Patents 101 Essential Information

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1 Introduction This introductory guide to patents is intended to provide our clients with the background information that they need to understand the patent process and to make educated choices about how they approach seeking patent protection. Even if you have been through the patent process before we request that you take some time to look through this guide. Index This guide has three main parts: 1. General Patent Information 2. Patent Searching 3. Patent Applications Strategy & Tactics Legal Disclaimer: Please note that all information in this leaflet is intended as a rough guide to patent protection. It is not intended to constitute legal advice, nor should it be construed as such.

2 What is a patent? 1. General Patent Information In the UK and EU patents protect technical solutions to technical problems. The functionality of things. Patents can protect products and/or processes new ways of doing things. Patents do not cover aesthetics (unless the aesthetic embodies a functionality). Instead aesthetics can be protected by design registrations. Patent rights are granted by patent-granting authorities such as the UK Intellectual Property Office and the European Patent Office. In order to obtain a patent an application must be filed with the relevant patent office. Patents are territorial rights. For example, a UK patent covers only the UK, and a French patent covers only France. Once granted, a patent provides its owner with the exclusive right to make, use, sell or import the invention without permission. A patent can last for up to 20 years from filing, but must be renewed each year by payment of renewal fees. Myth of Costs There is a lot of scaremongering and misinformation about patent costs. Using a patent attorney a UK patent can be obtained from around 1500 to A US patent for the same invention (using the patent application as written for the UK) normally costs around 3000 to Costs vary with the complexity of the invention and the nature and extent of any problems that arise. Myth of Unenforceability It is a myth that are unenforceable and that therefore patent protection is not worth pursuing. It is a very bad reason to not file a patent application for a new invention. 90% of IP is having a keep off the grass sign. Normally no one, not even large companies, wish to enter a patent dispute and a letter before action often puts a stop to any infringement. The number of disputes that go past that stage is relatively small. N.B. Any correspondence threatening an action for patent infringement must be carefully worded, as 'unjustified threats' of patent infringement can be an actionable offence.

3 Patent litigation can be relatively expensive, but in recent years there has been reform after reform to bring litigation costs down. In the UK there is now even a small claims court for IP disputes Further, if a patent is commercially valuable then there should be a way to enforce it. Either the patentee should earning enough from the invention to enforce it or alternatively the patent could be licensed to a large competitor of the alleged infringer, who might be happy to enforce it. Also schemes such as patent infringement insurance exist, and there are persons who will fund a patent infringement action for a cut of damages awarded. The message is that if you do have a great new invention, don t be put off from filing a patent application owing to the misapprehension that any patent will be impossible to enforce. Furthermore, if you suspect someone is infringing your patent rights then do not be put off from taking steps towards enforcing them. Patentability what can be patented? Grant of a patent is not guaranteed. There are three main requirements for something to be patentable. These are novelty and inventiveness and that the invention is not excluded subject matter. To obtain valid patent protection a patent application should be filed before any non-confidential disclosure of the invention. However, some countries have 'grace periods' from the first disclosure of an invention, within which time an inventor has the opportunity to file an application for valid patent protection. For example, the US has a 12-month grace period within which to file an application for valid patent protection. Everything that has been disclosed before the priority date and against which patentability is to be assessed is called the prior art. There are no geographical limits in considering disclosures in the prior art the invention must be new on a global basis. Similarly, there are no restrictions on the mode of disclosure things become part of the prior art through use in public, oral disclosure, sales, publication of written descriptions, etc. Novelty Novelty means that the invention must be new in light of the prior art in the sense that the exact thing has not been non-confidentially disclosed before the priority date of the patent application (i.e. the date of first filing of a patent defining the invention). This is essentially an objective test; something is either novel or it is not. Care should be taken in assessing novelty as whether something has been non-confidentially disclosed is not always straightforward. For example, a novelty-destroying disclosure must be

