Patents and alternatives to patenting.pdf

An introduction to UK patent law for independent inventors.

The presentation covers the bargain between owners of inventions and the public whereby an owner is granted a monopoly of his or her invention in return for disclosing it sufficiently for it to be made or used by someone with the necessary skills and knowledge of the relevant technology.

The slides discuss the requirements for the grant if a patent, namely:
- Novelty
- Inventiveness
- Utility, and
- not to have been excluded on other grounds.

The patenting process is considered:
- search
- examination
- resolving disputes with examiners
- grant.

Sources of help such as patent attorneys and IP clinics are discussed.

The presentation mentions the European Patent Office and the Patent Cooperation Treaty.

The economic benefits of patenting an invention are balanced against the costs.

The presentation discusses innovations that cannot be patented such as new plant varieties, semiconductor topographies and data sets.

The presentation includes other ways of protecting innovation such as the law of confidence and the Trade Secrets Directive, unregistered design right and copyright.

Finally, there is a section on patent litigation in the Patents Court and Intellectual Property Enterprise Court.

1. Patents
and Alternatives to Patenting
Jane Lambert



19 Sep 2024
18:00 - 19:00

2. What is a Patent?
●A patent is a monopoly of a new invention.
●It is granted by a government to the owner of an invention as a reward for
teaching the public how to make or use it.
●If the invention is a product it is the exclusive right to make, market, sell,
import or use the product
●If a process, it is the exclusive right to use the process including marketing,
selling or importing products obtained from the process.

3. Patents as a Type of Intellectual Property
●A patent is a type of intellectual property.
●Intellectual property is the collective term for the bundle of rights that protect
investment in intellectual assets.
●Intellectual assets are
○Brands
○Designs
○Technology
○Works of Art and Literature
●Intellectual property rights include
○Trade Marks for brands
○Registered and unregistered design rights for designs, and
○Copyrights and rights in performances for works or art and literature,

4. The Patent Bargain
●One of the conditions for the grant of a patent is that every patent application
must contain a specification describing the invention, a claim or claims and
any drawing referred to in the description or any claim.
●The specification must disclose the invention in a manner which is clear
enough and complete enough for the invention to be performed by a person
skilled in the art.
●Failure to do so will prevent the grant of a patent or if the patent is granted it
may be revoked for non or inadequate disclosure,

5. The Patent Bargain
●Other conditions are that the invention is:
○new
○not obvious
○useful, and
○not excluded from patentability.
●One of the main exclusions from patentability are programs for computers “as
such”.

6. Claims
●Unless the context otherwise requires, an invention be taken to be that
specified in a claim of the specification.
●A claim specifies the extent of the invention.
●There are usually several of them in numbered paragraphs at the end of the
specification.
●When considering whether a patent has been infringed, the claim has to be
construed.
●It is then compared to the allegedly infringing item.

7. How to Obtain a Patent
●Professional Representation:
○Although it is not compulsory to instruct a patent attorney it is strongly recommended
○The IPO’s response to a Freedom of Information Act request last updated on 13 Jan 2017
showed that only a fraction of successful patent applicants between 2000 and 2015 were
unrepresented.
○Patent attorneys’ professional organization is the Chartered Institute of Patent Attorneys who
maintain a searchable database of members
○Attorneys are regulated by the IP Regulation Board
○A good way to meet patent attorneys are at IP clinics which are held throughout the country by
BIPC and PatLib libraries.
●Search for Previous Inventions
○BIPC and PatLib libraries

8. How to Obtain a Patent
●Patent Office
○European Patent Office (“EPO”) in Munich
○Intellectual Property Office (“IPO”) in Newport
●European Patent Convention
●Patents Act 1977
●Patents Rules 2007
●Application must be made in accordance with s,14
●Examination
●Appeal
●Grant

9. Overseas Patents
●A patent from either the IPO or EPO designating the UK affords no protection
outside UK
●Applicants for patents can apply to EPO for corresponding patents to be
granted in other EPC member states
●They can apply for unitary patents
●They can apply simultaneously to up to 157 patent offices around the world
through the Patent Cooperation Treaty (“PCT”).
●Applications are initially checked for patentability.
●If they pass the checks they are sent to national offices.

10. Costs
●These consist of:
○Office fees
○Attorney’s fees
○Renewal fees
●UK alone £5,000
●Research commissioned by EPO found that European patents designating
France, Germany, Italy, Netherlands, Sweden, Switzerland and the UK would
be about €30,530 compared to €10,250 for a comparable US patent
●A PCT application could cost over £100,000.

11. Advantages of Patenting
●Monopoly last 20 years so long as renewal fees are paid and the patent
remains in force.
●Patent controls market access which enables the patentee to recoup his
expense and perhaps obtain a little bit extra.
●Patents can be licensed or assigned.

12. Enforcement
●Patents Court
●Intellectual Property Enterprise Court (“IPEC”)
●TaylorWessing Patent Map states that the typical costs at first instance range
between £200,000 and £1 million.
●Recoverable costs in IPEC limited to £60,000.
●Prudent to obtain before the event insurance.
●Examiners opinions under s.74A Patents Act 1977.

13. Technologies that cannot be Patented
●Software
○Aerotel/Macrossan Guidelines
○Artificial Intelligence - Comptroller v Emotional Perception
●Semiconductor Topographies
●Data
●Plant Varieties

14. Alternatives to Patenting
●Trade Secrecy
○Common Law
○Trade Secrets Directive
○Can subsist indefinitel
○Reverse engineering
○Independent research
●Unregistered Design Right
○Shape or configuration of an article or part of an article
○Subsists automatically
○Limited to UK
○Licence of right
●Copyright
○Computer software

15. Questions
Jane Lambert
4-5 Gray’s Inn
Square
London WC1R 5AH
020 7404 5252
www.nipclaw.com