Alternatives to Patenting

UK Patent Office at Newport

Crown Copyright   Licence  Open Government Licence

Jane Lambert

A patent offers the most comprehensive protection of new technology.  It confers a monopoly that can last for up to 20 years of the manufacture, disposal, marketing, use, importation or keeping of a new product or the use of a new process including a monopoly of the disposal, marketing, use, importation or keeping of any product obtained directly from the process.

However, such monopolies are not granted lightly.  Every invention is examined for novelty, inventiveness, utility and compliance with the relevant legislation.  That is a lengthy and complex process for which an applicant will almost certainly require the assistance of a patent attorney and, in some cases, patent counsel.  According to the guidance Patenting Your Invention only 1 in 20 applicants gets a patent without professional help.   Such help does not come cheap.   The same guidance note states that an application for a patent for the UK alone typically costs £4,000.  If the application is granted there are renewal fees which in many countries rise throughout the term of the patent.  If the validity of the patent is challenged or the patent is infringed the cost of invalidity or infringement proceedings can run into many hundreds of thousands or even millions of pounds

A condition of the grant of a patent is that the specification must disclose the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art.  Should the application be refused or should a granted patent be revoked, anyone in the world may make, market, distribute or use the invention. Indeed, anyone in a country in which patent protection has not been obtained may freely work that invention.

Not every invention can be patented.   S.1 (2) of the Patents Act 1977 excludes from patentability:

"(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
(d) the presentation of information."

That exclusion covers great swathes of innovation in our increasingly services orientated internet-based economy.    Happily, there are other ways of protecting a new technology.   

If the invention cannot easily be reverse engineered it may be better to keep it secret.   The law of confidence bolstered recently by the Trade Secrets Directive prevents unauthorized use or disclosure of secret technical or commercial information.   A restriction on unauthorized use or disclosure lasts until the information is in the public domain.    In some cases, that can be a very long time.   The recipe for Coca Cola has been kept secret for more than a century and the recipe for Chartreuse for very much longer. The information has to be secret, it must have some inherent value and it must be imparted in circumstances giving rise to an obligation of confidence. Usually, that means a confidentiality agreement but there are other circumstances where an obligation of confidence will be implied.  For instance, a patent attorney is bound by such an obligation when he or she advises an inventor on the patentability of a new invention.  The information technology industry, in particular, relies heavily on trade secrecy law to protect algorithms, source codes and other unpublished information. 

Many innovative new products, particularly in the consumer electronics, fashion and beauty, toys and novelty industries, have a very short shelf life.   For them, short term protection from copying is enough. The UK is one of a very small number of countries that protects "the design of the shape or configuration (whether internal or external) of the whole or part of an article" from unlicensed reproduction.   Such protection, known as "unregistered design right" subsists automatically in original designs.  There is no need for examination, registration or professional help.   Design right protection can last up to 15 years if the design is not exploited by the marketing of articles made to the design or 10 years where it has.    However, in the last 5 years of the design right term, anyone in the world can apply to the design right owner for a licence to use the design as of right.  Any dispute over the terms of the licence can be settled by the Intellectual Property Office.

The design of semiconductor chips is protected in the UK by a modified form of design right under The Design Right (Semiconductor Topographies) Regulations 1989 as amended by The Design Right (Semiconductor Topographies) (Amendment) (EU Exit) Regulations 2018.   The main differences lie in the qualifying countries, the term of design right and the exclusion of the licence of right provisions.

Although computer programs as such cannot be patented, computer programs, preparatory design material for computer programs and databases are specifically included in the definition of "literary work".  Copyright subsists automatically in original literary works and lasts for the life of the author plus 70 years.   There is no need for registration in the UK or most other countries.    It is however important to note that copyright provides protection against copying.  It does not prevent the making of a similar or even identical work provided that there has been no copying of or reference to the copyright work.   IT and many other industries that supply goods and services over the internet rely heavily on copyright.

The breeding of new varieties of seeds and plants is an increasingly important technology in view of climate change.  In the USA and some other countries, it is possible to obtain plant patents (see General Information About 35 U.S.C. 161 Plant Patents on the US Patents and Trademark Office website).  In the UK plant breeders' rights are protected by registration with the Plant Variety Rights Office under the Plant Varieties Act 1997 (see Plant Breeders' Rights).  

It is important to bear in mind that consumers are often drawn to a new product by its shape or reputation rather than the technology under the hood.   Designs of new products with individual character can be registered under the Registered Designs Act 1949 for up to 25 years.  They are also protected by unregistered design rights and a new supplementary unregistered design right.   The surface decoration of a fabric, wall covering or other product can usually be protected from copying by copyright.  Occasionally, the article itself qualifies for protection as a work of artistic craftsmanship.    The reputation of a product or service is its brand.  Brands are protected in the UK by the registration of their name, logo or other indicia as a trade mark and by the common law of passing off.

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