Thursday 28 March 2019

Patent Basics - Should I get a Patent?

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Jane Lambert

The Intellectual Property Office in Newport has published this video to help people who have invented a new product or process to decide whether they should apply for a patent for their invention,   This video is very helpful but it does not go far enough and two bits of it are confusing.

What is the Advantage of getting a Patent?
In my Patents FAQ I wrote:
"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'."
The video shows a screen with the words
"Will it prevent copying in the markets in which you are interested in."
That is the first bit that is confusing. Patent protection is actually much wider than that. Patents do not just give you the right to stop others from copying your invention.  Patents also give you the right to stop people from making a product or process with the features of your invention even if their product or process was entirely their own work and they were unaware of the existence of your patent or your invention.

That right can be very valuable indeed.

What are the Disadvantages of getting a Patent?
It takes a lot of time and costs a lot of money to get a patent.  You have to persuade an official known as an "examiner" that your invention is new, that it involves an inventive step, that it is capable of industrial application and that it does not fall within a number of exceptions.

You must also "disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art" (that is to say, someone with sufficient skill and knowledge of the technology to make or use your invention).  If after the patent has been granted, the IPO or a judge thinks that you failed to do those things. the IPO or Court may well take the patent away from you regardless of your expenditure on developing the invention and obtaining the patent.

Any patent that may be granted by the IPO will be good for the UK alone which means that anybody outside the UK can read your patent on the internet,   Such a person may make or use your invention with impunity. The only way you can prevent that from happening is to apply to the intellectual property office of any other country in which you think that could happen.  As a general rule, you have only one year from your first application in which to make those applications.  The total bill for worldwide patent protection can be massive.

Worse, if your patent is revoked for any reason you lose your right to stop others from making or using your invention for good,

No wonder, many inventors prefer to keep mum about their inventions until they are ready to launch them and then rely on unregistered design right or some other intellectual property right.  On the other hand that has dangers, too.  If a competitor produces an identical product without breaching your confidence, infringing your rights under the Trade Secrets Directive or copying your designs then you can't do anything about it.

How to decide whether or not to patent an Invention?
It is often said that patents are for big companies and are not much use for small businesses.  There is more than a little truth in that because patents cost a lot of money to obtain and even more to enforce.  But it is not entirely true.  Some small businesses such as Claire Mitchell of Chillipeeps has built a successful business around her invention as she explains in this video.

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You need to consider such things as the market for your invention, the likely sales, the availability of competing products, the invention's shelf life and your available resources.   Unless you are sure your sales or other revenues will more than cover your patenting costs you should think long and hard about the optimum IP protection for your invention.

Intellectual Property Strategists
There is an emerging profession of business advisors called intellectual property strategists who combine their knowledge of intellectual property with their experience of business to advise on the appropriate legal protection for their clients' brands, designs, technology or creative works (see Jackie Hutter What is an IP Strategist (IP Asset Maximizer Blog)).  IP strategists can be barristers and solicitors who specialize in IP or indeed patent or trade mark attorneys but it is important to note that not all members of those professions are IP strategists.

Getting the Right IP Lawyer
The IPO's video advises inventors to seek legal advice which is good but it recommends "IP lawyers" which is the second bit that is confusing.   There are four types of intellectual property lawyer, namely barrister, solicitor, patent agent or attorney and trade mark attorney.  Though there is a lot of overlap each of those professions has its strengths and specialist functions.  My article, IP Services from Barristers 6 April 2013 NPIC News explains the services that barristers specializing in IP such as I can offer.   The IPO's video Attorney talks about applying for a patent  31 July 2014 discusses the work of patent and trade mark attorneys.

Anyone wishing to discuss this article or patenting or IP strategy generally may call me on 020 7404 5252 during office hours or send me a message through my contact form.

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