The Inventor’s Guidebook
European Patent, Trade Mark and Design Attorneys
FRKelly is a leading specialist in intellectual property law, with offices in Dublin and Belfast. Working with world-class institutions, corporate clients, academic and research institutes and SMEs, we offer a range of patent, trade mark, design, domain name, copyright and renewals services; always with a professional and client-focused approach. We understand how best to protect your intellectual property, not just in Ireland, the UK or Europe, but all over the world.
Contact us Dublin T: +353 1 231 4848 E: dublin@frkelly.com Belfast T: +44 28 9023 6000 E: belfast@frkelly.com www.frkelly.com
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Patent Fundamentals
Intellectual Property Intellectual property (IP) is a type of virtual property owned by an individual or a company. It is a virtual property because it refers to creations of the mind, as opposed to physical property. However, like physical property, IP can be sold, mortgaged, transferred, or exchanged. IP falls under the broad headings of: Patents Trade Marks Designs Copyright
Patents A patent is an exclusive legal right given to the owner to exclude all others from making, using, or selling an invention for a certain period of time, usually 20 years. In return, the inventor must disclose the invention so that it is free for all others to use when the patent expires.
Purpose of a patent The purpose of the temporary monopoly given by a patent is: • To encourage research and invention. • To enable the inventor to recoup the costs of invention, development, production and marketing of a patented product. • To encourage dissemination of technology and know how, by inducing the inventor to disclose details of the invention through publication of patents. • To provide an incentive for investing in research.
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The Patent application process
Assessment The first stage of the Patent Application Process is to assess whether your innovation can be protected by a patent, and if the pursuit of a patent is warranted.
Filing a patent application To pursue patent protection, a patent application must be filed at the relevant Patent Office. Filing an application can establish an effective filing date, also known as a “priority date”.
Search The Patent Office conducts a search of information and disclosures relevant to the invention and a “Search Report” is compiled for the Applicant. It is also possible, prior to filing an application, to conduct your own search online.
Examination Based on the Search Report, a Patent Examiner carries out a substantive examination of the application to establish whether a patent will be granted. If the Examiner is not satisfied that the invention is patentable, an Exam Report is prepared, indicating the deficiencies in the application. Reply to the Examination Report is possible to correct the deficiencies.
Grant The Patent Office grant a patent when the application is corrected, and no longer contains deficiencies. The patent is granted for a given term, usually 20 years, and is subject to the payment of periodic renewal fees.
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Assessing your innovation
1.Innovation vs. Invention
Patents are granted for the technical workings of how things are made and how they work. However, patent protection cannot be secured for: • • • •
discoveries, scientific theories and mathematical methods; aesthetic creations, e.g. the way a product looks as opposed to how it works; schemes, rules and methods for performing mental acts, playing games or doing business, and programmes for computers; or presentations of information, e.g. signage/diagrams.
2.Patentable invention
To be patentable, an invention must: • be novel, • involve an inventive step, and • be susceptible of industrial application
4.Inventive step
An invention is considered to involve an inventive step if, having regard to the “state of the art”, it is not obvious to a person skilled in the technical field in question.
5.Industrial application
An invention is considered susceptible of industrial application if it can be made or used in any kind of industry.
6.Filing Strategy
3.Novelty
An invention is considered to be novel if it does not form part of the state of the art i.e. the invention cannot be known. The “state of the art” includes any publicly available description of the invention from anywhere in the world, before the filing of a patent application, and is known as “prior art”. KEEP
YOUR INVENTION NOVEL
DO NOT DISCLOSE YOUR INVENTION UNTIL A PATENT APPLICATION IS FILED
Patent protection is granted on a country-by-country basis, or across a certain regional jurisdiction, you should put thought to those countries in which you would like to pursue patent protection.
Preparing for a patent application
Defining your invention Before you engage a patent attorney to prepare and file a patent application for your invention, it can be helpful to clearly define the various aspects of your invention, and to set out in writing what those key aspects are. This process can help you to determine the essential elements of your invention, what function each of those elements or features performs, and thus what it is that you are looking to protect by way of a patent. Having to hand a well thought out technical disclosure of your invention, along with any sketches, photos or other representations of the invention, will also make your dealings with a patent attorney far more productive. In addition, your technical disclosure can provide a useful guide by which you can undertake some basic patent searching to try and establish if there have been any similar disclosures to your invention. An Information Disclosure Form provides a useful template for this exercise.
Carrying out your own patent search Before filing a patent application for your invention, it is advisable to undertake some basic patent searching to determine if the details of your invention are already known or perhaps obvious in light of some earlier similar disclosures. This is most effectively achieved through internet searches, both general and via specialist patent databases containing published patent specifications. Â Examples of patent specifications can be found at Espacenet, which is a freely accessible online patent database of the European Patent Office. You may also like to carry out a more general internet search to uncover any relevant prior art. Â Patent searches are most commonly performed using a combination of keywords. Bear in mind that the language used in patents may not always be the language you would consider most appropriate to describe the various elements of a particular invention, and thus the keywords you would consider appropriate may not return the most relevant results. It is generally advisable to read one or more patents in the general field of the invention to determine the type of language being used to describe the elements in question, and then modify your search keywords accordingly. Â
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Processing patent applications
Priority Filing a first Patent Application for your invention establishes a first filing date (known as a “priority date”). The “state of the art”, for search and examination purposes, comprises everything which has been made available to the public before the priority date. For foreign Patent Applications for the same invention, and filed within one year from the priority date, the filing date of the foreign Patent Applications becomes the priority date of your first Patent Application.
