PATENT IDEA

A BRIEF OVERVIEW OF PATENTING AN IDEA

Whether you are a company or an individual, patenting an idea or development can secure a valuable asset for you or your business.

It then allows you to use the patent to either sell the legal rights to the idea, or to protect yourself against copyists and other competitors.

DO I NEED A PATENT ATTORNEY?

Patenting is a specialised, niche area of law.

At every stage of the patent process, your idea will be stress-tested to the limit. It is not simply a rubber-stamping procedure.

Firstly, once your patent specification is prepared (more about the requirements for this below) and details your idea, the patent examiner in every patent office around the world will attempt to knock it out.Knock out v1.jpgA bit like a game of Chess, we therefore need to anticipate this potential pushback at the outset, and ensure we have suitable strategies and content in place to allow for our counters downstream.

Secondly, imagine after a couple of years of marketing, your idea starts to gain commercial traction and becomes popular. What will then happen? Inevitably, competitors will start to circle. The only thing stopping your competitors copying your idea will be your patent.

How will a competitor avoid infringing your patent? By trying to knock it out. We also need a strategy at the outset when preparing the patent for your idea that anticipates this potential situation.

Thirdly, think about your end goal, and not just the here and now. Where do you want to be in five to ten years?

Many patent owners aim to licence or sell outright the patent rights to their idea. When we start those negotiations, the buyer or investor will undertake due diligence. Their lawyers will aim to devalue your rights to obtain a better deal.

Again, by considering this when first writing your patent specification will aim to make the resulting patent for the idea that much more robust, and consequently much more difficult to devalue.

As experienced patent attorneys, all with scientific and/or engineering backgrounds, Albright IP factors in all of the above scenarios to give you strongest and therefore most valuable patent assets possible.

A BRIEF OVERVIEW OF ALBRIGHT IP

Albright IP is a full-service patent and trade make attorney firm.

We are experienced in and handle daily all intellectual property related matters in the UK and worldwide, including: patent, design and trade mark protection; infringement defence and pursuit of copyists; and transfer of IP assets when bought and sold.

Our first-class attorneys have exceptional expertise, not only in law but also as engineers and scientists.

We will clearly understand the technical idea that you want to patent protect, write the detailed patent disclosure and legal scope, and then represent you before the UK Intellectual Property Office (UK IPO), the European Patent Office (EPO) and internationally before the World Intellectual Property Organisation (WIPO) whilst we go through the prosecution of the patent document towards grant.

With decades of professional global IP experience, we proactively advise all of our clients not only from a legal viewpoint in terms of the best approach to patent your ideas and innovations, but also with a critical commercial eye so that you do not waste your money.

WHAT IS A PATENT?

Nearly every technical improvement to solve a problem is potentially patentable.

Ring Fence v1.jpgThis not only applies to entirely unique ideas, but also when combining existing products or processes.

A patent is therefore a legal instrument or tool which is submitted to and issued by a national or regional governmental or elected body to give you the rights to your invention or development.

Once granted, the patent ring fences your piece of the market, and gives you the power and control to solely manufacture and sell your idea, or authorise others to do the same (i.e. a licence).

It also allows you to take legal action, if a competitor tries to enter your territory without consent.

Again, and particularly over time, a patent can become exceedingly valuable.

HOW DO I WRITE A PATENT?

So, how do you write a patent to robustly protect a new idea?

A patent document consists of several important parts: the background, the technical description, the claims, the abstract, and the drawings.

The background section of a patent document sets out to the reader (for example, a patent examiner or judge) what is already out there. In other words, the ‘state of the art’. This gives the reader a baseline understanding of what the new idea generally relates to, the field of technology that it lies in, and in particular the technical problems that have been identified with the current products, devices or processes.

Following on from the background, a ‘written blueprint’ is provided as a description of the new idea, development or invention.

The ‘written blueprint’ does require a reasonable amount of detail. It typically does not need nut and bolt sizes (unless these are critical to your idea), but it does need to be in enough detail to allow a competent person on the street (for example, someone with an engineering background) to read and understand your concept. They need to be able to make your idea without large amounts of testing and experimentation.

The patent examiner will scrutinize the detail of the description to determine whether it is ‘sufficient’ or ‘enabling’.

The description of your patent document is also vital in terms of providing back up positions for use during the examination stage with the patent examiner.

Remember, the patent examiners in every country will try and knock out your idea before they are willing to grant a patent to it. By anticipating this and having fallback positions ready in the description for use during prosecution, will often result in being able to circumvent the examiner’s position and achieve successful grant.

Moving onto the ‘claims’. The claims define the legal monopoly or ‘slice’ of the market that you are seeking protection for.

Although all the parts of a patent specification are critical, the claims are arguably the most important aspect of the patent document.

