The language used by IP professionals can seem opaque to a person who has not had significant previous exposure to the field. This can lead to wasted time, and worse, persistent misunderstandings in correspondence between IP professionals and their clients. This article provides a very brief glossary of some of the common terms that are thrown around by IP professionals in the field of patents. Similar articles regarding Designs and Trade Marks will follow. Keep an eye on our Blog section.
An invention is patentable if it meets the requirements for patentability. These are:
- Inventive step
- Commercial applicability
Novelty simply means that the proposed invention must be new, meaning that it has not been disclosed before. This does not just have to be in a patent document, any published document can be used as evidence of disclosure, for example an academic paper or a textbook. Novelty is generally a less stringent requirement than inventive step, as it is relatively easy to come up with something that has not been disclosed before, for example you would probably stand a good chance of satisfying novelty by simply painting your device pink.
The requirement of inventive step is usually the most contentious as it is to a certain extent subjective. To show an inventive step a proposed invention must actually serve a useful purpose by solving a problem, and it must be non-obvious to ‘a person skilled in the art’. A person skilled in the art is a legal fiction. He is a hypothetical person who has at his disposal all knowledge pertaining to the field of the invention but has no creativity. While the idea of obviousness to a person skilled in the art can be a helpful test, it can by no means resolve all contention.
Commercial applicability and non-exclusion
Commercial applicability is self-explanatory and is generally not difficult to demonstrate. Basically, if somebody is prepared to give you money in exchange for the product or service that you are trying to patent, then it probably has commercial applicability.
Non-exclusion refers to the list of fields that are excluded from patentability by international law. These are:
- a discovery, scientific theory or mathematical method;
- a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
- schemes, rules or methods for performing a mental act, playing a game or doing business, and programs for a computer;
- presentation of information;
- a method of treatment of the human or animal body by surgery or therapy, and a method of diagnosis practised on the human or animal body;
- inventions contrary to public policy or morality.
Click here for more information on excluded subject matter.
Claims are the most important part of a patent document. They are sentences that define the extent of the legal scope of the protection granted by the patent. Claims are structured in a hierarchical manner. The most general statement that can permissibly be made describing the invention is listed as ‘claim 1’. Further statements follow this, each giving slightly more detail about how the invention works or including new features of the invention. These subsequent claims are known as ‘dependent claims’. They provide fallback positions during the process of having the patent granted in case the examiner does not allow claim 1.
All material referred to in the claims must have been previously mentioned in the description. This is the part of the patent document that provides context and supporting information for the claims.
A device is said to infringe a patent if it falls within the scope of protection granted by the claims. If you have a granted patent, and yet somebody is using your invention, then that person is infringing your patent. Therefore, you are entitled to take Court action to stop them. Click here, to find out more about infringement.
Examination is a procedure that forms a part of patent prosecution, that is, the process of getting a patent granted. During examination an examiner from the patent office carefully considers the claims that have been submitted in light of any prior art that he has discovered during the search. He then produces an examination report, detailing what objections, if any, he has against claim and listing the prior art documents cited against each claim.
Prior art refers to the sum of published knowledge available. Previously granted patents are often cited as relevant prior art. So are academic articles or theses, textbooks and other materials.
Hopefully, we have demystified some patents terminology used by IP professionals but please contact us with any specific questions, and we will tailor advice directly to suit your circumstances.