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5.0

Based on 101 reviews

15:31 23 Jul 25

A truly exceptional experience – thank you Albright IP!

I want to personally thank Charlie Heal , Emily Fox, Cara McAtee, and the entire team at Albright IP for their hard work, dedication, and professionalism in helping me submit my first ever patent: the Baffer Ball fire suppression system.

From the very first meeting, Charlie and Emily made everything feel clear, comfortable, and respectful. They listened carefully to my ideas, even though I’m not from a technical or legal background – I’m a painter and decorator by trade. But they believed in my vision and treated it with such care and seriousness that I felt truly supported as an inventor.

Over several months, we worked closely by email and phone. Charlie and the team guided me step by step to build one of the strongest, clearest, and most professional patent drafts I could have hoped for. The claims they wrote are powerful, and the language used shows how deeply they understood my invention. They didn’t just file a document – they helped shape a legacy.

Charlie, even though he is young, is incredibly professional and experienced. I am amazed at how he managed such a complex project with kindness, patience, and precision. Emily and Cara were also fantastic throughout.

This was not just paperwork – this was my dream since childhood. And Albright IP helped me make that dream real.

💬 I look forward to working with them again on future patents. The Baffer Ball is just the beginning – and I am proud that Albright IP was there from Day 1.

Thank you so much again — from the bottom of my heart.
— Morteza

Jilna Shah

07:13 13 Jul 25

I've been working with Marc Maidment on pursuing a patent for my business, and I honestly couldn’t ask for a better attorney. As someone with no experience with the patent process and how it works, Marc takes the time to explain everything clearly and thoroughly, breaking down complex legal processes in a way that is easy to understand.

He’s not only incredibly knowledgeable, but also warm and approachable. No question has ever felt too small, and he genuinely cares about the success of my business. I’d highly recommend Marc to anyone looking for a dedicated, trustworthy, and skilled patent attorney.

Jon Baker

15:23 19 Mar 25

Albright IP have been brilliant from my first call all the way through to submitting our Patent Application. I look forward to working with them on future IP projects. Jon Baker - Design 360 Ltd

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Do I have to identify the designer?
It is possible to waive the name of the designer when filing a European Community Design, but you should be sure that you have the rights to the design

Costs

Why should you patent an invention?

When a prospective client approaches Albright IP, they usually have a reasonably clear idea about what they would like us to do. If they have a new innovation which they regard as an invention, then what they really want is a granted patent to protect it.

But occasionally, in fact rarely, we are asked, “What are the merits in patenting an invention?” and “Would it be better to keep my invention secret?”.

In some technologies, particularly software development, secrecy can be a useful tool. This may be because a patent is not actually available due to the lack of an inventive technical contribution, or it may be because a window of 18 months’ secrecy is not considered a sufficient enough market lead time before disclosing the invention in a patent application publication.

The reality is that secrecy can only work in certain circumstances for certain products and it relies on the highest levels of corporate trust. You may consider it risky to rely on securing years of expensive research and development under a veil of secrecy. If you start marketing a product, how long is it before clever, well-funded competition will get to the invention anyway? Is it 2 years, 5 years or 10 years? Or is it 20 years, as offered by a patent monopoly?

A patent is a monopoly right

The basic idea of a patent is that you disclose your idea to the patent office and if the idea is new and inventive, you are granted a monopoly for a limited period (up to 20 years). The other side of the bargain is that the idea is published 18 months after your application. This means that if the patent does not grant, or you let it lapse through non payment of renewal fees, that the invention is available for others to use. Secrecy is lost and you are not protected.

However, whilst you have the granted patent you have the sole right to work the invention, for example, to make it, use it, import it, export it, sell it and keep it.

You also have the option to sell it, or licence it to a third party for a fee.

Why would you want a monopoly right?

The ability to control an invention can lead to greater business success, because you can supply something unique. You can charge higher prices and hold back the tide of competition. Furthermore, it gives you a bargaining chip, should you want to take someone else’s invention which builds on your ideas. This is called cross-licensing and can be very effective. It is an exchange of technology on agreed terms.

If an invention becomes a standard way of doing something in a field, then it may be that the invention will be licenced under FRAND terms. You are paid royalties for the licence, but the terms must be fair, reasonable and non-discriminatory. These terms are necessary for the greater good, for example, to allow a future medical advancement, or to allow everyone to use the same technology in a mobile phone. They also protect the patent holder and reward their investment in research and development.

Can I sell a secret?

Yes, of course, you can sell or licence a secret. But it is difficult, because you are relying on corporate trust. Once the secret is blown, it is gone for good. There may be good recompense, but the monopoly is over.

Tax benefits of patenting

In the UK, profits from patented products attract large tax incentives. You may be able to reduce corporation tax on your profits from patented inventions by up to 50%. Combined with generous research and development tax breaks, innovative companies have a great incentive to develop their ideas and protect them through patenting.

The disadvantages to patenting

Most of the disadvantages to patenting that I have heard relate to cost of obtaining a patent. However, the real cost of patenting has reduced due to improved processes and competitive pressure on patent firms. Patents should be good value and really that can only be determined by the quality of the invention combined with good commercial exploitation. They are, after all, commercial tools.

Patents can take time to obtain, but this is not always disadvantageous. Sometimes it is good to keep your competitors guessing what the scope of your granted patent may be.

