Intellectual rights such as patents have been created to protect ideas lying at the root of many successful businesses and incredible inventions. They offer inventors and entrepreneur the certainty that their work will not be stolen or copied and that they will be able to benefit from their genius and effort. Still, if you have created an amazing product or you sit on a great invention, don’t file for a patent yet. There might be a better Intellectual Property (IP) protection for you.
There are a lot of inventions out there that you have never heard of and maybe you never will. Some of them are still waiting in silence to be patented and more have been rejected because they were not new enough, meaning that there was something that too similar to them already out there.
In order to be eligible for a patent, your invention must be new. One way to ensure that, is to keep it away from any public disclosure until filing for a patent. Another way is to thoroughly research what is already out there to make sure you are not wasting time and money on an invention that will not pass the novelty test.
Start with an Internet search and continue with the databases of published patents. Don’t forget to also search booklets and catalogues. If you think this is too much time invested for you or you want to make sure it is done properly, you can hire a professional to do the search for you. Finding out what other similar inventions are in the world, if there is the case, will also help you not to infringe on another patent with your invention.
No matter how proud and enthusiastic you are about your invention, it is extremely important not to make the mistake of publicly revealing details about your invention. Otherwise, you may not have the possibility of obtaining a patent for it.
Revealing information about your invention might include any type of disclosure from an article in the newspaper or an advert, to talking to people or giving a simple demonstration to your friends or colleagues.
If you need to reveal certain details about your invention, either it is to a businessman from which you need funding or to a fellow colleague that could offer you an opinion, ask them to sign a confidentiality agreement before starting any discussion. Such an agreement can be drafted by a patent attorney or a solicitor and it legally obligates the person signing it to treat whatever you are talking in confidence.
There is no need for such an agreement with your solicitor or patent attorney since what you are talking with them is already confidential. You might also be contacted by invention promotion companies during your application process. Treat this with extreme caution and make sure you are careful about what type of details you are revealing to them.
Obtaining a patent for your company, might or might not be the smartest move you have ever made. The process is difficult and expensive and a patent does not guarantee the success of your business. So, before deciding to apply for an invention patent, seek professional advice from either a patent attorney or other IP advisory. He or she are the most entitled to tell you whether your invention is patentable and if a patent is the right type of IP protection for you.
If you decide to go with an invention patent and to use the service of a professional on the way, the next step is the preparation of your application which includes:
- Invention description – a description of your invention made in writing that has the role of explaining to other people how your invention works, how it can be used and how it was and can be made.
- Technical drawings – the description needs to be accompanied by technical drawings to illustrate the details presented in your description.
- Claims – Single sentences including legal statements that set out the distinctive technical features of your invention.
- Abstract – The abstract is a summary of your invention including all the important technical details.
The next step is filing one copy of your patent application and the Form 1 ‘Request for grant of a patent’ with the IPO, which can be made by you or a patent attorney if you choose to hire one.
If you are filing for an invention patent and you are not the inventor, you will also need to file a Form 7 ‘Statement of inventorship and of right to grant of a patent’ explaining why you would have the right to obtain the requested patent. Form 7 can be filed within 16 months after the date you have filed your application.
If you consider you don’t have the financial resources or that you can manage the application process by yourself, you can choose to apply for an invention patent without the assistance of a professional. Still, this might diminish your chances in receiving your patent since the patent specification is a legal document that needs to be drafted properly and might require a specialist.
It is important to know that a patent for which you have applied for in UK will protect your invention only in the country. If you need your invention to be protected abroad, you need to apply for a patent in the countries where you need protection.
Any foreign patent application that you make within 12 months from the date you have filed your patent application in UK can be given the same priority date as your national application. While it might not seem a big deal, you need to take into consideration that if someone else applies for the same invention in the same country where you have applied, the patent will be granted to the solicitor with the earliest priority date.
The broadest deadline that you need to comply with to be able to apply for patent in a foreign country is 18 months after the date you have filed your patent application in UK. After these 18 months, your patent application will become public and you might not be able to obtain a patent for the same invention in another country. Because patent applications in general, and in particular regarding foreign countries, are difficult to obtain, it is recommended to talk to a professional IP attorney or advisory before applying.
Your patent application enters the search stage only if you or your professional IP advisor or patent attorney are filing the Form 9A with the IPO, paying the associated fee and requiring the search. All these must be done within 12 months from the date you have filed for your patent application. If you are late, your application will be terminated.
There is an exception to this case and that includes application with declarations of priority. In this case the Form 9A must be filed either within 2 months from the filing date or within 12 months from the priority date (whichever is later).
After the request for search has been received by the IPO, your application is examined against relevant published documents. The purpose is to determine whether your invention is actually new and inventive or it is similar to something that has been already patented. The IPO search report will be sent to you in six months after your request including the results and details regarding what is not ok with your invention, if that is the case.
When filing your application you need to take into consideration that your patent application will be published in 18 months after the date you apply. Exception makes the case in which your application does not meet the legal requirements and it is terminated or the IPO receives a withdrawal request from you during this time.
Using the services of a patent attorney or advisor when applying for an invention patent will help you avoid having your data made public along with your application (name, address). If you file the application, your data will be made public when your application is made public, if all the legal requirements are met, and they will be accessible on IPO records and the Patent Journal. Also, all the correspondence and documents between you and the IPO is also open for public inspection when the patent application is published and will be available on the IPO website.
You can indicate PO Box number or a different permanent address for the correspondence with the IPO if you prefer to keep your personal address private. Be aware to the invention promotion companies which are usually contacting every applicant after the applications are made public and are offering all kind of services. Don’t agree with anything before consulting a patent attorney.
Whether you decide to use the services of a professional IP advisor or not, in order to get your application to the next step you need to fill in and file Form 10 with the IPO and request a “substantive examination” of your application. You also need to pay the appropriate fee and do all these within six months after the publication of your application or your patent application will be terminated. After your application has been examined, you or your professional IP advisor will be informed if modifications are necessary and how much time you have to make them.
Patent applications that are considered to comply with all the requirements included in the Patents Act 1977 generally are granted the invention patent. In this case IPO sends a certificate to the applicant and the invention is being published in its final form.
Once the patent has been granted, the applicant or owner of the patent is the sole responsible of renewing the patent and protecting it against infringement. IPO does not have any involvement in this matter. It is important to consult an attorney before taking any action against a person or a company infringing on your invention.
To maintain your patent you need to pay annual renewal fees which increase every year. The fees are smaller in the first years of your patent to allow you to deal with your other costs including producing a prototype, obtaining the patent, etc. and start benefiting from your patent.