4 'enabling' in the sense that a person witnessing the disclosure could fully understand the invention. Inventive Step 'Inventive step', or 'inventiveness' means that the invention as defined is not obvious to someone skilled in the field of the invention taking into consideration all the information in the prior art. The test of inventiveness is, to a degree, subjective, and if something is new then it can often be argued to be inventive. Excluded Subject Matter The invention must not be excluded from being patentable. There are various exclusions to patentability, but these are often misunderstood. Furthermore, the exclusions vary from country to country. For example, in the UK it is not possible to patent a new card game that uses a standard deck of playing cards. Such a game could be patentable in the US. Owing to urban legend (the wording of the UK Patents Act doesn t help) it is often believed that software is not patentable this is not true, it s often patentable. Therefore, if you are concerned that your idea might be excluded from patentability, don t take that for granted seek professional advice. All patent attorneys should give free half-hour consultations. The UK Patents Act 1977 Section 1: (2) It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of - (a) a discovery, scientific theory or mathematical method; (b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever; (c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer; (d) the presentation of information; but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such. Thus, anything that is not purely an item listed in s.1(2)(a) to (d) above is not excluded from patentability.

5 Sufficiency The UK Patents Act 1977 Section 14(3): The specification of an application shall disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art. As stated by UKIPO: It is the responsibility of the applicant to ensure that, at the time of filing the application, the disclosure is clear and complete in respect of the invention claimed in each of the claims. If it is not, then either the application must be refused or, if it is possible to do so, the claims must be restricted to that which has been adequately disclosed. Deficiencies in the disclosure cannot be rectified by adding matter subsequent to filing. At least one embodiment of the invention or at least one method of performing the invention must be described, although if the claims themselves provide an enabling disclosure and are supported by the description then in appropriate cases this may provide a sufficiently complete disclosure. In many cases a single example or embodiment will suffice, but where the claims cover a broad field several examples or alternative embodiments or variations extending over the area to be protected by the claims may be necessary. Thus, if you're not able to describe at least one way of making the invention work you're not in a position to file a patent application. However, looking at it a different way, if you are able to describe a single way of making you can claim a much broader monopoly than just that single embodiment. The monopoly a patent covers is set out by the claims. Claims Patent claims are the part of the granted patent that define the monopoly afforded by the patent. Normally a patent is infringed when all the elements of one of its claims are found in an allegedly infringing product or process. For example, if a patent claim were to read: A bicycle comprising features X, Y and Z. Then, in general, the patent would be infringed by a bicycle having features X, Y, Z, but would not be infringed by a bicycle having only features X and Y or by a bicycle having only features X and Z. (Of course an exception to this might be if the bicycle is supplied as an essential element of the invention, in which case a bicycle with only X and Z might in some circumstances be held to indirectly infringe the patent claim).

6 Patent Infringement Patent infringement law varies between countries, but a patent is infringed in the UK under Section 60(1) of the Patents Act when: (a) where the invention is a product, he makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise; (b) where the invention is a process, he uses the process or he offers it for use in the United Kingdom when he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent; (c) where the invention is a process, he disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise. A patent is also infringed (subject to various criteria) in the UK when a person supplies or offers to supply and essential element of the invention. If a patent is successfully enforced then the patentee can be awarded an injunction against further infringement, damages or an account of profits, amongst other benefits. Priority dates The first filing of a patent application for an invention generates a 'priority date'; i.e. the date of filing. Any further patent applications for the same invention in the same country or overseas, if filed within 12 months of the priority date, can be backdated to the priority date. Thus, from filing a first UK patent application for an invention you are notionally protected worldwide provided any applications for overseas protection are filed within 12 months. Patent attorneys A patent attorney (or patent 'agent') is a type of lawyer that has undertaken special training to represent patentees before the national and regional patent offices. Our attorneys are dual qualified both as UK Chartered Patent Agents (CPAs) and European Patent Attorneys (EPAs), and some are UK and European trademark attorneys. In order to become a patent attorney it is normally necessary to have a first degree in a technical subject, such as engineering, biology or chemistry. The subsequent training to become a patent attorney is rigorous Along with being subject to the common law of confidentiality, patent attorneys are bound by

7 professional codes of conduct in relation to keeping any information that clients disclose confidential, so the public can be sure that they can discuss the possibility of patent protection with qualified patent attorneys without jeopardizing their rights. Patent Ownership It is important that the chain of title of ownership to any invention is addressed. The inventor is the actual devisor. Wrongly naming inventors on an application can lead to any patent being held invalid. Furthermore, ownership of a patent application leads to certain rights such as the priority right. Only the person owning the priority right can validly claim priority from an application. Client Action: Please let us know of any issues affecting ownership of the invention or any patent application as soon as you become aware of them. Otherwise loss of rights might occur.

