Frequently Asked Questions
(FAQs) (click on a subject and sub-menu)
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1) Patents |
Welcome to our FAQ section covering various aspects of Intellectual Property. These notes serve only as a general guide and are not designed to address any specific issues that you may be concerned with. In consequence, Baron & Warren cannot accept any liability or responsibility for any decisions or actions taken on the basis of these notes. However, we would be happy to discuss any particular matters of interest with you. |
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You are welcome at any time to print these pages and read them at your convenience. However, reproduction of these notes, other than for personal and private use, is strictly prohibited under Copyright law. |
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1) Patents |
Invention |
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q
Why
patent? q What is a patentable invention? q new at the time of filing a patent application directed to the invention; and q differs sufficiently from any previous work in the relevant field, i.e. it is more than an obvious departure from what is already known. q For most countries, including the UK and EEA states, an invention is new when it has not been published or publicly used anywhere in the world before the filing date of the relevant patent application. q Does a patentable invention need to be new overall? q No. An invention can be directed to improvements in existing technology. q What kind of inventions cannot be patented? q Broadly, any idea as such, i.e. a concept which is not applied to technology in any physical sense as, for example:- q scientific theories / mathematical methods; q literary and aesthetic creations; and q methods of doing business, mental acts and computer programs having no technical character, as such. q Certain other inventions including:- q methods of medical treatment; and q those of an immoral or antisocial nature. q What is the the significance of prior disclosure? q Prior disclosure of the principles of an invention to any member of the public, even by the inventor himself, destroys novelty and, therefore, the patentablity of an invention, unless the invention is imparted in confidence. q When should a search be made? q Before R&D to provide a reservoir of information from which invention may result q To assess the patentability of an invention q To obtain technical and commercial information about a competitor q To assess whether an innovation is an infringement of an existing patent. |
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q Who is the owner of an invention? q The first owner of an invention is the inventor or his assignee. q Where the inventor is an employee, any invention made by the employee belongs to the employee, except in the following circumstances, when it belongs to the employer, that is:- q it was made in the course of the normal duties of the employee or duties specifically assigned to him and, in either case, the circumstances where such that an invention might reasonably be expected to result from the carrying out of his duties; or q the invention was made in the course of the duties of the employee and at the time of making the invention, because of the nature of those duties, and the particular responsibilities arising from them, he had a special obligation to further the interest of the employer’s undertaking. q How is protection secured? q
In all
jurisdictions, protection is obtained through an application procedure
administered by an official government department (The Patent Office).
Various countries, excluding the q What protection is afforded by obtaining a Patent? q A patent gives the owner of an invention the exclusive right to:- q take legal action against others who may, without the authority of the owner, exploit the patented invention or an immaterial variant of it; and q authorise others to use it under agreed terms. q How long is the period of patent protection? q In most countries, 20 years from the local filing date subject to the payment of renewal fees which are usually due annually. q How does Utility Model protection differ from Patent protection? q Utility models are similar to standard patents but the protection afforded is between 6 to 10 years, depending on the country, and subject to the payment of extension fees usually on the expiry of an initial three or five year protection period. q How is protection obtained abroad? q Patents are territorial in nature and, therefore, a UK Patent does not secure patent protection abroad. Foreign patent protection is secured by filing separate national applications in countries of interest or via a single application procedure, such as:- q the Patent Corporation Treaty (PCT), which preserves the right, in most member states of the PCT, for 30 months from the filing date of the original application to prosecute patent applications (including EPC applications) in one or more of the member states; or q the European Patent Convention (EPC), which provides for the grant of a single European patent leading, after grant and subject to certain formalities, to the grant of a bundle of national patents in up to 32 contracting states to the EPC (see also Foreign Patents section) |
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q In brief, what does the application procedure entail? q
The procedure
for obtaining a patent in the q Filing q Novelty Search q Prosecution q What must be considered prior to filing an application? q The scope of the invention, that is, the technical features scope of the invention which merits protection. q The sufficiency of the specification describing the invention, that is, to ensure that the specification includes a full disclosure which enables a skilled reader to reproduce the invention. q The subject matter of a specification cannot be extended after filing a patent application so that every requirement that is needed to work the invention should be included in the first instance. q What is the minimum requirement for filing ? q A ‘minimum basis’ or ‘provisional’ application may be lodged at the UK Patent Office comprising merely a description of the invention and illustrative drawings, if any. q Such a ‘provisional’ application initiates a ‘priority year’, at the end of which further action must be taken. q What does claiming priority mean and what is its advantage? q