But the biggest disadvantage levelled at patents is the disclosure requirement. It’s true that a patent disclosure is meant to be enabling, that is a skilled person can put the invention into effect. But the requirement is to disclose the invention, not to make a viable product for your competitor. The difference between the two is not usually small. It could take a long time for someone to reach your stage of development, and if they do, then the patent should enable you to maintain your monopoly.

Cost of Enforcement

I am often asked about the cost of enforcement of a patent and if it’s practical. In most cases, IP disputes can be settled for a reasonably manageable cost, but IP insurance premiums are very good value and should be considered. They can help you defend your patent, but also be relied on in defending infringement allegations, should they arise.

Conclusion

There are no tax breaks for keeping secrets and a breach of confidentiality can be ruinous. In most technologies, secrets are not an option anyway, because a product sale or a marketing page on the internet does the disclosing and there are reverse engineers aplenty.

I’m a patent attorney, I love my work and I see patents as beneficial. Trade secrets have their place, but patents are powerful monopolies, they form an important part of corporate strategy and together with careful policies around public disclosure, they can deliver huge benefits for your firm.

If you need to defend or oppose a European Patent, please contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide you.

ASK AN EXPERT

4 Ways to Fund your Business

We are often asked if there are options to help fund the growth of a business. If you innovate, then the answer is yes!

Let’s take a look at some of the options:

1. R&D tax credits

Research and Development credits (cash back associated with the tax paid on development work!) are available in a surprising number of countries now, almost 20 at the time of this writing, including Austria, Belgium, Canada, Denmark, France, Ireland, The Netherlands, Spain, UK and even the USA.

These are claimable even if you are recording losses, but are still innovating or developing new products.

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The main criteria to qualify is quite straightforward – do you have any ‘technological uncertainty’ in your work? This is an extremely wide ranging criteria, and can apply, for example, to law firms developing in-house software to help with their internal processes, and to engineering firms taking new orders that require an iteration or two before the final product is ready to be mass-produced.

We talk to many engineering firms and software houses in particular which do not realise that they can make these claims.

And, are the claims difficult? Not really.

If you do not have the time to do the claim yourself, don’t rely on your accountant! For the first time, use someone with a technical (engineering or science) background who will work on a ‘no win/no fee’ basis.

With a technical background (which is the last thing an accountant has!), he or she will be able to drill down into the detail of your work to maximise your claim.

It can also be back-dated a couple of years.

And, it can be claimed annually.

After the first claim, if you then feel that you want to handle it yourself, you can crib the first claim.

Please feel free to ask for more information regarding these R&D tax claims, they are really are a no brainer to help fund your business growth.

2. Patent Box

The ‘patent box’ is still a relatively well-kept secret. For some reason, accountants still do not seem to be telling their innovative clients about this potentially lucrative tax reduction scheme.

In short, if you create an innovate product which is patented in at least one qualifying country, you can then claim 50% of your corporation tax back on worldwide sales of that part.

And, even better, if the patented item forms part of a larger product, the 50% corporation tax cut can be applied to the entire larger product!

For example, if BMW creates an improved air intake for the engines of their cars, and successfully patents it, then they can apply for a 50% company tax rebate on the entire vehicle that the air intake is used on.

And, better still, the tax cut is for worldwide sales of those BMW vehicles.

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Similarly to the R&D tax credits above, nearly 20 countries currently operate a Patent Box system or similar.

But, isn’t patenting something difficult and long winded?

Not necessarily, if you use some strategy!

With your patent attorney, by understanding what you actually want to achieve, he or she can tailor the patent specification to limit the likelihood of objections.

And, particularly in the UK, it is simple to accelerate the patenting procedure. The quickest I have had a patent granted to date is 7 months from first filing.

Please feel free to ask for more information, if this is of interest.

3. Kickstarter

This is popular peer-to-peer funding platform that many have now heard of. There are also plenty of copycat platforms providing a similar format.

With Kickstarter, you prepare your pitch to show the public your idea, the prototype, and the envisaged final product, and in return, the public can ‘pre-purchase’ the product before it’s actually ready. This pre-purchase funding then allows the creator to fund the actual building of the product.

So, what are the issues?

Firstly, many of the people who choose to fund a cool innovation do not realise that it is an investment, and not a sure fire purchase. As we well know from the various stock exchanges around the world, investments may decrease. It is a gamble. And Kickstarter is no exception. Many of the projects do not come to fruition or do not meet the minimum finding level required to release the capital to the creator.

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Secondly, a main reason that creators do not succeed in meeting their funding targets is that they do not know how to market their idea.

This is where a company called Funded.Today (www.funded.today) comes to the rescue. Although they will take a whopping 35% of the finally pledged amount, their expertise is in leveraging social media so that your Kickstarter pitch gains the traction that it needs. With that exposure, you are more likely to achieve and surpass the funding that you need.

Funded.Today has raised nearly $200 million at the time of writing, so they are definitely on to something.

Just remember, you need to have decided whether or not to patent your idea, and to have patent pending status for your creation if you are going to protect it, before you go live on Kickstarter. Follow this general rule of thumb, and you will not go far wrong. This is critical in most parts of the world.

4. Equity Release

Finally, let’s look at equity release.

Some banks (or their subsidiaries) are now able to take ownership of your intellectual property as security on a loan. Effectively, you are releasing equity in your patents and trademarks.