8 2. Patent Searching Types of Patent Searching There are four main reasons to perform patent searching. 1. Patentability searching - to find out whether or not your idea is new and to assess the chances of obtaining patent protection. 2. Freedom-to-operate searching to find out whether or not you are likely to be liable for patent infringement if you proceed with certain actions, such as making and selling a product or using a process 3. Invalidity searching - to try to find information you can use to attack a particular patent, perhaps if you have been threatened with patent infringement or if you would like to use the invention described in a patent. 4. For informative purposes. A huge amount of free information is available on the patent databases. This information can be useful in product development. If you have a problem to overcome it's possible that someone else has solved the problem and filed a patent application for that solution. Patentability Searching Why A patentability search is a search to try to find out if a patent should be granted, and if so, what scope of protection should the patent cover. Patentability searching is done by most patent granting authorities as part of the patent application process. The patent granting authority tries to find any information that it believes might render the claims of the application defining subject matter that is either not new or not inventive. However, it can be beneficial to perform patentability searching before filing any patent application for various reasons, the main ones being: 1. To determine whether or not it is worth filing a patent application. If there is no chance of a patent being granted, or if any patent would be so limited in scope as to be commercially worthless then the inventor can choose not to file a patent application. 2. To help a patent attorney write a stronger patent application. Having knowledge of the most similar things allows a patent attorney to write an application in such a way as to define new and inventive subject matter, but avoid accidentally covering similar but distinguishable prior

9 art. 3. Performing a patentability search acts as a partial freedom to operate search. Freedom to operate searches need to be more extensive than patentability search as even if something is patentable it might infringe one or more patents. However, a patentability search is likely to discover most of the patents that an invention might infringe. When? Patentability searching can evidently only be carried out when the inventive concept is known. If the inventive concept is likely to change through product development, then although informative/patentability searching can be performed, and may indeed be helpful in guiding product development, further patentability searching may be desirable once the inventive concept has been finalized. Patentability searching might be the first search that is chosen (i.e. instead of freedom to operate searching) as even if the invention infringes one or more patents, it might still be patentable and commercially valuable. It may, for example, be possible to cross license the patent with the owners of other relevant patents. Where? The best free patent search database is espacenet: Searching for relevant information on the Internet is also desirable. As a patent search must be done in the course of every UK patent application, one tactic is to simply file a UK patent application and request the official search. The results should be returned within around 4 months of filing. Client Action: Please let us know if you would like a patentability search to be undertaken. Freedom To Operate Searching Why A Freedom To Operate (FTO) search is a search to try to find out if an invention infringes any existing patents. It is different in scope to patentability searching. For example, if the invention is defined as widget X+Y then a patentability search might look to find if widget X has ever also comprised Y. If it has not then widget X+Y might be patentable.

10 An FTO search however, needs to try to find out: a) if widget X is patented b) if Y is patented c) if widget X+Y is patented d) if widget X+Y is an essential part of any other invention (contributory infringement) Thus the FTO search for widget X+Y requires a great deal more searching, or than for the patentability search. The FTO search also needs to look at the status of any relevant patents to see if they are in force. Therefore FTO searches are generally much more expensive than patentability searches. However, they are strongly advisable, as if an invention does infringe an existing patent it cannot be commercialised without huge risk. When? Preferably an FTO search should be carried out when the inventive concept is finalized but prior to commercialisation. Performing a patentability search first is advisable if the invention is not new and was disclosed more than 20 years ago then it should not be covered by any valid patents and therefore should not infringe. In reality, anyone commercialising a product needs to weight up the costs of branding/prototyping etc. vs. the cost of a full FTO search (which is normally a few thousand pounds). One can of course skip performing an FTO search and hope that the patentability search has found everything relevant, but best practice must be to have an FTO search performed. Where? Again, the best free patent search database is espacenet: But remember you need to check that any relevant patent you find was granted, that the claims cover your invention and that the patent is in force (i.e. all relevant renewal fees have been paid). The status of UK patents can be checked here: Client Action: Please let us know if you would like a freedom to operate search to be undertaken.

