"Intellectual property" covers four main areas:
patents (how something works)
designs
(what it looks like)
trade marks (what you call it)
copyright (artistic
or literary expression)
These are of course simplifications. Where appropriate, a single item can be covered by all four elements. Hence a new lock mechanism could be covered by a patent for the mechanism, by a design for the appearance given to the outside, by a trade mark for a logo and by copyright for the installation instructions.
Generally speaking a patent is granted for a thing, or a process for making a thing. It will be useful or good in a very practical way so that it will be one or more of BCD: better, cheaper or different (in a functional sense) from what has been done before. That is, more effective, cheaper to make or simply different from existing products (but doing the same thing at the same cost). All are considered to be advantageous to the producer or consumer.
Successful patent applications must possess novelty or have more than an obvious improvement over the prior art, that is, what has been done or published or (if a patent) filed before the application in question. This is a generalisation and there are some exceptions to this, such as the American system, where, uniquely in the world, first to invent is the vital criterion.
In practice copyright and related areas can cover many other fields. "Industrial property" is an expression used when the first three aspects are meant. It is sensible to consider what kinds of protection through the intellectual property system are applicable to a new idea rather than to simply think "I need a patent". Patents are not always applicable, or indeed, advisable.
Some countries have utility models which are for simpler ideas, and may be called petty patents or some other name. They are usually not checked to see if they are new, and have shorter terms than patents such as for 6 or 9 years.
More information is available from the UK Intellectual Property Office about:
patents
trade marks
designs
copyright.
The UK Intellectual Property Office, which is responsible for granting patents, has several free brochures available on the subject. These may be at their web site or can be obtained by contacting the Patent Office. These should be read before trying to carry out a search to see if an idea has been done before.
Confidentiality
Any invention should be kept confidential until it is filed at the UK Intellectual Property Office. Anyone who is to be shown the invention, or to be given a description of it, should be asked to sign a confidentiality agreement . This does not apply to patent agents or other professional advisors, or to British Library staff helping a reader, who are automatically in a situation of confidence.
There is also a brochure by the UK Intellectual Property Office which is available on their web site, Confidentiality and Confidential Disclosure Agreements (CDA). It includes a draft confidentiality agreement which you may want to use.
Once the application has been filed there is no need to keep quiet about the invention, but many prefer to keep silence until, at least, the patent application is published so as to avoid alerting others to what they are planning.
Application
As inventions are checked for their novelty by their application date (and not date of invention) it is important to file an application at the UK Intellectual Property Office. Confidentiality agreements should be used before actually filing.
There is no charge for making this filing. Information on the forms needed are given at the UK Intellectual Property Office web site.
The application must include at least a description of the invention and the appropriate forms and fees. Within 12 months the claims outlining the monopoly requested must be submitted
Under British law you must file first in Britain (unless you obtain permission from the UK Intellectual Property Office). This is to maintain national security. There is no requirement to protect your invention in Britain should you wish to patent elsewhere instead, and you can withdraw the British application after applying abroad. This also applies to using the European Patent Convention system.
About 5 weeks after filing in Britain, a brief notice is printed in the Patents and Designs Journal (formerly the Official Journal (Patents)) giving the applicant's name, the date of filing and the filing number, and the title. The same information has normally been filed in a set of card indexes (now held on Floor 2 of the Business & UP Centre) for the current year and the previous 2 years. With a little time delay the information is also available on the Delphion database's Inpadoc option (now priced). This procedure is unique to Britain among major countries.
Applying for protection abroad
If you wish to apply abroad you can usually take advantage of the Paris Convention for the Protection of Industrial Property of 1883 (provided that the foreign country belongs to it) to obtain a priority date. The same procedure is now permitted to members of the World Trade Organisation.
Under this procedure the novelty date of your application can be used in the foreign country to secure an earlier novelty date than the actual application in that country. This is only permitted if carried out within 12 months of the original application.
Therefore if you apply in Britain on the 5 January and then apply in France on the 20 December your novelty date will be taken to be the 5 January. Anyone else who has applied in France (or indeed elsewhere) after the 5 January for that invention will have been anticipated by the original British application.
This facility is called applying under the Paris Convention. Applications must cite the priority details (country, date and filing number) of the original application and supply a copy of that application. Those wishing to take advantage of this facility must be citizens or residents of states which adhere to the Paris Convention or at least of the World Trade Organization as an alternative.
The priority details are printed in field 30-
It is normal to use patent agents to assist in making any foreign applications as the procedures and requirements can be complicated. Allowing for local laws you can file abroad at any time within the 12 months but in practice most applicants wait until almost the end of the 12 months. This helps to sort out the business strategy; to decide if the invention is new; to prepare translations; and gives the maximum term abroad as nowadays patents last 20 years from filing in nearly every country.
The same procedure is allowed for designs and trade marks under the Paris Convention but the time period is only 6 months in both cases.
There are two international agreements which can be used to avoid applying to each country separately, both of which Britain belongs to. Both began in 1978.
The Patent Cooperation Treaty or PCT allows an application to be made at 12 months by a resident or citizen of a member state. It is then published with a search report at 18 months with those states for which patents are wanted listed on it. The PCT system does not in itself grant a patent but it simplifies the procedure and delays expenditure such as for the preparation of translations, as it is only after publication that the countries need to be informed if the applicant wants to go ahead. Each country decides on whether or not to grant a patent which will then then appear in that country's system.
The European Patent Convention or EPC also allows an application at 12 months but
is mainly used by those who have applied to the PCT. All EU member states must belong,
and there are a few non-
Preliminary examination and search
Having received the application, the UK Intellectual Property Office checks that fees have been paid and that the application appears to be in order. Smudged drawings, for example, would mean a second filing.
