BEFORE FILING

Does an invention have to be a major advance to obtain a patent?

Not necessarily. To obtain a patent for an invention, the invention must be new and inventive. An invention is new if it has not been disclosed to the public anywhere in the world before a patent application for the invention is filed. An invention is considered to be inventive if, when compared to everything else that is available to the public, it would not be obvious to a person with reasonable knowledge and experience of the subject area of the invention.

Is there anything that you can’t get a patent for?

Yes, there are a number of things which are excluded from patent protection under UK law, such as aesthetic creations and scientific discoveries. However, if the invention involves more than just an abstract idea, for example a piece of apparatus that uses a scientific discovery, it may be possible to obtain a patent for the apparatus.

Can I patent computer software?

Possibly, depending on what the software does. Computer programs ‘as such’ are excluded from patent protection in the UK and Europe. However, if you have developed a computer program that produces a technical effect when run on a computer, it may be possible to patent the computer program, provided it is novel and inventive. Software that is excluded from patent protection in the UK and Europe may be patentable in the USA where there is a more relaxed approach.

Software patents are a complex area of patent law, and you should speak to one of our patent attorneys if you need advice in this area.

Can I patent business methods?

Business methods are not patentable in the UK or Europe. It may be possible to obtain patent protection for some business methods in the USA, where there is a more relaxed approach than in the UK or Europe.

How can I find out if someone has already come up with my invention before?

It is a good idea to carry out some searching prior to filing a patent application. Just because you haven not spotted your invention in the market place, this does not mean that it has not already been published somewhere else in the world. One useful patent database is http://ep.espacenet.com which allows you to search published patents and patent applications.

It is also possible to conduct professional searches prior to filing a patent application. We offer different levels of novelty search with different associated costs. Please contact us for more information.

My invention relates to an improvement to an existing product. Can I still get a patent for it?

It may be possible to obtain a patent for an improvement to an existing product, provided the improvement is considered to be a new and inventive feature. Many patents are granted for inventions which relate to improvements to existing products.

Can I talk to people about my idea before filing a patent application?

You must keep your invention secret until a patent application has been filed. If it is necessary to discuss your invention with a third party, you should ensure that the third party signs a confidentiality agreement. Chartered Patent Attorneys are bound by a code of confidentiality so any discussion with us is in the strictest confidence.

Do I need a prototype of my invention to file a patent application?

It is not necessary to have a working prototype or model before a patent application is filed.However, it is essential that you are able to provide a description of your invention which contains enough information to enable another person, familiar with the relevant area of technology, to reproduce the invention.

Do I have to use a patent attorney to file a patent application?

There is no official requirement to use a patent attorney to file a patent application in the UK. However, patents, and the procedures for registering them, can be very complicated. If you file without professional advice, you run the risk that you will have disclosed your invention to the public without obtaining any useful level of protection. The Patent Office will often recommend to patent applicants that they should use a patent attorney.

How long does it take to get a patent application filed?

Typically, a patent application can be filed in about four weeks, assuming that we have been provided with all of the necessary technical information. Patent applications can sometimes be prepared and filed on an urgent basis if the circumstances require this, for example in the case of an imminent non-confidential disclosure.

AFTER FILING

What happens once I have filed my application?

Before any patent office grants a patent for an invention, it will carry out a search and an examination of the application, to determine whether the invention fulfils the requirements for a patent to be granted. Even if a search has been carried out before a patent application is filed, each patent office will still carry out its official search. If a patent office finds that an invention as

defined in a patent application is not new and inventive, it may be possible to amend the application or submit arguments to the patent office to overcome these findings.

How long does it take to get a patent granted?

It can take up to around four and a half years from filing a UK patent application to secure grant of a UK patent. It may be possible to obtain grant more quickly and, if this is of interest, please speak to one of our patent attorneys. It can take longer than this to obtain grant of overseas patents, such as a European patent.

Can I add information to my patent application after it has been filed?

Unfortunately, it is not possible to add information to a patent application after it has been filed, so it is extremely important that you provide your patent attorney with as much technical information as possible at the outset.

What if I modify my invention after filing a patent application?

You should provide your patent attorney with details of any modifications or developments as soon as possible before they are non-confidentially disclosed. Your patent attorney will then advise you about the best way of protecting these, bearing in mind that it will not be possible to add information to the patent application already on file.

Does marking my product ‘patent pending’ or ‘patent applied for’ give me any protection?

No, but it may act as a deterrent to third parties who would otherwise be unaware that you are pursuing patent protection for your invention. We generally recommend that you include the patent application number when marking your product in this way. You must not mark your product ‘patent pending’ or ‘patent applied for’ if a patent application has not been filed or has lapsed for any reason.

Do I have to wait until my patent is granted before I can disclose my invention?

No, you can disclose details of your invention as soon as a patent application has been filed to protect it. If you are likely to make significant developments or modifications to your invention, we generally recommend against making non-confidential disclosures until a patent application has been published, which normally occurs around eighteen months after filing.

How long does a patent last?

A patent lasts 20 years from the date of filing of the patent application, subject to the payment of renewal fees.

Can I get a worldwide patent?

No. It is possible to file an international application. However, such an application merely streamlines the procedure of obtaining a number of individual national patents and does not result in a granted international patent. It is also possible to file a European patent application, in which

case the European Patent Office will examine the application and determine whether or not a European patent can be granted for the invention, but once again this is simply a streamlined route to a number of separate national patents throughout Europe.

How much does it cost to obtain a patent?

The cost varies depending on a number of factors such as complexity of the subject-matter, factors arising during prosecution at the Patent Office and professional time. Please feel free to call us to discuss costs.

INFRINGEMENT AND ENFORCEMENT

What do I get from my UK patent?

A patent is essentially a bargain with the state in which, in return for disclosing your idea to the public and thereby enabling technical developments, you obtain a monopoly right for your invention in the country concerned for the duration of the patent. A patent is a legally recognised property that you may enforce, assign or license.

If I get a patent for my product, will the government help with the legal costs enforcing it?

No. However, some insurance companies offer policies which help towards the cost associated with enforcing a patent.

Once my invention is patented, could I still infringe someone else’s patent?

Yes. Even if you obtain a patent for your invention, if somebody else has an earlier broader patent which covers your invention, the exploitation of your invention, for example by manufacture or sale, would constitute an infringement of that patent.

What should I do if I think someone is infringing my patent?

You should contact your patent attorney as soon as possible and provide full information about the infringement. The course of action taken will depend on the circumstances but usually, in the first instance, your patent attorney will prepare and send a suitably worded letter to the alleged infringer. Often, the situation can be resolved without recourse to formal legal proceedings. You should not contact the alleged infringer yourself as difficulties could occur if you make unjustified threats.

How can I keep track of my competitors’ patenting activities?

We offer a patent name watching service which is able to identify newly published patent applications, in the name of a particular company or individual.