If you have a great idea, you’ll want to protect it. But what exactly are the criteria for patent protection?
Patents protect new inventions. They are intended to reward inventors by providing a monopoly over commercial exploitation of the invention for a limited period. In return, the inventor is expected to fully disclose the invention so that it is available for all to use after the patent expires.
Certain types of subject-matter are specifically excluded from the possibility of patent protection. Examples include computer programs, business methods, and methods of surgery. Excluded subject matter is more fully explained in a separate article.
Assuming your invention does not fall into one of the excluded categories, a patent can be granted for an invention which is novel, involves an inventive step, and is industrially applicable.
This is the most basic criterion. No patent can be granted to an invention which is not new. In the UK, and in most other countries, a fairly strict line is taken in assessing novelty. Any disclosure, anywhere in the world, whether it is written down or not, is potentially prejudicial to a patent application if the disclosure is before the priority date of the application.
Because prior disclosure can destroy a patent application, it is crucial to keep your invention secret until an application has been filed. However, this is not quite the whole story. There are a few cases where it might seem that an invention has been disclosed, but in fact a patent can be granted.
Disclosure must be enabling
To prejudice a patent application, it is not enough that the invention has simply been shown. It must have been disclosed in a way which would enable a skilled person to put it into practice. For example, a motor company which develops a new engine and tests it on public roads would not necessarily destroy its chances of patent protection, since a person who observes the car drive past would not be able to discern the workings of the engine.
Disclosure must be to the public
An invention may still be new if it has been disclosed only to a particular group of people. However, if there was some expectation that those people would, or even could, further disseminate that information then the disclosure is considered to be to the public. Furthermore, any document is regarded as having been disclosed to the public if members of the public could have read the document (for example, because it is in a public library), even if, in reality, nobody did read it.
Disclosure must not be in breach of confidence
If information is disclosed to a person, or to a group of people, in conditions of confidentiality, and that information is subsequently disclosed to the public in breach of confidence, a patent may still be validly applied for, provided that the application is filed within six months of the disclosure.
Although conditions of confidence can arise without any written document, obtaining a signed confidentiality agreement before disclosing your invention to anybody is always wise.
There is also an exception for disclosures made at officially recognised exhibitions, although in practice very few exhibitions are officially recognised.
An invention involves an inventive step if it would not have been obvious to a skilled person on the priority date of the application.
The “skilled person” is a somewhat hypothetical concept. He is expected to have a very comprehensive knowledge of the prior art, and will make connections between different existing devices, but he is unimaginative, that is, he will not invent himself.
Inventive step is, perhaps unsurprisingly, difficult to define precisely. Each case will ultimately turn on its own facts to a large degree. However, there are a number of factors which can point to a non-obvious invention.
If there has been a long-standing problem, with many unsatisfactory solutions put forward, this is good evidence that the eventual solution to the problem is an invention. In hindsight, many inventions, especially very simple devices, may seem obvious. Many people seeing the invention might say “I could have thought of that”, but the fact is that they did not. The large number of people who are kicking themselves for not thinking to do what the inventor eventually did are themselves evidence for an inventive step. The more effort which was put into failed solutions, the more likely that the eventual success is an invention.
Not obvious to try
An invention may lie in doing something which was widely thought to be a bad idea, and finding that, surprisingly, advantages are realised. For example, if it is widely believed that a process does not work well above a certain temperature, then an inventor might discover that, in fact, the process works better at high temperatures if certain changes are made. However, the person who simply realises that higher temperatures yield obvious advantages (for example, a reduction in the need for cooling) and decides to accept the known disadvantages has not made an invention.
The “bad idea” must have some technical basis, and not be simply popular or commercial prejudice. For example, in Petra Fischer’s Application there was a widely held perception that diesel engines were not suitable for convertible cars. However, a person skilled in the art would have known that a modern diesel engine would in fact be workable, and might yield certain advantages. The fact that it was widely believed by the non-technical public that such a car would not be very good was irrelevant, even though that translated into a widely-held belief within the car industry that such cars would not sell very well. Such commercial considerations are of no concern to the skilled person.
The Patents Act states that an invention shall be taken to be capable of industrial application if “it can be made or used in any kind of industry, including agriculture”. It is relatively rare that the requirement that an invention must be industrially applicable is put at issue. In most cases, it is clear that the invention could be made, even if in practice no-one would want to bother. This is not an assessment of the merits or otherwise of an invention, simply a statement that it must be possible to put the claimed invention into practice.
In many cases, the requirement of industrial applicability amounts to a tautology when considered alongside other requirements. For example, an invention which cannot be put into practice because it is inadequately described will be invalid for lack of enabling disclosure. An invention with no known actual practical use may well fall under the heading of a “scientific discovery”, which is in any case excluded from patentability.
The most common use of the industrial applicability requirement to object to a patent application is where the process or device of the application simply cannot operate in the way described. For example, a perpetual motion machine is not patentable because it cannot be made or used. In other words, it won’t work.
Whilst it is very well-established that perpetual motion machines are impossible, there have been one or two cases in recent years where there has been genuine doubt as to whether an invention can operate in the manner described. An applicant who put forward a scientific theory to support his invention which contradicted scientific consensus was nevertheless eventually granted a patent after taking the case to Court. The Patent Office and the Court are understandably reluctant to make judgments as to whether a scientific theory may or may not be valid. Where there is some reasonable prospect that this is so, the applicant is entitled to the benefit of the doubt and a patent should be granted. After all, nobody is particularly likely to infringe a patent for an impossible device.