This is an interesting concept, and if you already have a patent portfolio plus are active in developing product, it is a potentially easy way to access relatively short term funding.

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Lombard Technology Services, for example, will base a loan on your R&D tax credit claims (see number 1 above) along with taking ownership of your intellectual property. Once the loan is repaid after an agreed, typically three to four years, period with a small amount of interest, the IP (patents, trademarks, designs, etc) rights are re-transferred back into your ownership.

Please feel free to ask for any further advice regarding any of the above options, plus other options that may be available dependent on your circumstances. Our passion is to see you succeed.

The Unitary Patent System and How It Affects You

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In Brief: Unitary Patent

When the Agreement on a Unified Patent Court (Agreement) eventually comes into force, a unitary patent will run alongside national patents and the classical European patent, having a unitary effect across all its signatory European Union (EU) member states.

Currently, 25 out of 28 EU member states are participating in the system, with the exception of Croatia, Poland and Spain. The Agreement, signed by the participating states on 19 February 2013, will enter into force after it has been ratified by at least 13 states, of which France, Germany, and the UK must be included. As of August 1, 2017, there have been 13 state ratifications, including France. However, Germany and the UK have not yet ratified – and the UK’s participation is now unclear due to Brexit.

It is hoped that the Agreement can enter into force by early 2018, but the result of the UK’s EU referendum on 23 June 2016 may have a bearing on this. If Italy replaces the UK as the third essential state, implementation is likely to require more time to complete preparation of the ratification and re-organising of the Unified Patent Courts.

Classical European Patent & Unitary Patent Compared

FILING

The new unitary patent has a similar application process to the classical European patent. Indeed, the European Patent Office’s (EPO) day-to-day search, examination and granting work will remain largely the same.

The implementing rules of the unitary patent will be based on the rules and procedures under the European Patent Convention, including remedies such as further processing and additional fees for late payment. When indication of allowance is received, just like the existing process, both systems would require the translation of claims into the other two of the three official languages of the EPO (French, German or English).

VALIDATION AND RENEWAL

When grant of the patent takes place under the classical European patent system, the patentee has to select the relevant contracting states of interest. Depending on national requirements of specific countries, local representatives may need to be engaged, official fees paid, and/or translations of the claims or the entire specification may have to be prepared. A renewal fee will need to be paid for each patent territory in the ‘bundle’, ensuring that the granted patent remains in force.

By contrast, if the new unitary patent system is chosen, individual validation is no longer required for countries that have adopted the unitary system. Thus, in theory it can be valid for up to 25 countries at once and it dispenses with the need to engage local representatives for countries that are in the unitary system.

Furthermore, translation requirements for the unitary patent will be much more streamlined. The long term goal is for the translation requirement to be dispensed with after the grant of the unitary patent. Only when there is a dispute, at the request of a court or an alleged infringer, will the proprietor of a unitary patent have to provide a full human translation into the relevant language.

Until this long term goal is achieved, however, the following translation requirements will likely be imple- mented for a transitional period (possibly up to seven years):

where the patent is granted in English, the patent owner will have to provide a translation of

the patent into any official language of the European Union;

where the patent is granted in French or German, the patent owner will have to provide a translation of the patent into

In addition, one renewal fee would cover all the signatory countries. For countries that are not in the unitary system, such as Croatia, Poland or Spain, the patentee can still validate in these countries individually and pay annual renewal fees as usual.

OPPOSITION

Currently, a nine month period is available for central post-grant opposition at the EPO. Following this peri- od, central revocation is no longer possible and local proceedings are required to deal with each patent in the bundle separately. Revocation of one of the patents in the bundle by a national court does not affect the remaining patents in the same bundle.

Under the unitary patent system, however, central revocation can be sought at the Unified Patent Court (UPC) even after the nine month period has elapsed, and it can lead to a unitary patent losing its rights across all corresponding states. Owners of a unitary patent can also bring infringement action at the Unified Patent Court rather than at the local court in each country.

When the UPC comes into force, there is a transitional period (possibly around seven years) where existing European patents in bundles can opt out of the UPC to preserve them as individual patents. Thus, patent owners can forum shop during this period. If not opted out, a classical European patent in a bundle can utilise the central renewal fee system in states that are participating states to the unitary patent, and utilise the UPC to bring an infringement action. However, the European patent will also be vulnerable to being attacked centrally at the UPC for the relevant member states.

For non-unitary patent states, the European patent will remain as individual patents and action has to be brought at national courts.

Potential Advantages and Disadvantages of the Unitary Patent

Clearly, it is more convenient to administer and maintain a single unitary patent than multiple national patents under the classical European patent system. As a single set of patent laws applies across all countries party to the unitary patent system, the scope is harmonised across all these countries. A single infringement action can be brought by the patentee at the UPC rather than an individual local action in each of the states where infringement is taking place. Procedures and costs are thus streamlined.

As validation is streamlined under the unitary system, the costs involved are thus lower than validating individually in these countries under the classical European patent system. The intention is for high quality machine translations to be used for unitary patents, avoiding costs for mandatory translation unless litiga- tion arises.