Before
the expiry of the ‘priority year’ (i.e. the period of 12 months following the
filing of the ‘provisional’ application) a further application may be filed
in the q What if there are any improvements or modifications of the invention during the priority year? q If improvements to the original invention are made, these can be included in a second or subsequent ‘provisional’ application with the possibility of filing a combined later application within the priority year established by the first filed ‘provisional’ application and claiming priority from each earlier ‘provisional’ application. q When does the search procedure commence? q When the ‘provisional’ application is completed by the filing of claims, and a Request for the Novelty Search, or when a new application claiming priority and including claims and a Request for the Novelty Search is filed. q The claims define the scope of protection sought and the novelty search is conducted on the basis of the claims. q What is involved at the search stage? q Once the search fee is paid, the Examiner conducts a novelty search of documents including previously published British, EPC, PCT and US patent specifications . q The search is designed to identify conflicting prior art (i.e. similar prior published technical information in the technical field relating to the invention). q The applicant may use the results to determine the probable scope of patent protection and whether or not to continue with the application. q When is the application published? q In most jurisdictions it is published as soon as possible after 18 months from the filing date, or the priority date established by an earlier filing, if one is claimed. q If available, the novelty search report is published at the same time as the application. q What happens during prosecution? q When the application and search report have been published, this triggers a 6 month period within which to file the ‘Request for Substantive Examination’. q The examination process involves a detailed assessment by the Examiner to determine, amongst other issues, if the invention is ‘new’ and whether or not the innovation involves an inventive step or is just an ‘obvious’ spin-off of existing technology. q What happens if objections are raised? q The application may be amended. q Arguments refuting the objections may be submitted, generally in writing. In some cases, a telephone conference or personal interview with the Examiner may be appropriate. q The application is either accepted or rejected. q What happens if the application is rejected? q The applicant may appeal. |
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q What is the significance of a Patent application being published? q When a patent is granted, the proprietor may be in a position to recover damages back to the original date of publication of the application as a result of any infringement during the period from publication to grant. q What happens once the Patent is granted? q Grant of the patent is published in the Official Journal of Patents and a certificate of grant is issued. q Why is the Grant of the Patent published? q This warns third parties that a legal monopoly has been granted for the claimed invention. q So that a third party can evaluate the scope of the legal monopoly granted. q Initiates the possibility for a third party to apply to revoke the patent. q What happens if a third party applies to have the Patent revoked? q Litigation commences either in the Patent Office or in the Courts. q What may be the result of an application for revocation? q The patent is upheld. q The patent is upheld with amended claims. q The patent is revoked. q There is provision for the losing party to appeal. |
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q What must be done to maintain the Patent in force? q
Following
grant of a q Any transactions involving patent rights, for example, concerned with change of ownership or licensing, should be recorded on the Patent Register to ensure the rights of the new owner or licensee . q What is the effect of not using the invention? q If, after 3 years from the date of grant of the patent, the patented invention is not being exploited to its full potential in the EEA, or the patent is hindering the use or development of new technology, the U.K. Patent Office may, upon application of a third party, grant a “compulsory” licence without the authority of the patent proprietor. q What types of licensing are there? q Essentially, there are two types of licence, an exclusive licence and a non-exclusive licence. An exclusive licence differs from a non-exclusive licence in that it allows the licensee to exclude all others, including the patent proprietor, from using the invention without his authority. q What is a licence of right and does it have any advantages? q A patent proprietor may, at any time, request that the U.K Patent Office to endorse his patent ‘licence of right’ in which case he must licence third parties under agreed terms or, if an agreement cannot be reached, under terms fixed by the Comptroller. q A patent proprietor may secure a 50% reduction of renewal fees if the patent is endorsed ‘licence of right’. |
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q How is a patent infringed? q A person infringes a patent if he does the following without consent:- q
uses,
makes, sells, offers to sell, imports or keeps the claimed invention in the q
supplies
or offers to supply in the q How can legal costs of patent litigation be limited? q The cost of patent litigation is high and, whilst the vast majority of patents are never involved in litigation, the proprietor with limited funds may well be put off patenting by this potential cost. However, it is possible to insure against patent litigation to enable the patent proprietor to sue alleged infringers or, to limit legal costs awarded against him, if he is sued.
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