The patent examiner will dissect the wording of your claims, and will attempt to find any prior publicly disclosed document, website, earlier patent, product, manual, journal or anything else worldwide that arguably has those features. The examiner will then use that or those items to try and block us from obtaining grant of your patent.

Having said that, during the prosecution phase, the examiner will allow us plenty of opportunity to counter her position. We can counterargue and/or add one or more features to our claims to persuade the examiner that there is in fact a technical difference or distinction over what she is raising to block us.New Material v1.jpgCrucially, the Catch 22 that many fall foul of is that the examiner will not allow features to be added to the claims which were not originally mentioned or discussed in the patent document when it was first filed.

If you remember what was mentioned above when discussing the description: ‘The description of your patent document is also vital in terms of providing back up positions for use during the examination stage with the patent examiner’. This Catch 22 trap is exactly the reason why this important.

New matter cannot be added after filing your patent application. We therefore need to make sure the patent specification in its entirety is prepared correctly, properly and robustly at the outset to account for the possibility if needing to feed features relating to your new idea into the claims to overcome the examiner’s position during examination.

Turning to the penultimate part of a patent document, the Abstract of the patent is provided as an overview summary of your new idea. This assists in particular the patent examiner in quickly understanding what your new idea relates to, and thus allows her to more rapidly perform her global assessment to determine if the idea is unique and inventive.

Finally, the Drawings back-up the written Description. A reader of the patent specification, as they are working through the Description, will refer to the accompanying Drawings to put the wording into better context.

The Drawings do not need to be full engineering drawings or CAD drawings, for example, with radius and construction lines, dimensions and such like. However, they do need to clearly show the essential aspects of your the idea that you want patent protection for.

It is worth again bearing in mind that each patent examiner and/or court will assess the Description together with the Drawings to determine if a reader with reasonable skill in your technical field would find the disclosure sufficient to enable them to reproduce your idea, development or invention.

Writing the patent document with care and strategic thought at the outset will pay dividends not only during examination on the road to grant, but also when it is contested in court by a competitor trying to circumvent the legal ring-fence it provides.

CAN I PATENT MY IDEA?

There is a handful of exclusions in terms of developments which cannot be patented (such as rules for games, presentation of information, and such like), but generally, to patent an idea, providing it is both unique (i.e. novel) and sufficiently clever (i.e. inventive), then granted patent rights can be obtained.

What is ‘novelty’? The patent examiner will assess the new idea based on everything worldwide prior to the date of submitting your patent application. The patent specification therefore needs to explain to the examiner that the new idea has at least one feature which is not suggested in any one prior document or earlier product. That ‘one feature’ does not have to be particularly clever. It simply needs to be ‘new’. If it is, then the ‘novelty’ hurdle is overcome, and the examiner will be satisfied on that count.

However, the examiner will then turn to the second hurdle, which is ‘inventiveness’. The examiner will then consider the aforementioned unique ‘one feature’, and even if it is unique, she will determine if it is also a sufficiently clever step forward. If the examiner views the feature as simply being an obvious design modification, then an objection is raised. However, if she views the feature as being a non-obvious improvement, then the examiner will accept the request for the grant of the patent to the idea.

BEFORE APPLYING FOR A PATENT

It is absolutely crucial that you keep your ideas secret until you file your patent application. However, it is permitted for you to discuss your ideas with a legally qualified person, such as a patent attorney.

Patent attorneys are governed by the Chartered Institute of Patent Attorneys (CIPA), and are independently regulated for quality of work and service by the regulatory body, IPReg. Do always check that the attorney you are communicating with does have Chartered status, and is regulated by IPReg.

Do also check that your patent lawyer is insured. For example, Albright IP uses Pamia. Be aware that there are many ‘patent engineers’ and the like who offer patent drafting and prosecution services, but who are not regulated and are not insured.

If you should need to disclose your idea prior to filing your patent application and to someone other than your patent attorney, do use at least a written confidentiality agreement, also known as a non-disclosure agreement or NDA. If you would like our free NDA template, or something bespoke and more robust, please do contact us.

What disclosures will jeopardize protecting your idea with a patent? Anything from marketing your idea or product, giving a lecture, publishing an article to the principles behind the idea, to chatting about it in a pub. This does mean that knowing whether your idea will be commercially successful before filing a patent application is not possible.

The order is as follows: 1) prepare and file your patent application first, and then 2) disclose and start to commercialize. Use your patent application number in your pitching and marketing to help leverage interest.

In some cases, a disclosure does not count against you. For example, if the disclosure was not sufficient to explain the inventive concept, thereby allowing another person to recreate your idea. This is worth bearing in mind. If this ever happens to you, do just ask us and we will advise and guide.

HOW DO I APPLY FOR A PATENT?