Renewal fees for a unitary patent are paid centrally, based on the cumulative renewal fees for the top four validation countries (currently Germany, France, the UK, and the Netherlands). Therefore, the renewal fee under the unitary patent system can be more cost effective than the classical European patent system if more than four countries are selected. Having said that, the ability to save on renewal fees by letting the patent lapse in countries that are no longer of interest would be lost under the unitary patent system.

Non-payment of the unitary patent renewal fee would cause lapse of right across all unitary patent states.

Another disadvantage of a unitary patent is its vulnerability to central attack at the UPC. If successfully revoked at the UPC, all rights are lost across all corresponding states. It is far more difficult and potentially more costly for a patent granted under the classical European patent system to be revoked in all states covered.

Certainly, having a bundle of separate national patent rights may be safer if litigation is likely. If so, patent owners should utilise the transitional period to opt out of the unitary system when the Agreement finally comes into force.

Also bear in mind that the unitary patent will only cover 25 member states, and the classical European patent system presently covers 38 member states.

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Extra [claims fees]! Extra [page fees]! New UK IPO fees – Read all about it!

Read all about it!

We may have come a long way since that line was first shouted (on a New York City street?), but this article really is all about the extras. In this case, it is extra claims fees and extra page fees that are particularly noteworthy, and soon to be introduced by the UK Intellectual Property Office (UK IPO).

To give you some background, the UK IPO ran a consultation (discussed here) earlier in 2017. Now, they have finalised their plan in view of the responses to that consultation (including one from our very own Freddie Noble).

Are costs going to go up?

The short answer is yes, official fees will be going up, and new fees are going to be introduced. However, the fee increases are not projected to be significant for most patent applications, and you probably won’t be affected by the changes. The changes have been specifically targeted to catch the longest UK patent applications; for example, chemical-related patent applications, which often run to hundreds of pages.

The key changes are the intended introduction of excess claims fees and excess page fees. The UK IPO has amended their proposal and now only intend to charge £20 per claim (due when requesting a search), but the first 25 claims are still free. Most UK patent applications have fewer claims than this, so it should not make a difference for the majority of applications. Unless you have multiple inventions, there probably isn’t going to be an extra cost here.

Similarly, excess page fees will now be charged at £10 per page (due when requesting examination), but the first 35 pages are still free. This essentially mirrors the European Patent Office approach, but again, most patent applications have fewer pages than this, so it should not make a difference for the majority of applications.

If the number of claims and/or pages goes up during prosecution, then extra fees may be due in order for the application to grant. It is unlikely that this will lead to a large grant fee, especially given that you cannot add matter to a patent application after filing, and it is more common for the claim or page count to decrease before grant*.

Other minor changes include modest increases to the official application fee, search fee, examination fee and renewal fees (when renewing at the 12^th year or later).

When are the changes going to take effect?

The government will need to change the existing Rules and Fees Rules before the changes take effect. If things stay on schedule, the changes are planned to come into force from 6^th April 2018, and will presumably apply to all existing and future patents and patent applications.

What that probably means is that any application filed before that date, but searched, examined and/or intended for grant after 6^th April 2018, could be subject to excess claims fees and/or excess page fees. However, as mentioned above, most patent applications do not have more than 25 claims, or more than 35 pages, and so the additional fees will only affect a minority of applications.

In any case, the fees are still very modest compared to European patent fees, for example. So, whilst costs are increasing, the title should probably read “Minimal extra [claims fees]! Minimal extra [page fees]! Read all about it!”. Patenting in the UK is still going to be very cost-effective, and it is an excellent jurisdiction in which to file your initial patent application.

If you would like detailed advice on these changes or any other aspect of intellectual property, please contact us to speak with one of our experienced patent or trade mark attorneys.

*That doesn’t mean that you will be able to delete pages/claims to get a refund!

Should I write my own patent application? Part 2

Often, cost is a key factor for patent applications. It can be tempting to save costs at the start of the process by writing your own patent application and applying for a patent yourself. However, making errors in the initial application can cause headaches years down the line. The first instalment of this article (“Should I write my own patent?” – August 2013) touched on some of the points to bear in mind.

Well, should I?

In January 2017, following a ‘freedom of information’ request received by the UK IPO, a spreadsheet of data about patent applications was released. The data relates to the notional success rate of private applicants, compared to applicants who use a representative or patent attorney. This data can be used to understand the approximate success rates of UK patent applications by applicants who do and don’t use a patent attorney, since most representatives are qualified patent attorneys.

So, what are my chances of getting a granted patent without using a patent attorney?

Taking the data for the year 2000, there were 31,690 patent applications filed at the UK IPO. Of these, 7,131 are associated with private applicants (PAs), and the remaining 24,559 are associated with ‘non-private’ applicants (NPAs), i.e. applicants with a representative. The spreadsheet doesn’t split out the NPA applications for direct comparison with the PA applications, but doing the leg-work reveals that 6.6% of PA patent applications filed in 2000 reached grant, whereas 32.8% of NPA patent applications filed in the same year reached grant.

In other words, a patent application from the year 2000 was effectively 5x more likely to grant if the applicant had appointed a representative. Doing the same calculations for the years 2001 to 2010 reveals a similar story – an application with an appointed representative was between 5x and 7x more likely to reach grant, relative to an application prosecuted by a private applicant.

Data for 2011 onwards is too recent to be useful for this sort of analysis. A higher proportion of patent applications filed from 2011 onwards are still pending, and the results could swing one way or the other. However, based on the data for 2000-2010, a similar picture is likely to emerge.