Search The Patent Office will conduct a search and establish a Search Report for you. Prior art relevant to your invention includes cited documents selected from the “state of the art”. The Search Report is a good indication of the potential patentability of the claimed invention, i.e. the chances of securing valid patent protection.
Examination The Patent Office conducts an examination of the Patent Application. Examination is based on the earlier conducted search, and is an assessment of whether the invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable. An Exam Report is established for you, indicating the findings of the Patent Examiner. If the Exam Report reveals that the invention is not patentable i.e. is not novel, does not involve an inventive step, or is not industrially applicable; you can respond with observations and certain amendments, to try and persuade the Examiner that the invention is patentable.
Grant If the Patent Office is of the opinion that the invention is patentable, it will decide to grant a Patent. The Patent will be granted for a given term, usually 20 years. The patent term will run from the filing date of the Patent Application. The granted Patent will remain in force, subject to the payment of periodic renewal fees to the Patent Office. The obligation to pay periodic renewal fees can begin before grant, during the Patent Application process. www.frkelly.com
Patent filing strategy
Determining a patent strategy In general, most applicants choose to initially file a Patent Application in their home country. While the cost can vary significantly, as a general guide, a first patent application will cost in the region of â‚Ź1800-â‚Ź2500 excluding VAT. Then, within one year of filing, an applicant can file foreign Patent Applications and date all such foreign Patent Applications back to the first filing date. Simply put, by filing a patent application in Ireland or the UK, you have up to 1 year to apply for a patent in another country. In practical terms, this gives you 7-8 months after filing for researching the potential market for the invention, e.g. approaching potential clients, advertising and selling the product, etc. It is important to note that no search report is prepared by the Patent Office during the 1 year period, unless specifically requested to do so. Up to the 1 year deadline, there are several different routes for obtaining patent protection in different countries, from individual national filings, to regional filings, such as a European Patent Application, or an International Patent Application. However, it is at this 1 year stage that patent costs begin to become more substantial and so it is critical that as much development and commercialisation of the invention as possible is carried out in the 7 or 8 months after filing, so that you can make the best informed decision in relation to the invention and the strategy adopted to seek patent protection in other countries, some options for which are set out below.
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Patent filing strategy
National patent application system Patent protection is granted on a country-by-country basis. A Patent Application must be filed at the National Patent Office in each of the countries in which you would like to pursue patent protection. The National Patent Office is responsible for processing the Patent Application in accordance with the national patent law in that country.
European patent application system The European Patent Office processes European Patent Applications in accordance with a common system of law known as the European Patent Convention (EPC). There are currently nearly 40 countries that are part of the EPC, and can be covered in a single European Patent Application. The European Patent is processed centrally, but once granted, must be converted into a national patent in each of the countries of interest. The European Patent Application procedure takes about three to five years from the date the application is filed.
International patent application system International Patent Applications are processed in accordance with a common system of law known as the Patent Cooperation Treaty (PCT). There are currently nearly 150 countries that are part of the PCT, and can be covered in a single International Patent Application. An International Patent Application is processed in two main stages: 1. The International Phase, where the International Patent Application is processed centrally in accordance with the PCT; and 2. The National/Regional Phase, where the International Patent Application is processed before a National Patent Office in accordance with the national patent law in that country.
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Assessment checklist
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Is patent protection the right option for you? Patents protect the technical workings of an invention, and are the right option should you wish to protect how your invention works.
Do you have a technical invention? In order to be deemed an invention, your innovation must have a technical character and belong to a technical field.
Is your invention new? Have you carried out a preliminary search to determine whether your invention has already been disclosed? Have you discussed the details of your invention with anybody?
Is your invention inventive? Does your invention offer a technical solution to a technical problem, and woudl that technical solution have benn obvious to try?
Have you considered the financial obligation associated with pursuing patent protection? The process of obtaining a patent can be relatively expensive, and you should consider if pursing protection is justified by the return from your invention.
Is this the right time to begin the patent process? Once you start the patent process, you will be restricted to certain deadlines, many of which are non-extendible.
Have you developed your invention? Have you resolved the details of your invention to enable you to sufficiently describe how your invention works?
What is the next stage? Having assessed your invention, if you require some assistance with your assessment, or if you have any further queries in relation to protecting your invention, please feel free to contact us, and we would be delighted to discuss your invention further with you. To help you to document your invention we have provided a useful invention disclosure form (IDF) which you should complete and return to us by email.
Contact us Dublin P: +353 1 231 4848 E: dublin@frkelly.com Belfast P: +44 28 9023 6000 E: belfast@frkelly.com www.frkelly.com
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