Jeremy Smith is a Patent Attorney with Mathys & Squire LLP, and works out of the company's Cambridge office. Mathys & Squire is a commercially focused law firm, with a wide range of international and UK based clients. The company has attorneys specialising across the full range of technologies including the life sciences and IT and engineering.
Intellectual property is a central part of a company’s business plan. It is important to know the types of intellectual property available, what they protect and how they can be exploited commercially. In a technology-based business, patents are a key form of intellectual property protection.
Legally, a patent is a time-limited monopoly that is granted in return for public disclosure of a new invention. A patent owner has a right to exclude others from exploiting the patented invention for a limited period - typically 20 years.
In commercial terms, however, a patent is far more – it is a piece of property that adds financial value to a business and that can be used as a commercial tool. Like other forms of property, it can be sold or ‘rented’ out (‘licensed’). A patent can be used as barrier to others entering a lucrative market, as leverage to gain entry to a market and as a marketing tool to promote a product’s unique selling point.
What do you want to protect? How will protection be commercially beneficial?
When a new invention has been conceived a decision has to be made on whether it is worth seeking patent protection and, if so, what implementations of the invention it is most important to protect. Here it is useful to take a commercially-focussed approach to determine the potential value of patent protection and what, ideally, should be monopolised through patent protection. A few typical questions to ask include:
- What products/processes will the invention be implemented in?
- What other products/processes might the invention benefit in markets other than those that you are currently involved in?
- How will the invention give the products/processes a commercial edge?
- Which of the products/processes are of the most commercial value?
- Are there any other technical ways in which similar benefits can be achieved?
- How easy would it be for a competitor to discover the invention when it begins to be exploited commercially?
- Would companies in other markets be willing to pay a premium to use the invention?
The importance of confidentiality
When a patent office makes a decision to grant or refuse a patent for an invention, it will do so (in most countries) based on whether that invention, or a very similar invention, has been made available to the public, in any form, prior to the date on which a patent application was filed for the invention. If an invention has been made available to the public before this date, even by the inventor, then it could prevent grant of a valid patent for the invention.
It is vital, therefore, that an invention is kept confidential prior to filing a patent application.
To search or not to search
Just as market research is important prior to investment in a new product, before filing a patent application it is advisable to carry out research into whether a competitor, or anyone else, has already come up with something similar to your invention.
One option is to engage a professional searcher to carry out a ‘novelty’ search, to look for similar inventions that are already in the public domain. However, while a professional search can, if it finds something of particular relevance, save the expense of filing a patent application, the cost of having a professional search conducted can be significant and cannot be guaranteed to find everything of relevance. If the search fails to find anything relevant then the cost of filing the patent application still has to be incurred.
Where budget is a limited, therefore, it is generally better to use that budget to ensure the patent application is as strong, and hence commercially valuable, as possible.
Even if there is insufficient budget to engage a professional searcher, it is worth spending time doing your own research. There are several free patent research resources available that provide access to the same databases that a professional searcher would typically use, albeit in a more limited manner. A particularly useful search tool is provided by the European Patent Office.
It is worth spending time familiarising yourself with this (or a similar) search tool and carrying out some searching to satisfy yourself that your invention is indeed new before engaging a patent attorney to prepare a patent application or to obtain a professional search.
Preparing and filing a patent application
The preparation of an application for the patent is the most important part of the patenting process because the way in which an application is prepared affects the chances (and cost) of getting a granted patent and the commercial value of any patent that is granted. This is the most important time, therefore, to invest in professional advice.
Whilst professional advice can be expensive, there are a few things you can do to keep costs down.
Providing technical content piecemeal while a patent application is being prepared can increase costs and should be avoided. If possible, therefore, provide your attorney with all the relevant material, including relevant search results and then agree a budget, before work on the application begins.
A patent application must include a detailed description of an invention. Costs can be kept down, therefore, by providing the attorney with a clear and concise written description of at least the most valuable implementation of the invention. The description should avoid (or explain) any industry specific jargon and should explain the background to the invention, the benefits the invention provides, and the features that provide those benefits. The emphasis should be on clarity – the description need not be particularly detailed (too much extraneous detail can add to the cost).
A good attorney will be able to fill in any gaps, and convert even the most rudimentary description into a form suitable for filing as a patent application. However, the more time an attorney spends researching an invention and deciphering unclear or ambiguous description, the less time they will be able to devote to preparing the application within an agreed budget.
After a draft application is completed it is important to review it carefully, before filing, to ensure that it is technically accurate and that it covers the products/processes that you will have discussed with your attorney.
It is worth requesting a UK patent office search when a patent application is filed. A UK patent office search is subsidised - costing less than £200 (a fraction of the cost of a professional pre-filing search). Such a search can provide an early indication of the strength of your patent application (albeit after the cost of filing the application has been incurred).
Patents are territorial and, within the first year of filing a patent application, further patent applications may be filed, to seek protection overseas, that can benefit from the filing date of your initial application. After the first year, your initial application, and any further applications based on it, will be published and subject to patent office examination before any patent is granted.
The options for protecting your invention overseas and the subsequent process will be discussed in more detail in a follow up article.