11 Why file a patent application? 3. Patent Application Strategy & Tactics There are various reasons to file a patent application, some of the most common are set out below: 1. To obtain patent protection. If the invention is patentable then grant of a patent results in a 20-year monopoly (as of the date of filing). This monopoly can be hugely valuable if the invention is a commercial success. 2. To deter competition. Patent applications can be filed for anything regardless of whether or not grant of a patent is expected. Once an application is filed the owner can state UK patent pending no. xxxx. Currently patent applications are not being granted/refused for around five years from filing. Thus, filing a patent application can provide the owner with a 'keep off the grass' sign for at least five years. 3. For a patent search by the UKIPO. If the official search is requested on filing then the UKIPO should return the results of its patentability search within around four months of filing. 4. Scalability. If a patent is granted then the owner doesn't have to work the patented invention themselves, e.g. making and selling products. The owner can license the patent application and simply sit back and receive royalties. Even if the owner does wish to work the invention themselves owning patents can make their business very scalable as they can license the patent to other companies in the UK or abroad, thereby allowing for rapid growth geographically. 5. A patent is an asset. A patent is a piece of personal property, just like any other, such as a car or a house. A patent application or a granted patent will have a value, and if the monopoly it covers is valuable then the patent itself embodies that value and can be sold, mortgaged or used as a security. 6. To assist with commercial negotiations. Similar to point 2 above, but generally used as a tactic during licensing negotiations, having a patent pending can deter a larger company from unauthorized use of an idea if they believe that they might infringe a patent. Having a patent pending can strengthen your negotiating position. 7. Patent box tax reductions. As of April 2013 income derived from sale/license of patented technology is subject to a lower rate of corporation tax. More information may be found on the London IP website: Client Action: Read up on the patent box and discuss it with your accountant to make sure that you qualify for it and keep the records that you need to claim it.

12 Where to file a patent application? For UK applicants the first place to file a patent application is invariably the UK Intellectual Property Office, with an overseas filing campaign (if desired) starting at 12 months from the filing date of the UK application (the overseas applications claiming priority from the UK application). At the 12 month point either a PCT application is filed, or separate national patent applications (or a mix of the two a few countries, for example Taiwan and Argentina are not currently covered by a PCT application). When choosing which countries to cover it is important to be realistic - which are your main markets going to be? Don't overstretch yourself and waste money on patent protection in markets that are not going to be that important. When to file a patent application? There is sometimes no definitive answer to the question as there are often different imperatives. However, there are two main factors to consider that will often provide the answer: 'sufficiency' and route to market. We will look at each of these in turn and then discuss other factors that should also be considered. It should also be noted that although not discussed here, the reason as to why a patent application is being filed may have an impact as to when it is filed. Sufficiency Finalized design drawings or a prototype are not necessary in order to file a patent application. However, the invention must be sufficiently developed in order that it can be explained fully. An application for valid patent protection can be filed if the patent attorney writing the application has enough information to describe at least one way of making the invention work such that a person reading the application can make the invention work without exercising any inventive effort. If the invention is still in its infancy and there are inventive barriers to be overcome before the invention can be exploited then an application for valid patent protection cannot be filed. Thus, in such circumstances more research and development is needed and most probably development of a working prototype. Although a patent application for valid protection can't be filed it may be helpful to do some patent searching so as to provide information that can assist with product development.