To apply for a patent, which grants you the legal ownership of your idea, we must submit an application at the national patent office of your country. If you are reading this in the UK, then the UK Intellectual Property Office (UK IPO) is where we would start.

This is good for you, because the UK IPO official fees that we have to pay are low.

It is even possible to submit your own patent application without charge. But why is this a false economy?

When a patent application is submitted, a lot of critical deadlines start. If we miss one of these deadlines, you will potentially irrevocably lose your patent rights. This is catastrophic and must be avoided.

A number of these deadlines fall at 12 months from when we first submit your patent application to the UK IPO. If we do not pay the official filing and search fees when first submitting your patent application, then these are due on that 12 month anniversary date. If this date is missed, your legal right to the idea dies leaving it open to anyone else to potentially use without your authorization.

Aside from the deadline for paying the filing and search fees, our opportunity to protect overseas markets by filing your patent rights in those territories also expires on that 12 month anniversary date.

Filing a patent to protect your new idea in overseas markets is more expensive, so how do we know we are not wasting our money?Filing fees v1.jpg

By paying the filing and search fees early (in other words, when first filing your patent application) to the UK IPO allows the patent examiner to undertake her global assessment of your new idea.

It takes the examiner about 4 to 6 months to complete her analysis. The initial data received from the examiner in her preliminary analysis is extremely useful. It gives us a good indication of what the examiner will use to try and block us during full (substantive) examination downstream during the application process.

It is also gives us an overview of earlier patent rights owned by other parties which could cause you infringement problems when bringing your own product into the market. If we can foresee potential problems at an early stage, it gives you the opportunity to avoid or work around certain features.

Therefore, my strong recommendation to all our clients is to pay the filing and search fees immediately on submitting our patent application, so that the examiner gets the initial global review underway as soon as possible. Once the overseas filing deadline then arrives at 12 months, we are in a much stronger position to determine whether more investment should be made and the likelihood of success.

When applying for any patent in any territory, as a general rule of thumb and as explained earlier, remember the Catch 22: we cannot add new material after filing.

The examiner will provide us with plenty of opportunity during the examination stage to counter her objections and her position, and she will allow us to tweak or alter the wording of our claims to distinguish over the documents that she has found in order to try and knock out your idea. But, she will only let us do that within the confines of what was in your patent specification when it was first submitted. She will not let us add any further detail which was not included in order to separate ourselves from what she is raising against us. This is crucial to remember and, without experience, is often where a patent application will fail.

With the patent specification detailing your new idea fully prepared and supported with sufficient options and caveats, it can then be submitted at the UK IPO to establish a patent filing date.

It should also be remembered that the patent systems in nearly all countries worldwide is a ‘first to file’ system. That means, if you delay and someone else comes along and files first, then you may be the original inventor of the idea, but the other person was the first to file. That other person therefore wins the opportunity to claim the legal rights to your idea. This is another crucial point to keep in mind. Do not delay in making a decision to patent protect your idea.

HOW LONG DOES A PATENT LAST?

In a number of countries worldwide, there are short term patents (also called petty patents), standard patents (also called utility patents), and design patents.

Standard or utility patents are the most common across all countries, and the laws are generally harmonized these days to provide such patents with a life of 20 years from the date they are filed as applications.

New patents v1.jpgFor short term patents, these often have a lower bar to grant, but may last only eight or ten years.

A design patent protects the aesthetic ‘look’ of a product, and not the technical concept (that is for a standard or utility patent). Although called a design patent in the USA, elsewhere these are referred to by different names, such as a design registration in the UK and Europe.

How long does a design patent or design registration last? Generally between 15 years and 25 years, depending on the country.

Do bear in mind that a design patent can be easily circumvented by changing the ‘look’ of the product, even if the technical solution is the same. Therefore, the approach should always be, first, make a decision as to whether a standard (utility) patent is the right option to protect your new idea. Then, once a decision has been made in that regard, secondly make a decision whether a design patent or design registration is suitable to provide protection.

Patents cannot be extended beyond their 20 years lifespan.

However, a rolling portfolio can be built over time by continuing to innovate and thus submitting new patent filings for successive improvements over time.

As long as the improvements on the base original concept are themselves inventive, new granted patents will be obtained, thereby creating greater difficulties and uncertainties for competitors.

To ensure your patent is not revoked or lapses, it is essential that renewal or maintenance fees are paid on time to the patent offices, by the deadlines imposed. Unfortunately, once your patent has lapsed, it is usually impossible for it to be revive or reinstated, and your idea becomes open to the public to use without your consent.

HOW DO I MAKE MONEY FROM A PATENTED IDEA?

Generally, there are three routes to commercialise your patented idea and legal rights to earn an income.Commercialise v1.jpg

  1. Produce the product, system or process that your patent protects you for.

Keep innovating. Build your business around those products, systems or processes. And use your patents, designs and trade marks to defend your segment of the market.

