enterprise Court, the Court of Appeal and the Supreme Court are to be found on the British and Irish Legal Information Institute ("BAILII") together with those of the Scottish, Northern Irish and Irish Republic's courts. Hearing officers' decisions can be found on the Results of past patent decisions page of the IPO website. Decisions of Boards of Appeals of the European Patent Office can be accessed through the Case Law of the Boards of Appeal portal.
Practitioners usually refer to Terrell on the Law of Patents but there is a perfectly acceptable Manual of Patent Practice on the IPO website.

Where can I obtain Further Information?

I give talks from time to time on patent law for business owners and managers and those who are contemplating going into or investing in a business to exploit a new invention. The IPO, the British Library Business and IP Centre and its affiliated libraries also run workshops and seminars. You will find details of those talks here and in my newsletters from time to time.  If you have a specific enquiry on patents that is not answered, call me on +44 (0)20 7404 5252 or send me a message through my contact form.

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