Is this data truly representative?

There are some limitations to the data. In particular, it only shows if the applicant was using a representative at the time that the data was obtained. In other words, if a person began as a private applicant, and later appointed a representative, they would no longer be classified as a private applicant on the UK IPO system (and vice versa if they started with a representative, but later forged ahead alone). In any case, there is still a strong indication that a patent application is more likely to be granted where a qualified patent attorney is involved.

From the spreadsheet, you may notice that the number of patent applications filed at the UK IPO decreased by around a third from 2000 to 2015. This may be the result of patent applications being filed by other routes. For example, it is possible to file a European patent application or an international (PCT) patent application, each of which can (but does not automatically) result in a granted UK patent. The data probably only relates to UK and PCT applications, and not European applications, since the UK IPO does not deal with European applications pre-grant.

Use a patent attorney for your application – we’re here to help

The take-home message is that you have a much better chance of getting a granted patent if you seek professional input from a qualified patent attorney from the start. If you draft your own patent application instead, it is likely to be much harder to get a meaningful scope of protection for your invention. This is true even if you later seek help from a patent attorney, because you will be limited by the information you put in the original application on filing.

The UK IPO also provides some guidance on this issue. It is definitely worth taking on board, since getting your patent application wrong at the start of the process could prevent you from ever obtaining the monopoly you want.

If you have any questions about patents or other areas of IP, please feel free to contact us and speak with one of our qualified UK and European patent attorneys.

An update on scam invoices

Scam

After filing your trademark application, have you received unsolicited requests for money and scam invoices? If you have filed a UK or European trademark application, then the chances are that you have received an unwelcome approach. Do not make payment!

As has been reported previously (here and here), the rogue organisations which send out these invoices are able to extract your personal information and contact details from the trademark register, this is public and easily accessible.

If you have received these demands for payment, we would recommend exerting caution. They are generally a frivolous attempt to extort money, and no matter how genuine they appear, they should not be paid.

Whilst these demands for payment are becoming fairly commonplace, there is increased hope for the trademark owner. As recently reported by the UK IPO, the Advertising Standards Agency (ASA) has now teamed up with Trading Standards, adding much needed legal weight that can be enforced against these third parties, who are breaking the rules on ‘misleading advertising’.

This means that any advertiser who sends out unsolicited demands for payment, or otherwise advertises misleading IP related services; could face referral from the ASA to Trading Standards.

Implications for IP owners

This is a positive step for any IP rights holder who receives misleading invoices about renewals and other services. With Trading Standards now acting as the ASA’s legal backstop, we would expect the offenders sending out misleading invoices to be further deterred by the threat of legal action being brought against them.

How we can help you?

The trademark team at Albright IP will be happy to answer any questions that you have regarding “unexpected” invoices. Even if you have filed your own UK and European trademark application, we will be happy to advise whether these requests are legitimate, so that you know how to deal with them.

The experienced team at Albright IP will be able to offer advice in all areas of trademark law and practice, and are also able to step in to takeover representation of a trademark application or registration at any time.

Patents and Designs – A comparison

Patents or Designs - A comparison

What is the point of a Registered Design? If a patent offers much broader protection for your invention, why would you ever want to apply for a design instead? Well, the truth is that a design is not necessarily just a “poor man’s patent”, but is actually a different form of intellectual property protection to a patent. Let us begin by considering what patents and designs are for.

Protection

A patent protects an underlying inventive concept of a particular invention. Upon obtaining a patent, you will be able to prevent other people from profiting from your inventive concept without your approval. In essence, the patent grants you a monopoly over the inventive concept, and it therefore has the ability to offer the broadest scope of protection of any form of intellectual property. Patents can therefore protect both products and processes, e.g. a method of making or doing something.

On the other hand, a design only protects the look or appearance of your product. If there is no particular technical feature which is novel or inventive about your product, but that there is a distinct style or visual appeal which you feel others are likely to want to copy, then you should be considering applying for a design.

To illustrate the point, we could put ourselves in the shoes of the Union of European Football Associations, better known as UEFA. You have commissioned a beautiful trophy for your flagship international competition, the UEFA European Championship, and do not want any of the other administrative bodies using the same design for their own championships. You have obviously not invented the trophy as a concept, so you need to protect the look of your trophy instead. The way to do this is to register a design instead, thereby preventing copycat trophies from appearing in the protected territories.

Whilst the above example may appear churlish, it demonstrates that there are some things which are not able to be protected by a patent. If you have expended significant resources in developing a particular design, then by not protecting your design, you leave yourself open to copyists, which will diminish the return on your investment.

Indeed, since a patent protects the underlying inventive concept of your product, the reverse holds true – the look of the product is not being directly protected. Therefore, it is prudent to consider a design for any product which has a distinct aesthetic appeal which you would not want a competitor to copy.

Novelty and Inventiveness

Because a patent protects an inventive concept rather than a particular product per se, there are strict requirements regarding patentability. To obtain one, you must prove that your invention is both novel, i.e. unique, and inventive, i.e. not obvious.

For a design, protecting only the look of a particular product, there are less onerous restrictions on what is permissible. For instance, for a European Community design, the design must be novel and have ‘individual character’, i.e. something about it that distinguishes it from other designs which are available on the market. Notably, the obviousness restriction is not present for a design, at least in Europe.

