Most people have never heard of Tim Berners-Lee. However, he is the person responsible for inventing the technology that is allowing you to read this article. In the late 1980s whilst working at CERN, Mr. Berners-Lee proposed a method to allow for the sharing of hypertext documents over the Internet. And thus, the World Wide Web was born. You probably imagine that the person who invented the Web made an astronomical sum of money. But no, Mr. Berners-Lee declined to patent his work, believing it should benefit everyone. However, you can put the image of a poor inventor out of your mind – Sir Tim (he received a knighthood in 2004) is a Professorial Fellow of Computer Science at the University of Oxford and a professor at the Massachusetts Institute of Technology, a director of the Worldwide Web Consortium (W3C), and the recipient of numerous honours, including the prestigious ACM Turing Award.
Unfortunately, not everyone is as lucky as Sir Tim. Others who failed to patent their inventions, such as American artist Harvey Ball (the emoticon) and Cesar Milstein (monoclonal antibodies which are used in 60% of modern prescription drugs) were quietly forgotten and never made a penny from their original idea.
Securing a patent is key to ensuring your unique invention is protected from others copying or using it without your permission. However, the process can be daunting and expensive, therefore, it is highly advisable to work with an experienced Intellectual Property
Solicitor throughout the process. Did you know that only 1 in 20 patents that are self-administered are successful? An experienced Intellectual Property lawyer
will make sure that the correct procedures are followed so your money is not wasted on a failed submission.
Step one – Establish whether your invention is eligible for a patent
What can be patented?
To qualify for a UK patent your invention must:
Be new – the invention must not have been made available to the public, either by use or disclosure (unless under a confidentiality agreement). Therefore, it is vital to keep your invention under wraps until you have filed the patent application.
Involve an inventive step – you cannot patent something that is merely a trivial addition to an existing product. It is vital to clearly identify the ‘inventive step’ because, due to its subjective nature, this is the element that is most subject to challenge upon application.
Be capable of industrial application – applications rarely fail on this point but be sure to pinpoint how your invention will be used. For example, it is not enough to identify a new chemical, you need to explain how it will benefit a particular industry.
- Not be specifically excluded from protection as a patent
What cannot be patented?
You cannot patent certain types of invention, including:
- Discoveries, scientific theories, and mathematical methods (however, you can get a patent for the practical application of discoveries and scientific theories).
- Aesthetic creations as these are usually protected by copyright law.
- Schemes, rules, and methods for performing mental acts, playing games, or doing business.
- Computer programs and apps (in most cases).
- The delivery of information.
- Inventions that could encourage offence, anti-social or immoral behaviour.
- Surgical, therapeutic, or diagnostic techniques carried out on the human or animal body. However, patents can be obtained for articles used to carry out such procedures. For example, the technique of a heart transplant cannot be patented but the machine used to pump blood around the body whilst the heart is being removed could be.
- Plant or animal varieties or any largely biological processes for the production of plants or animals.
Step two – Apply for a patent
- A request for grant of a patent on the appropriate form.
- Your contact details.
- A description of the invention (the specification) or alternatively a reference to an earlier application for the same invention.
- The applicable filing fee.
If any of the above are missing, your application will not receive a filing date.
Upon receiving the application, an IPO examiner will search to see what other patents in the same general area have been published. This is to establish whether the invention meets the eligibility criteria. A security check will also be run to ensure nothing in your application would prejudice national security if published.
Step three – Wait for publication and apply for substantive examination
Eighteen months after your patent submission is received the IPO will publish your application in the Patents Journal. Interested parties can comment on your application up to three months after the publication date.
If you decide you wish to proceed with the application, six months after publication in the Patents Journal, you must apply for a substantive examination. This process entails the IPO meticulously considering every detail of your application. The substantive examination process can take up to 4.5 years; however, it is possible to accelerate the process to less than 12 months.
Step four – Receive your patent
If the IPO is satisfied following the substantive examination process, it will grant your patent, publish your application in its final form, and send you a certificate.
As you can see, the patent application process is long and involves several steps. To increase your chances of success and ensure your best interests are protected throughout your application's route, invest in the advice and representation of an experienced IP Solicitor.
Five steps to take now to prepare your patent application
- Consult an IP Solicitor and get them on board early so they can develop an understanding of your business and the market sector in which you operate.
- Check whether a patent is the best way to protect your invention. Depending on your business and/or market sector, a trademark, design right, or copyright may offer greater protection.
- Carefully consider when it is best to apply for a patent. Initially, it may seem like the faster you apply the better, in order to prevent your competitors from filing first and obtaining priority. However, giving you and your team time to develop the invention increases your chance of your application being successful.
- Have your Solicitor draft a non-disclosure agreement and do not talk to anyone about your invention without having them sign the document.
- Consider whether your invention needs international protection. If so, discuss the steps to obtaining an international patent with your Solicitor.
Visit www.lawbite.co.uk for your free 15-minute consultation with an IP lawyer from our expert legal team.