A second fee is then paid for a search. The UK Intellectual Property Office carries out research in its files and/ or online to see if the invention appears to have been done before. In the case of Britain, they will search British patents back over 50 years and European Patent Convention and Patent Cooperation Treaty material back to 1978 when they started. In most cases the past 20 years of American patents is also searched.
The search is made for any evidence that the invention has been done before (novelty) or as a predictable improvement (obviousness). These may apply to part rather than all of the whole invention. Background documents may also be cited.
A search report citing relevant documents is sent to the applicant within several months. In Britain, photocopies of the cited documents are also sent. See search report for more information.
In Britain it is possible to submit a provisional application that lacks the claims provided that within 12 months of the priority date that the deficiency is made good.
An accelerated examination and search through the British system is now possible. This involves combining this stage with the examination by paying both fees together so that the whole procedure is greatly speeded up. Often patents are granted a few months after publication of the application.
Publication of the application
In most industrialised countries the application is published 18 months from the priority date. The UK Intellectual Property Office will not have rejected the application because of an adverse search report, although in practice many applicants withdraw before publication, not necessarily because it is not new. Provided that they have kept the invention confidential, applicants can still resubmit the application, or an altered application before publication. Any such applications will bear entirely new application dates.
Hence what has happened across the world is that applicants are filing abroad within 12 months of their domestic filing dates and each country publishes a specification, all being equivalents of each other in the patent family.
This publication releases details of how the invention works to the world. Before that date, each patent office has held the information in confidence, although the applicant could after the priority date have released details of how the invention worked if so desired. The United States is the only country that still uses the date of invention rather than the filing date as the crucial date. In cases of apparent conflict, an "interference" is declared and the parties are asked to provide proof of the date of invention to see who is considered the first.
The advantage of publication is that the world has a chance to know the details of
how the invention works and to avoid using the same ideas. Otherwise a granted patent
might suddenly appear, which will stop many companies who have expensively tooled
up to carry out what was supposed to be a non-
Examination
After publication the applicant can request the UK Intellectual Property Office to examine the application, that is, for the search report to be used to help decide if the patent should be granted.
If no request is made then the application is taken to be withdrawn and can never be patented (as it has already been disclosed). If a request is made then an exchange of letters begins to decide if the patent is thought acceptable. It is possible that the claims will be modified because of prior art.
In addition to novelty and obviousness the invention must be of a patentable nature and not for example a work of art, a scientific theory and so on.
If the applicant believes that the UK Intellectual Property Office is behaving unfairly over the application then a hearing can be heard in their own court. A defeat there can still mean that the case can be heard in the Royal Court of Justice's Patents Court.
Publication of grant
If the UK Intellectual Property Office agrees to acceptable wording for a granted patent then the specification is published a second time as a grant. The wording of the claims defines the monopoly allowed. In Britain and in most other countries, grant is simultaneous with publication.
Litigation is possible from date of grant. This means that the owner of the new patent can take out infringement actions against others, with some remedies (damages) being backdated to the publication of the application. It also means that others can challenge the validity of the new patent on the grounds that it is not new or has some other defect. In Britain, a validity action is possible at any time after grant. A successful challenge means that the patent is revoked (that is, is regarded as never having had protection). Partially successful opposition means that the patent is amended and is reprinted.
Strictly speaking it is only the granted specification that can be called a patent. The application is called a specification, or a description of an invention, as no protection has been given to it.
Renewal fees
In nearly every country the patent will have 20 years protection from the filing date in that country. This is subject to renewal fees being paid, normally annually, to each country's patent office. If the fees are not paid then the patent lapses from protection.
If good reasons can be given for renewal fees not being paid then the patent can be restored to protection.
Expiry of the patent
If all the renewal fees are paid then the patent will eventually expire at the end of the 20 year term.
Formerly extraordinary circumstances such as wartime conditions could be used to justify an extension to the term. This ended with the 1977 Patents Act.
A recent provision is that pharmaceutical or veterinary products, or now also plant protection products (fertilizers and pesticides) can have an additional period of protection after the end of their patent terms, depending on the time lost while waiting for permission to sell the products. These are usually called (in Europe) Supplementary Protection Certificates or SPCs. A single patent may have more than one SPC which is relevant. For further information see the UK Intellectual Property Office's brochure on the subject.
Trade secrets
Some companies prefer not to patent their inventions but rather to regard them as trade secrets. This usually applies to new processes where the technique is not obvious from the finished product, rather than for new products, and where it is felt that publication under the patent system would prematurely alert the world to the invention.
Licensing
Licensing is when someone leases the rights to a piece of intellectual property. It is particularly used by private inventors or small companies.
"Licenses of right" is a British phrase which can mean either the owner of rights having to agree to lease those rights, or the voluntary offer of such licensing where the owner pays half the normal renewal fees in exchange for licensing to all who ask.
Patent Agents
It is not a requirement in the UK to use a patent attorney (formerly an agent) to act for you in submitting a patent application, but most inventors are advised to do so, especially if they wish to apply abroad. The procedures may seem easy at first but it soon gets complicated, especially when prosecuting a Patent Cooperation Treaty application into the national phase. Patent attorneys will draft the application and prosecute the application through the system. They may also advise on the best strategy to protect your idea as fully as possible under the intellectual property system.
A directory of patent agents can be found at the Chartered Institute of Patent Attorneys (CIPA) site, or the local Yellow Pages will give details. Anyone calling themselves a "patent attorney" must be qualified and registered by CIPA.
Intellectual Property Clinics
The clinics listed by the Chartered Institute of Patent Attorneys in several cities offer inventors an initial discussion of their ideas with a patent agent, who will advise on the next steps. The sessions are free, and it is always necessary to check in advance when a place is available as some clinics have long waiting lists.
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