Cost

One of the major differences between the patent and the design is cost. Certainly in Europe, the official fees payable in order to obtain a patent are much greater than those required for a design, and ongoing prosecution costs during the examination process for a patent. Designs can be somewhat more expensive in territories with more rigorous examination procedures, such as the US, but designs are invariably cheaper than patents.

This is not entirely unsurprising; the old adage that you get what you pay for certainly holds, since a patent should offer more robust protection for an invention than a design can.

Timescales

In contrast with the patenting process, which, in the UK, typically takes 4 or more years from filing to obtain grant, designs generally require minimal examination. Notification of registration of a European Community Design, assuming there are no objections, may occur within a couple of weeks of filing for the design, and sometimes even more quickly than this.

In some territories, there may be a more rigorous examination procedure. For example, a US design may take of the order of 12 months from filing before the design will be granted, however, obtaining a design is still much faster than obtaining a patent.

Using your Design

Designs are a useful tool for warding off competitors who would otherwise copy the look of your product for their own gain. This can be a particular problem if someone is making cheap replicas of your product, and attempting to trade off your goodwill. In particular, a registered design can be useful in protecting the packaging of your product; competitors selling cheap replicas may utilise near-identical packaging to attempt to conflate your product with their product in the minds of the public. Whilst in this scenario, there may be a case for pursuing an action for passing off, having a registered design may allow you a more practical and cheaper route to removing your competitors product from sale.

Having a registered design will allow you to robustly pursue the competitor for infringement, if necessary. Additionally, if you find the competitor presenting a blatant copy of your design at a reputable international trade exhibition, the organizers will be obliged to instruct the offender to remove the copy from display and may also impose stronger sanctions, if you are able to present them with a registered design certificate. A similar scenario holds true for copies appearing on auction websites, such as Ebay, or eCommerce websites such as Amazon. It is much easier to have these listings removed if your design is protected.

Patent and Design?

The above discusses the case for which you want to protect an unpatentable product. However, is there value in applying for both a patent and a design for the same invention? It may seem wasteful, but there may be solid commercial reasons for doing so.

Let us now jump into the shoes of Alexander Graham Bell. You have invented the telephone, and subsequently applied for a British patent. You have since realised that you are about to revolutionise the communications industry, so you also file an international patent application via the Patent Cooperation Treaty (PCT) claiming priority from the British patent application. You now have thirty months from the priority date before you are required to convert the PCT application into national phase applications around the world, so you concentrate on other commercial aspects of your business.

Unbeknownst to you, your unscrupulous supplier has begun selling telephones all around the globe, and has applied for a patent and a design in their own country for the telephone. Upon finding out, you realise that you are unable to bring legal action against them to cease their sales until your patent has granted, which may be several years down the line. Whilst you hold the rights to the telephone, applying for revocation of their duplicitously acquired intellectual property can be an expensive process.

This situation could have been prevented by registering a design in your supplier’s country prior to beginning the manufacturing process. Since designs grant relatively quickly, you would have a sound legal grounding with which to prevent the supplier from selling the telephone, and thereby denying them the chance to gain a market foothold and steal business away from you. Whilst this may seem a fanciful proposition, real stories such as this are unfortunately not unheard of.

In an ideal world, you would register designs for all of your products, and patents for all of your ideas. However, all things considered, intellectual property can represent a reasonable expense, especially for a small business. A design can offer the cheaper protection that you need to prevent copyists from stealing the style of your invention, or may be useful in a broader intellectual property portfolio in conjunction with a patent to deter theft of your ideas. Whilst a patent is more potent, a design may be more desirable, if funds are limited.

For an overview of the various intellectual property rights available, and what each is for, the EUIPO (formerly Office for Harmonization in the Internal Market (OHIM)) have produced a neat graphic, the Intellectual Property Metro, to attempt to clarify the differences between the various types of intellectual property.

If you would like more information regarding designs, then please see our other articles below.

Alternatively, contact one of the attorneys at Albright IP for more advice.

Summary:

Patents + Broad scope of protection + Protects an inventive concept – More expensive – Can be slow to grant – Cannot protect the look of the product per se

Design + Cheaper + Quick to grant + Can protect otherwise unpatentable products – Only protects look of product – Cannot protect abstract ideas e.g. methods of doing something

The Patents County Court is renamed to the Intellectual Property Enterprise Court

Mind Patents

The Hargreaves Review was commissioned in November 2010 by the Prime Minister with the intention of promoting innovation and growth in the UK. Essentially, the commission set out to discover whether or not the framework of the UK Intellectual Property system was up to task in the digital era. As such, it placed a specific emphasis on copyright, but there were recommendations across the Intellectual Property sector.

As of 1 October 2013, the Patents County Court has been renamed to the Intellectual Property Enterprise Court (IPEC) in response to the Hargreaves Review (the original webpage which was linked to can be found at this archive page). What a terrible development, I hear you cry; another acronym to remember! So what is the point of the change, and how might it affect businesses?

Of the recommendations more relevant to patent law, the commission suggested that the UK should be striving for further international co-operation, both in terms of dealing with the large backlog of patent applications, but also with unification of patent prosecution, going so far as to suggest the formation of a Europe-wide patent court. However, the most relevant recommendation of the report in this instance was to improve small firm access to Intellectual Property advice.