You will generate income from the sale of your goods and services, and by the fact that competitors are being deterred by your intellectual property from entering your market.

As your business and assets grow, buyers and investors will become interested. Ultimately, you exit by some form of sale of the business and its associated assets, including your portfolio of patents, designs and brands. The larger your portfolio of intellectual property rights, the more secure an investor or buyer should feel, since the more protection they will have once you have departed the business.

  1. Sell the patent for your idea outright for a lump sum, and walk away.

It is easier than ever to approach a company related to your new idea, pitch it to them, and discuss a potential sale of patent rights. For example, a Google search to identify a list of prospective companies that might be interested in your idea takes only a few minutes. Then use LinkedIn to reach out to potentially relevant employees within each company on your list. Once connected via LinkedIn, simply ask for their help to guide you to the correct person to talk to. As long as you are polite and friendly, it is rare not to find a person who is willing to help.

  1. Similarly to option 2 above, you can consider licensing your idea to an interested company for an on-going royalty payment.

With a patent licence agreed, you will retain ownership of the legal patent rights to your new idea, but will allow a third party to market and sell your product or system in return for them paying you a percentage of the profit made.

HOW DO I ENFORCE A PATENT AGAINST A COMPETITOR?

Having a patented idea gives you the legal right to stop someone else from manufacturing, importing, exporting, stocking, selling, using and advertising anything that is encompassed by the legal scope of your patent.

If someone else does decide to encroach on your protected segment of the market, a formal notification letter, or a more strongly worded cease and desist letter, is the place to start.

There are pros and cons to both of these options.

What is a ‘formal notification letter’? This is a relatively short notification letter to the infringing party making them formally aware of the patent for your idea, and typically providing them with a copy of your patent document. Once the infringer receives this letter, it is much more difficult, if not impossible, for them to counter argue that they were unaware of your patent. Damages or an account of profits during possible litigation downstream can then be back-dated to the date of the notification letter.

In some jurisdictions, and the UK is one of them, to try and prevent spurious claims of infringement leading to trading losses, the patent laws may allow for a counter claim of ‘unjustified threats’. The above-mentioned formal notification letter avoids this potential counter of unjustified threats. As such, although it is not particularly aggressive in nature, it is a safe option for putting a potential competitor on notice of your rights.Cease and Desist v1.jpgA ‘cease and desist’ letter is a more aggressive option when going after a competitor. Consequently, more thought, care, and strategy is required from the outset, particularly in view of the unjustified threats provisions mentioned in the previous paragraph.

Some of the initial questions to ask when considering preparing a cease and desist letter are: Am I willing to actually go to court in pursuit of this competitor? What is my risk profile? How will my board of directors and/or shareholders perceive the sending of this letter?

A cease and desist letter in the UK, for example, may only mention ‘manufacturing’ and ‘importation’ as the infringing activities. This helps to avoid the ‘unjustified threats’ issues, if you may be unwilling to actual go to court over the matter in the future.

If we make a blanket claim of infringement against a competitor in our cease and desist letter, then this does open up the option for the other side to counter with a claim of unjustified threats. However, providing we are actually willing to issue a court claim, then the threats of infringement generally cannot be ‘unjustified’, because we are willing to pursue the matter.

There are court rules to also consider when preparing a cease and desist letter, along with any undertakings that you want the other party to acquiesce to. Undertakings need to consider a range of items, such as time scales for the delivery up of the fake products, payment of legal costs and damages, a list of customers and manufacturers, and so on.

Although not widely known about, Intellectual Property Insurance is available. This covers pursuit and defence of all your patent, design and trade mark rights. Ultimately, we do not want to go to court. Intellectual Property Insurance is a nice tool to have to leverage the other side towards an out-of-court settlement in your favour. The insurance provides access to a reasonably large pot of cash, which can therefore level a playing field when a smaller rights holder is attempting to take on a larger company with potentially larger cash reserves for fighting infringement allegations.

WHY CHOOSE ALBRIGHT IP?

All our patent attorneys at Albright IP are also qualified engineers and scientists. We will do our best to think around your idea to give you as broad protection as possible, our main aim is to help you succeed.

The extensive expertise of our attorneys will help guide you through the patent application process, adding value at each stage. We will support you across a range of areas during this, including:

  • Offering comprehensive advice regarding all aspects of patentability of your idea.
  • Providing a strategic overview on patent protection and the specific risks in your field.
  • Handling the complete application process from drafting your patent applications to filing and prosecuting your patent applications through to successful grant.

 

If you would like further information, please contact us on +44 (0) 1242 691 801 to speak to a qualified British and European patent attorney, or fill in the form below.