What is an invention that can be patented?

There are four requirements for something to be regarded as an invention for patent purposes. These are that it must:

1. Be new: it must not have been published or made known anywhere in the world previously.
2. Involve an inventive step: by and large this means that it must not be obvious to another person with knowledge of that particular subject.
3. Be capable of industrial application: an idea that cannot be made or used will not be counted as an invention.
4. Not be excluded: there are various categories that are excluded by law. These include something that is a discovery (that is, you found out about it, but did not invent it), scientific theory or mathematical method, mental process, literary, artistic or aesthetic creation, playing a game, presentation of information or some computer programs or mobile apps. Also anything that would be regarded as encouraging offensive, immoral or antisocial behaviour, a new animal or plant variety, or a method of diagnosis or surgery for animals or humans.

What is a patent?

A patent of invention is granted by a government body. It gives the owner of an invention the right to take legal action against others who may be trying to take commercial advantage of the invention without getting the owner’s permission. This right is granted in return for complete disclosure by the owner of his/her invention.

The body that grants the UK patent is the Intellectual Property Office* (IPO), formerly the Patent Office. A UK patent can last up to 20 years from the date on which you first hand over documents to the IPO. After the first four years, you have to pay a yearly fee to keep it in force. Note that the four years start from the date you first applied for the patent – and typically it takes five years to get the patent in the first place. A national patent gives protection only for the country in which it is granted.

If your invention is of a type that you believe you may want to exploit throughout Europe, not just in the UK, it could be cheaper to take advantage of the European Patent Convention. This allows you to obtain patent rights in a number of European countries. You need to make only one application (still to the Intellectual Property Office), whereas if you applied for a UK patent first, you would then need to apply for patents in each of the individual countries you thought important.

If you operate your business as a company, you can opt to pay a special lower rate of corporation tax (10 per cent) on income you make from eligible patents. For more information, see the HM Revenue & Customs* web site or contact an accountant*.

Can you get a patent?

The main criterion for granting a patent is whether or not the invention meets the four guidelines about what an invention is (see p. 112).

One area you have to be particularly careful about is not telling anyone – apart from, in confidence, a patent agent* (also called a patent attorney) which would be a good idea – or publishing information about your invention before you file your application at the Intellectual Property Office. If your invention is not kept secret, it may mean that, even if no one else has thought of it, you will not get a patent.

Occasionally, even if you have been granted a patent, you may find that someone challenges it. This could be on the grounds that someone else had already thought of the invention and had made details of it public before you filed your application for your patent. The other person may have decided not to bother to apply for a patent. Making details of it public would include describing it in a trade journal, or exhibiting or selling it.

What does it cost?

Most inventors use a patent agent to help with the application. A professionally drafted patent application in the UK will usually cost between £3,000 and £5,000. Even in a simple case, it is unlikely that an application could be filed for less than £2,000. A global patent filing can cost £20,000 or more.

If you want to do it yourself, all the relevant forms and prices are available online if you search ‘UK patent application forms and fees’.

A guide to obtaining a UK patent

1. Keep silent about your invention, unless to a patent agent.
2. Complete and file patents form 1 in the Intellectual Property Office (there is no fee unless you are also applying for a search). With the form should be sent a description of the invention drafted in accordance with Intellectual Property Office rules, which specify the exact format. It must describe the invention fully and clearly enough so that a competent person could follow the description and build it or carry out the process. Enclose two copies, preferably typed and on A4-size paper. (If you regularly apply for patents, you could use the IPO’s online filing service.)
3. You will receive a receipt with the date of filing and a number. This gives you your priority date, which gives you precedence over the same invention being filed later. But this is no guarantee that the same invention has not already been publicised elsewhere by another person (see below).
4. During the next year, examine the commercial possibilities and decide whether to press on with your application or let it lapse.
5. If you make an improvement to your invention, you cannot add it to your first application but would have to file a new one. However, as long as you do this within a year of the priority date, that date will apply to whatever is in the new application that was also in the first application. The first application can now be allowed to lapse.
6. Within a year of the priority date you need to file a request for a preliminary search and examination on patents form 9, together with the required fee. If you do not do this, your application lapses. You will also need to file the patent ‘claims’, which define in words the monopoly sought, and an ‘abstract’, a short summary of the invention.
7. Once the search has been carried out by an Intellectual Property Office examiner, a search report will be issued. This is a list of relevant documents so you can compare your invention with others and decide whether your application is likely to be successful.
8. If you do not withdraw your application at this stage, your application will be published by the Intellectual Property Office without any changes.
9. Within six months of publication of the application, you have to file the next form (form 10), plus the required fee. There is now a much more detailed examination of your invention.
10. As a result of this substantive examination, amendments may be required by the examiner. If these are carried out satisfactorily and within the required time, the patent will be granted. Typically, it takes five years from application to grant of patent. Accelerated processing of patent applications is available for inventions that relate to ‘green’ technology.

What protection does design right give you?

Design right means someone else cannot copy the shape or configuration of an article if it is an original, non-commonplace design. Design right does not apply, for example, to items such as wallpapers or textiles (but these may still be protected by copyright and you may be able to register them).

Design right protection lasts for the shorter of ten years from the end of the year in which you first start selling articles made to the design, or 15 years from the end of the year in which you created the design.

You have an exclusive right for the first five years after you start selling the articles, and in the remaining five years others can obtain a licence to the design – but you don’t have to hand over drawings or know-how.

The limits to design right are that something you design to fit or match an article designed by someone else won’t get protection, and design right protection applies in the UK only. However, some countries accept UK registration as equivalent to a registration in their country too or as establishing a priority date for a local application.

