Should you obtain a patent?

Patents provide inventors exclusive rights in their discoveries. Entrepreneurs in the pharmaceutical, life sciences, medical device and many other fields look favourably upon the benefits of patents, including:

• creating barriers to entry for competing products;
• discouraging potential patent litigants;
• enhancing company valuations;
• generating licensing revenue; and
• facilitating cross-licensing and other strategic partnerships.

There’s some debate over whether entrepreneurs building products in the computers, mobile devices, semiconductors and software fields should spend precious time and money on obtaining patents. While the benefits identified above are applicable in these fields, patents may not be a necessity if you conclude:

• the expense in time and money outweighs the potential upside;
• the patent may be obsolete by the time it grants in a fast moving industry;
• you can keep the “secret sauce” of your technology confidential and therefore protected by law as a “trade secret”; and
• you don’t want to antagonise engineers who are opposed to the idea of patents in these fields.

These are complex considerations. Any patent strategy should be informed by advice from a strategic patent attorney. Be wary of any management or engineering personnel that claim to have all of the patent answers. They may be right, but patent answers should be vetted in an open dialogue between engineering, management and a strategic patent attorney.

What is patentable in the UK?

A patent will only be granted if it fulfills the following criteria:

• It is new;
• It involves an inventive step;
• It is capable of industrial application;
• It is not specifically excluded from protection as a patent.

Utility versus Design “Patents”

Utility patents cover the functional attributes of a device or method. There are no “design patents” in Europe but aesthetic features of an object may be protected by way of the Community Design Right or Registered Design Right.

What is a “provisional patent application”?

Provisional patent applications are patent applications that are not examined, but are used to establish a priority date for an invention. Provisional patent applications are commonly filed as informal documents, such as a white paper, a software requirements specification, a product manual and the like. A provisional patent application may be converted to a utility patent application within one year of the initial filing date. Provisional patent applications need to contain a full and enabling technical disclosure (as do normal utility patent applications). If such a disclosure is absent, then the priority date is not established.

Where should you file for a patent?

A patent is only enforceable in the jurisdiction in which it is granted. Therefore, if you want worldwide protection, you must file a patent in individual countries worldwide. In the UK, you must file an application with the Intellectual Property Office (‘IPO’). It is also possible to file an application at the European Patent Office (EPO) for a “bundle of national rights” meaning that a simple application can constitute an application for patents in each Member State of the EU. Note that in 2016/2017, a “Unitary Patent” is going to be available which will be one patent covering the whole of Europe. Filing in multiple countries can be prohibitively expensive for a startup. Your business plan will dictate your strategy with respect to foreign patent applications.

How to obtain a patent

Think of your innovations in economic terms: would a customer pay for this feature, would a competitor want to appropriate this feature, does this feature reduce expense, save time? The technology to be protected should also align with overall business goals and strategic initiatives.

Here’s a sequence of events once you’ve identified an innovation for protection:

1. You prepare a ‘patent application’ which includes a written description of your invention demonstrating its use and how it could be made and illustrations;

2. You complete the “Request for grant of a patent” form and file it with the IPO, along with a copy of your patent application;

3. The IPO will send you a confirm of receipt which includes your application number and the filing date;

4. You request that an examiner at the IPO performs a search of published patents, assessing whether your invention is new and inventive;

5. Once you’ve paid the application fee to the IPO, they will perform a preliminary examination to ensure the application meets formal requirements

6. If your invention meets the formal requirements, your patent application will be published by the IPO 18 months after the filing date;

7. You submit a form to the IPO requesting a substantive examination be performed no later than 6 months after publication; then

8. The IPO will examine your application and advise you of what amends, if any, need to be made. If your application meets the requirements, the IPO will grant your patent and send you a certificate.

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