Intellectual Property Enterprise Court

The rebranding of the Patents County Court is part of the drive to make accessible the Intellectual Property system in the UK to those without the resources of multi-national conglomerates. For one thing, the renaming of the Court is designed to reflect its broader nature as a forum for all forms of Intellectual Property dispute, now being able to hear copyright, trade mark and unregistered design cases.

There have been several major changes to the court in recent times including: the introduction of a scale of recoverable costs, capped at £50000; a limit on awardable damages or profits of £500000; time limits on the length of case hearings of no more than 2 days; and the creation of a Small Claims Track for cases with values under £10000.

Overall, the changes are designed to make it considerably easier for small businesses to pursue infringement claims to protect their Intellectual Property rights without having to incur severe legal costs. The expectation therefore is that the simplification of prosecution of Intellectual Property cases of all varieties will encourage businesses of all sizes to invest in research and innovation without having to worry about being unable to assert their rights against larger corporations.

Clearly then, the renaming of the Patents County Court is part of a wider attempt to encourage small firms to feel engaged with the justice system in the Intellectual Property sector, which at first glance seems daunting and highly complex. As it stood, the ‘Patents’ in Patents County Court was misleading, and so replacing it with ‘Intellectual Property’ as a more general term seems to make sense, given the court’s role.

Still, what would have been wrong with the name ‘Intellectual Property County Court’? The court has retained the jurisdiction of the PCC and therefore remains a county court, albeit one with special jurisdiction over Intellectual Property disputes.

Perhaps the real reason for the ‘Enterprise’ returns us to acronyms. An ‘Intellectual Property County Court’ or ‘IPCC’ would have had to compete with the Independent Police Complaints Commission and the Intergovernmental Panel on Climate Change. These organisations have major brand recognition with which the court would have been competing. Clearly it was felt that the IPEC stood a better chance of standing out over the International Programme on the Elimination of Child Labour, an organisation dubiously dropping the ‘L’ from its acronym.

Overall, the change from PCC to IPEC is a positive one, better reflecting the role of the court. The wider reforms implemented as a result of the Hargreaves Review should make it easier for small enterprises to protect their Intellectual Property.

For advice and guidance relating to your Intellectual Property rights, contact the attorneys at Albright IP.

How To Do Your Own Free Patent Search – Part 1

There are a number of professional patent searches available at various price points. No search is ever definitive but, obviously, the more you spend, the better the end results will be. However, an obvious first place to start before spending any money at all, is to use the freely available online patent search tools to conduct your own initial search. This article aims to give first time searchers a brief introductory guide to performing a patent search for their invention or idea, and then goes on to introduce some more advanced tips.

Firstly, why conduct your own patent search at all? Well, that’s a good question. In the UK, the first step of the patenting process following the preparation and filing of your patent application is a worldwide professional search which is conducted by the Patent Examiner at the UK Patent Office. This is a subsidised search using powerful commercial databases. Although it is feasible to defer this searching step for 12 months after filing your patent application, it makes little sense (see my earlier article titled ‘The Dangers of Cheap Patents’).

Therefore, it is usually recommended that a full specification is prepared at the time of submitting the patent application, along with an immediate request for the official worldwide search. The search results will then be returned in around 4 months, leaving you around 8 months to consider the results and obtain further commercial feedback relating to your invention before you have to make the decision as to whether to file counterpart patent applications overseas, such as to protect the US and European markets.

So, if you would be first filing in the UK with the opportunity of the professional search conducted by the UK Patent Office very early on, is it worthwhile undertaking a commercial ‘pre-application’ search prior to your patent filing. If you are an individual inventor who is often short of cash, then arguably not.

However, there is no reason why you should not spend some of your own time using the freely available search tools on the internet, just to try and determine whether your idea can be easily tracked down.

The database that I prefer to use is Espacenet. This is administered by the European Patent Office, and can be found here: www.espacenet.com .

Initially, you are presented with a ‘Smart Search’ field:

abstract 3

However, I personally immediately jump to the ‘Advanced Search’ option on the left menu, which can be found directly at this link: https://worldwide.espacenet.com/advancedSearch?locale=en_EP

bibliographic 3

Once you’re at this page, I tend to keep the first ‘Collection’ field as ‘Worldwide’ (see the image above), and then use the ‘Title or abstract’ field which is the second empty box down from the top as shown in the above image.

Now, using this ‘Title or abstract’ field, you can insert a reasonably generalised description of your idea. But, you need to really consider the words or phrases that you use. If you are too specific, then many relevant results may be missed. If you are too broad or general, then you will be inundated with results which are not relevant.

So, for example, you may have a new seat for a bicycle which utilises an easy-adjust mechanism. Therefore, your initial search might be: ‘adjustable bike saddle’, ‘bike saddle mechanism’, ‘adjustable bicycle saddle’, and so on. Other terms would also be tried, such as: ‘slidable’, ‘rotatable’, ‘pivotable’, ‘mechanical’, ‘seat’, ‘cycle’ and so on.

If you then try: ‘easily adjustable bicycle seat mechanism’, this may be far too limiting and therefore many relevant results may be missed.

DON’T FORGET, your search is based on the Abstracts of the patent documents in the database. Therefore, you must be using words and phrases which are also used in the patent abstracts. You have to think like the person originally writing the patents! For example, an Abstract can look like this:

original 1

If you do not use these words in your search, then you will not find this document. It’s as simple as that.

