New Inventions 

If you invent a new product, process or method of achieving a result, you may be entitled to protect that invention with a patent.

What is a patent?

A patent is a registered intellectual property right which can protect an invention. A patent provides the inventor(s) or the inventor’s successors in title (the applicant or patentee) with the exclusive right to make use or sell the invention for a period of up to 20 years. In exchange for this right, the applicant provides a specification (or specifications) with a sufficiently detailed description of the invention to the Intellectual Property Office. The specification will be made publicly available during the process of applying for a patent.

If you have an invention you are interested in protecting, please contact us now for your free half hour consultation.

What can I get a patent for?

Patents are only granted for inventions which are new and non-obvious.

Invention

A patent will only be granted if the subject matter relates to an invention. An invention is something of practical commercial application. Purely artistic and literary works are not patentable, but a wide range of subject matter is able to be protected by patent. Examples of subject matter which has been patented include: mechanical devices, including saw mills and side lifters; chemical compounds, including those useful as pharmaceuticals such as amoxicillin; protein and DNA molecules; methods of manufacturing or preparing any of the preceding; horticultural methods, such as a process of killing weeds; new uses of known compounds; and biochemical processes, such as processes of producing acetone by fermentation.

New

In order to be patentable, the invention must also be new at the date at which a description of the invention is originally filed (known as the priority date). This means that the invention cannot have been publicly used, or published in documentary form anywhere in the world. In addition prior commercial use of the invention, even if it is secret may mean it is not possible to obtain a patent.

It is important that potential applicants do not sell the invention or disclose their invention, except where the disclosure is clearly confidential, until a patent application is filed.

Non-Obvious

Even if the invention itself has not been published, if it obvious over what is has been published or publicly used then it will not be patentable. Whether an invention is obvious is assessed by a notional person skilled in the art.

Searching

It is advantageous for a potential applicant to perform a search to determine whether an invention is new or non-obvious over what has been publicly used or published (the prior art), prior to applying for a patent. Such searches can be conducted using a freely available search engine such as Google patents. Uncovering a particularly relevant piece of prior art can be disappointing, but it could save money in the long run. It is far more disappointing to have spent a great deal of money obtaining a patent, only to find that there is relevant prior art.

If the search does not discover any relevant document or use, this does not mean that such a document or use does not exist. Because the document or use could be anywhere in the world, it is impossible for any search to be 100% complete. However, patent attorneys or other patent search experts have techniques and tools to allow them to conduct a more thorough search of the global databases for any relevant documents. At what stage of the patenting process you should engage such a search professional will depend on the individual circumstances.

If you have an invention you are interested in protecting, please contact us now for your free half hour consultation.

Who can apply for a patent?

The inventor or the inventor’s assignee can be an applicant for a patent. Employers can apply for a patent on an invention invented by an employee, but only if the invention was developed in the course of their employment. It is advisable that the ownership of IP rights be addressed in the employment agreement - often rights to an invention are assigned to the employer by virtue of such an agreement.

Even if there is a clear employment agreement, it is also advisable that specific intellectual property rights be the subject of a separate assignment agreement. Such an agreement should be signed by both the inventor and the person to whom the rights in the invention are assigned at an early stage of the patenting process.

If you have an invention you are interested in protecting, please contact us now for your free half hour consultation.

How do I get a patent?

Application accompanied by a Provisional Specification

The first step in obtaining patent protection is usually to file an application accompanied by a provisional specification. Such an application does not provide any positive rights to an applicant, but sets a priority date for the invention. Disclosure after this date will not be taken into account when assessing whether an invention is new or obviousness. Thus once a provisional specification is filed it is possible to begin marketing your invention.

A provisional specification is required to provide a description of the invention. It is important that a provisional specification describe an invention in as much detail as possible as only subject matter described in the provisional specification will be entitled to the priority date.

Complete specification

Within 12 months of filing the application accompanied by a provisional specification, it is necessary to file a complete specification. The date on which the complete specification is filed at the Intellectual Property Office is known as a filing date.

The complete specification needs to describe the invention in terms clear enough and complete enough for the person skilled in the art to perform the invention. It is also necessary to disclose the best method of performing the invention known at the time of filing.

The complete specification ends in a claim or a series of claims. These claims define the scope of the monopoly for the granted patent.

International Patent Protection

There is no such thing as a global patent. It is necessary to obtain a patent in each jurisdiction where you wish to pursue the invention.

Most countries are signatories to the Paris Convention which allows an applicant to rely on an earlier filed application in another Convention country to provide a priority date. Thus it is possible to rely on the provisional application to establish your priority date. However in order to do so it is necessary to file an application directly into the country(s) of interest within twelve months.

An alternative to filing directly into each country of interest is to file an application under the Patent Cooperation Treaty (PCT). Again, in order to claim priority from the provisional application, this application will need to be filed within 12 months. By filing a PCT application the time period for filing individual applications in each jurisdiction (called entering national phase) is extended by (in most cases) a further 18 months.

When filing a PCT application it is necessary to nominate an International Searching Authority who will prepare a search report and opinion on the claimed invention.

Publication

It is not possible to keep an invention secret indefinitely and also obtain a patent. In most jurisdictions, the specifications will be published 18 months after the earliest priority date. If an applicant does not wish their invention to be published, it is possible to withdraw the application prior to that date.

Examination

In most jurisdictions an application for a patent will be examined by the Intellectual Property Office for compliance with that jurisdiction’s laws; including whether the invention is patentable subject matter, new and non-obvious. In some jurisdictions examination will happen automatically, while in other it will be necessary to request examination. Once the Intellectual Property Office is satisfied the application meets the requirements of the law, assuming no third party opposes the application, a patent will be granted.

If you have an invention you are interested in protecting, please contact us now for your free half hour consultation.

How do I enforce my patent?

A patent cannot be enforced until it has been granted, at which stage it is entered on the register of patents. In some cases this is sufficient to deter competitors from performing the invention. However where it is not, it may be necessary to enforce the patent against an infringing party. The onus is on the Patentee to enforce their patent rights.

Do I need to use a patent attorney?

Although an applicant may act for themselves, it is usual for an applicant to utilise a patent attorney throughout the patenting process. In most countries only an appropriately qualified Patent Attorney can act on behalf of an applicant.

A patent specification is both a technical and legal document. It has to describe the invention in technical terms, meet the requirements of the law and ensure that the applicant is granted an appropriate monopoly. Patent attorneys are trained to achieve these three results. Too often when an applicant does not use a patent attorney the scope of the monopoly achieved is too narrow and it is too easy for a competitor to avoid the patent.

If you have an invention you are interested in protecting, please contact us now for your free half hour consultation.

January 2015

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