13 Route to Market Many inventors have no real wish to start manufacturing and selling products that embody their invention. Instead a large proportion of inventors would prefer to license or sell any patent application or granted patent and simply receive payment from a company that wishes to exploit the invention. In such instances it is essential to be able to obtain patent protection in order that there is something to license or sell. Patent protection isn't guaranteed. In order for something to be patentable the invention has to be 'new' in the sense that it hasn't been done before, and it needs to be 'inventive' in the sense that it is not an obvious modification of the most similar things. Thus, why spend money on product design or prototyping if protection is not going to be available? We have met inventors who have spent thousands of pounds on designing a product, only to find that it is not protectable by a patent. As they had only ever wished to sell or license any patent they had wasted their money. The best first step for such inventors is either a patentability search and/or the filing of a UK patent application with a request for combined search and examination. Inventive Concept Inventive concept. If it is clear that the inventive concept will not change through any prototyping or design process then filing a patent application is a possibility. However, if it is likely that the inventive concept may change or be augmented by prototyping then it is probably best to delay filing a patent application until the inventive concept is finalized. Prior art Every day that passes more and more information is published, all of which can be relevant to the patentability of an invention. In general terms the sooner a patent application is filed the better, as anything published after the application has been filed cannot be cited against the application so as to prevent grant of a patent. Deadlines Filing a UK patent application sets the clock ticking on the 12 month period for filing overseas patent applications and having them backdated to the date of filing the UK application. If sufficient funds for a relevant overseas applications will not be available within 12 months of filing (or 30 months from filing if a PCT application is filed at 12 months) then it may be preferable to delay the filing of the first application. Patent applications are typically published

14 around 18 months from filing publication may be considered the point of no return as if relevant applications for overseas protection have not been filed then it is generally not possible to seek valid overseas protection. What to file? Patent applications are complex legal documents and need to be well written to maximize the chances of obtaining patent protection. A patent application consists of a description of the invention, claims to the monopoly sought, an abstract (used for administration purposes) and any drawings that help explain the invention. Some patent applicants decide to write and file a patent application themselves. However, in our experience, DIY applications are generally very badly written, and can even be dangerous, resulting in a loss of rights for the patent applicant. Thus, although it may seem self-serving, we must strongly advise that a patent attorney is used to draft any patent application. Indeed the guidance from UKIPO is: 'You can prepare a specification and apply for a patent yourself, but if you do not know a lot about patent issues, you should use a chartered patent attorney or other professional adviser with the skills needed to assess whether your idea is appropriate for patent protection, and who can prepare an application for you. Patent attorneys are legally qualified and independently regulated, and some will give you initial advice free of charge.' Source: Beware of inventions promotions companies. If you choose to use one ensure that any patent work (e.g. analysis of search results or writing of a patent application) is being conducted by a qualified patent attorney. There are three different options available on filing a UK patent application. For more information on these, please see our website: Filing Tactics There are various filing tactics that can be used with patent applications. Below are three of the most common: 1. Filing multiple applications to establish multiple priority dates 2. Withdrawing and re-filing applications for the same invention. 3. Filing a patent application just prior to launching the invention.

15 Multiple Applications Filing multiple patent applications can be a good tactic to obtain an early priority date for the general inventive concept. Subsequent applications filed in the following 12 months (the 'priority year') can incorporate developments made during the prototyping process. Such a filing tactic is very common in certain sectors, notably the pharmaceutical sector, where it is not uncommon for PCT application from up to ten (or even more) UK patent applications. Thus, an example filing runs as follows: First UK App. 1 Jan 2012 Widget X UK App. 23 Apr 2012 Widget X+Y UK App. 15 Oct 2012 Widget X+Y+Z PCT App. 1 Jan 2013 Widget X+Y+Z & claim priority from all three UK apps. Client Action: If you make any developments to your invention after your application has been filed, and you want to protect them please let us know as soon as possible Withdrawal & Re-filing Filing a patent application doesn't lead to an unstoppable chain of events. Patent applications can be withdrawn and re-filed to reset the timelines, thereby delaying costs involved with, for example, overseas patent application. Provided the invention has not been non-confidentially disclosed a patent application can be withdrawn and re-filed at any time prior to preparations for publication being completed (around 17 months from filing). The only downside is that anything published in between the original filing and the re-filing becomes prior art - relevant to patentability, whereas it would not have been if the original filing date were maintained. Client Action: If you wish to withdraw your application let us know as soon as possible. Filing Just Prior To Launch Filing a patent application just prior to launching a new product can provide an applicant with 12 months to test-market the product without committing to the cost of overseas patent application. Presuming the product is a success then revenue from sales of the product can be used to fund one or more overseas patent application (which should be filed within 12 months so as to claim priority from the original UK filing).