When you are trying your various search terms, bear in mind that you also need to consider different spellings of the same word, such as ‘colour’ used in the UK and ‘color’ used in the USA. ‘Nappy’ and ‘diaper’ are also notable.

When you click on a result that looks to be of interest, Espacenet first provides the ‘Bibliographic Data’, which includes the Abstract and details of the patent owner:

bibliographic 4

From here, on the left side menu, you can also look at the ‘Original document’, which will bring up the original patent document as published:

bibliographic 5

You can then download the whole patent document via the ‘Download’ link on that page, or scroll through the patent publication using the ‘Page’ menu on that screen.

In the second part of this article, we will look at further more advanced options to focus your patent search, along with other freely available patent search tools.

⇒ How To Do Your Own Free Patent Search – Part 2

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How To Do Your Own Free Patent Search – Part 2

In Part 1 of this two part article, we looked at the basics of conducting your own free worldwide patent search using the free patents database, Espacenet, which is available from the European Patent Office. Although no search is ever definitive, before you spend any money, Espacenet is an excellent place to start if you have a new idea or invention.

However, you may find that your search terms or phrases are returning too many irrelevant results. For example, you may be searching for ‘cell’, but just consider how many variants may be returned with such a broad term: a plant cell, animal cell, battery cell, cell phones, integrated circuits having cells. The list is enormous and thus it may be far more difficult to focus your search results to those that are most relevant.

So how do we narrow or focus our search? Well, if you have at least one result that is in the general field of interest or technology, then this leads us to a possible ‘Classification Code’. In the example that we used in Part 1 of this article, we were searching for a bicycle saddle idea. Typing ‘saddle’ into the Advanced Search page in the Abstract or Title box returns more than thirty seven thousand results – far too many for us to ever review.

However, assuming we are looking for ‘bicycle saddles’, there is a result on the first page (red circle):

results

And this takes us to the possible Classification Codes. See the blue circle in the image above, under CPC.

The CPC codes are generally linked, although sometimes the links seem not to work. The international patent classification (IPC) codes right next to the CPC codes are not linked at all. Let’s use the CPC codes to focus our next search, and if the link is not operating, simply type the CPC code into this website: www.cooperativepatentclassification.org/search.html?queryString=B62J&submit=Search. Otherwise, clicking on the first linked code ‘B62J1/00’ opens up a description of that field, as shown here:

coop

You can therefore see that the classification ‘B’ is for ‘transporting’, ‘B62’ then focuses this to ‘land vehicles’, and ‘B62J’ further limits the field to ‘cycle saddles’. Following this, ‘B62J 1/002’ further restricts the field to ‘saddles having a seating area with a central cavity or depression’.

So, from this list, you can start identifying where your specific idea or invention lies. By clicking any of the red codes on the left, you can skip between fields to locate your required area of search.

Now, armed with your code, return to the Espacenet search page. Insert your code (similar to ‘B62J 1/002’ for example, if you have created a new more comfortable bike saddle) in the ‘IPC Classification’ box. Keep the other boxes blank. Click ‘Search’. Many results will come back, but do they look similar to field of your idea. If YES, then hopefully your search is now in the right area, AND you have far fewer prior patent documents to deal with, in this case being 384.

results 2

Assuming we now have the right field or at least a similar field, repeat the search but this time insert one or two general words in the ‘Title or Abstract’ box also whilst keeping the CPC field code. These words should broadly define your idea or the uniqueness of the idea. In this example, we may want to restrict our search in this particular category to ‘pressure’ in the ‘Title Or Abstract’ field if you have created a bicycle saddle which reduces pressure when seated. Search again.

results 3

You can see that we now have a very manageable 20 results in the field of B62J1/002 with the term ‘pressure’ in the Title or Abstract of the prior patent document. These twenty documents can now be reviewed for relevancy.

Repeat this search process with the other CPC classification codes, if you’ve found more than one. In the above example, you can see that these patents are also classified in B62J1/007, and B62J1/08.

Following this search strategy, if nothing of relevance is found, try ‘tweaking’ the CPC code. Simply remove the last digit or two. So in our example above, B62J1/002 becomes ‘B62J1/00’. In this case, we now double the number of results which also have ‘pressure’ in the Title or Abstract, but it is still manageable to review these prior patents.

From B62J1/00, we can then broaden out to B62J1 whilst still keeping ‘pressure’ in the Title or Abstract field, and so on.

Don’t forget, if you feel the Classification field is correct, then you can play with your Title or Abstract terms, changing ‘pressure’ to ‘relief’, ‘comfort’, ‘padded’, ‘support’ and the like. Using a Thesaurus to help you identify search terms is beneficial.

STILL HAVING TROUBLE?

If you have found nothing similar or, after having read the above, have no useful codes to rely upon, then you need to manually search for the likely classification code of your idea. Use the Classification Search (see the red circle on the left below). Enter a couple of generic words (e.g. ‘bicycle saddle’) which broadly define your invention in the ‘Search for’ box (top centre). Click ‘Search’. A list of possible Classification Codes are returned for you to review and try in the above search strategy.

coop 2

⇒ Also see our brief article and video on The Dangers of Cheap Patents.

⇒ How to do your own Free Patent Search (Part 1)

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