Posted By
Cooley GO

Many thanks to David Wraige for his contributions to this article.

Should you obtain a patent?

Patents provide inventors exclusive rights in their discoveries. Entrepreneurs and investors 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 is some debate over whether entrepreneurs building products in the computer, mobile device, semiconductor 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 that you can keep the “secret sauce” of your technology confidential and therefore protected by law as a “trade secret”. However, if a trade secret is leaked, there may be little to stop competitors using that leaked information.

Because the decision on whether to seek patent protection involves 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 and at the European Patent Office (EPO)?

A patent will only be granted if it is new. Patents must also involve an inventive step. This means that the difference between the invention and what was already known at the priority date of the application must provide a technical contribution to the state of the art. This is subjective and the way that this is assessed varies dependent on the jurisdiction. Patent attorneys often spend a considerable amount of time convincing patent examiners that their client’s invention is new and involves an inventive step.

In the UK and Europe, some inventions are excluded from patent protection. Notable exclusions are discoveries, scientific theories, mathematical methods, schemes, rules and methods for doing business and presentations of information.

Computer programs are also excluded from patentability. However, in practice this exclusion is limited in effect, and if the program has a real-world effect, it is still possible to seek protection by way of a patent. There are several potential pitfalls that could be encountered when seeking patent protection for computer software, and this is an area where specialist advice from a patent attorney will be especially useful.

It is also not permissible in the UK and at the EPO to protect methods of treatment, diagnosis or surgery on the human or animal body. It is, however, possible to protect compounds or compositions for use in the treatment of a human or animal, providing the use is new, even if the compounds themselves are known for a different purpose. Medical devices for use in methods of treatment, diagnosis and surgery are also patentable.

Finally, aesthetic creations cannot be protected in the UK or at the EPO through the patent system. However, in each case protection is possible by way of design rights. There are both unregistered design rights that inherently exist, and UK/EU registered design rights which provide stronger protection for a longer period of time.

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 patent applications in individual countries worldwide. This can be achieved through the filing of one “international application”, which, at a later date, can be converted into national applications in over 150 countries.

In the UK, you must file an application with the UK Intellectual Property Office (UKIPO). It is also possible to file an application at the EPO for a “bundle of national rights” meaning that one application at the EPO can result in protection in 38 states (including non-EU countries like Turkey). If you are interested in protection in a number of countries covered by the EPO, this will be a more cost-effective manner of obtaining protection than with individual applications in each state.

Filing in multiple countries can be prohibitively expensive for a startup. As such, your business plan will dictate your filing strategy with respect to foreign patent applications.

Obtaining a UK or European 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 and/or save time? The technology to be protected should also align with your overall business goals and strategic initiatives.

If you have an invention that you wish to protect, you should discuss the invention with a patent attorney who can then help guide you through the application process. Here is a sequence of events once you have identified an innovation for protection:

  1. Your patent attorney can prepare a patent application, which includes a written description of your invention that demonstrates its use and how it could be made as well as illustrations (if necessary).
  2. Once you are happy with the application, it can be filed with the UKIPO or EPO along with payment of the appropriate fees.
  3. The UKIPO or EPO will send you a confirmation of receipt, which includes your application number and the filing date.
  4. Assuming that search request has been made, an examiner at the UKIPO or EPO performs a search of published patents in order to assess whether your invention is new and inventive, taking into account what was known at the filing date.
  5. The UKIPO or EPO will also 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 UKIPO or EPO 18 months after the filing date. At this point you will have provisional protection – although you cannot take legal action to prevent infringement at this date, infringement will be considered from this date once your patent application grants.
  7. Provided the relevant fees and formal requirements are met, the UKIPO or EPO will examine your application and advise you of what amendments, if any, need to be made. It is not always necessary to agree with the examiner and patent attorneys will often argue over the scope of the claims in order to get the best possible protection for their clients. Once your application meets all of the requirements, the UKIPO or EPO will grant your patent and send you a certificate.

The above sequence is very much simplified for ease of understanding, and many details and options have been omitted. In particular, the above sequence assumes that priority from an earlier patent application has not been claimed.