What is a registered design?

Registering a design gives you a monopoly right for the ‘look’ of an article or set of articles manufactured from the design. The protection lasts for 25 years, but you must renew it every five years.

You can’t register a design either if the outward appearance of the article is not important or if the shape of the article is determined by the shape of another item. And the design must be ‘new’, otherwise registration won’t be granted. For this reason, it is important to keep the details of the design secret before you register; if you have not done so, it will not count as new.

What does it cost?

To register a design as soon as possible, you pay £50 for the first design and £70 for up to ten designs. These are the costs if you apply online.

A guide to registration of a design

1. Keep silent about your design, except in confidence to a patent agent.
2. Tell the Intellectual Property Office what the design is and what is going to be made from it. You must do this with a copy of the design, for example a drawing or a photograph, in accordance with their rules. Remember to send the required fee.
3. The Intellectual Property Office carries out searches and assesses whether the design is original and new. If it is, registration is granted.

What is a trade mark?

A trade mark is something that identifies a product in the eyes of the consumer. The consumer will know who has manufactured the goods or who is selling them. Trade marks are closely linked with the idea of building loyalty among customers, so that they will choose your product or service over another similar one.

A trade mark can be a word or a symbol, such as a logo. Distinctive smells and three-dimensional shapes can also be registered as trade marks. Obviously, what you use as your trade mark should be carefully considered, as it needs to fit in with the image of your product and business that you are trying to put across.

How can you protect it?

You can register a trade mark with the Intellectual Property Office* (IPO). To be eligible for registration, the mark must be distinctive. A made-up word or a new symbol would be considered distinctive. Ordinary words would not; although after a number of years, with the advertising you put behind such a trade mark and the reputation for the product and business that you build up, the mark can acquire distinctiveness. Consumers will now recognise what was formerly an everyday word or name as identifying your product.

The registration process takes about four months if no one objects. Registered trade marks last for 10 years.

Registration entitles you, and only you, to use the mark. It gives you the right to take action against someone else to prevent their using it.

You can also obtain an EU-wide trade mark effective in all the member states of the EU by applying to the Office for Harmonization in the Internal Market*.

There are also some simple steps you can take to help to protect the mark yourself. For example, put the ® symbol beside the mark when you use it in advertisements or sales literature. It can also help to include a sentence such as ‘Microtops is the trade mark of Matthews Computer Stores’.

What does registration cost?

The cost will be £170 online but could be more if anyone challenges the mark. You can opt to use the Intellectual Property Office’s RightStart scheme (£200) which lets you pay half the fee when you first apply, with the other half payable only if you decide to go ahead. However, this would be for only one class of goods, and there are 45 altogether. If you intend to use your mark on more than one product, you may need to apply for registration in more than one class at £50 per extra class.

A guide to registering a trade mark

1. Consider whether the mark will distinguish your product from another. Is it similar to another mark? Could it confuse consumers about the nature of the product or service? Even if the mark is an ordinary word or name, do you believe that your reputation has built it up into a distinguishing feature for your product or service?
2. Apply to have the mark registered with the IPO. Include the required fee and a description of the goods on which your mark will be used.
3. The IPO considers the application; if there are any objections you will be told, so that you can decide what to do. If you have opted for the fast-track service, the IPO reports back to you within ten days.
4. Some 15 months after the application, the IPO will advertise the mark in the Trade Marks Journal. If there is no opposition, the trade mark is registered.

What is copyright?

Generally, you have copyright in any creative literary, musical or artistic work you create. This can include not just books, films, photographs, recording and so on but also, for example, content you create for your web site, computer programs and databases you create if they have an original element. Copyright is automatic – there is no need to register – and usually lasts from the time the work is created until 70 years after the year in which the author dies. (Databases can also be protected by database right which is similar to copyright but lasts only 15 years.)

Copyright gives you the economic right to benefit commercially from the work you have created. The benefit might come from your own use of the work. Alternatively, you might sell (assign) your copyright or, for a fee, license others to use your work. Copyright usually also gives you moral rights to be identified as the author of the work and to be protected from misuse of the work that would damage your reputation.

How can you protect it?

There is no official register for copyright and no need to register it at all. Some private firms run their own registers and offer to register your work for a fee, but there is little advantage for you in using these services unless the firm offers extras, such as legal help defending your right.

Wherever you use the work, it is sensible to mark it with the copyright symbol (©) followed by your name and the date the work was created.

Copyright is a private right and, if someone else uses your work without permission, it is up to you to decide what remedies to take. You could go to court but this is generally costly and time-consuming. The best first step might be to write a strongly worded letter to the offender, requiring them to stop using your material, with the threat of legal action if they do not. If the offender has used your work on a web site, print off the relevant screens so you have a record of the offence even if the web site is subsequently changed.

If someone disputes your claim to be author of the work, you may need to provide evidence that you are. You can establish the date at which the copyright material was created by posting yourself a copy using special delivery and leaving the package unopened. This can also be done by giving it to your solicitor to keep safe. However, this does not prove you were the creator, so you should also keep drafts and any other evidence that supports your claim to be the author.

The Digital Economy Act includes measures to help copyright owners take action against people who infringe copyright by illegally downloading material from the Internet. For example, Internet service providers (ISPs) can be required to monitor and provide a list of incidents where your copyright has been infringed in order to help you bring court action against the perpetrators.

What does it cost?

Nothing. Copyright is automatic without any need to register or pay fees.

Other chapters to read

3 ‘Who will buy?’ (p. 21); 11 ‘Names and brands’ (p. 121); 12 ‘Getting the message across’ (p. 131).