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Top Tips from Venner Shipley

Top tips for protecting your inventions

25th May 2020, 6:00 pm

The current lockdown caused by the coronavirus pandemic has given some people a lot more free time.  Additionally, we have all faced new and unexpected challenges due to the present situation.  This has led to a surge of innovation across the UK.

Technical inventions can be protected by filing a patent application.  Patents are useful to protect your inventions from infringers, but can also be valuable tools if you are looking to attract investment or to sell your business.  Almost any technical invention can be patented, including products (such as devices or compositions), and methods (such as uses and manufacturing protocols).

This article provides you with some top tips to help you obtain protection and maximise the value in your inventions.

  1. Keep your invention confidential

For an invention to be patentable, it must be novel.  This means that you cannot have disclosed the invention publicly prior to filing a patent application. The definition of public disclosure is absolute and includes any type of disclosure (including written or spoken), anywhere, at any time.

Prior to filing a new patent application, it is also worth checking that no one else has made the same invention independently.  Accordingly, before looking to patent your invention, we would recommend that you perform a quick search on Google and Espacenet (the European Patent Office’s database of all patents published worldwide).

Once a patent application has been filed you will be free to disclose and commercialise your invention.

  1. Confirm that your invention is non-obvious

In addition to being novel, an invention must not be obvious in view of the prior art, in other words it must involve an “inventive step”.  The prior art is everything that was in the public domain before a patent application was filed.

Generally, something is deemed to be inventive if it has an advantage associated with it, if it solves a technical problem, or if it provides an unexpected or surprising result.  If any of these apply to your invention when compared to the prior art then it is arguably inventive, and could be protected by filing a patent application.

  1. Ensure that you have all the information necessary to put your invention into practice

You do not have to have made a working prototype of your invention prior to filing a patent application.  However, a patent will only be granted if the invention is sufficiently disclosed and supported.  This means that at the time of filing, the patent application must describe the invention in enough detail that it could be put into practice.  You should ensure that you have this information and ideally, prior to filing a patent application, you should aim to perform any tests necessary to confirm that your invention works.

  1. Check that you own the invention

To determine who owns an invention it is important to first identify who the inventors are, i.e. who are the people who actually devised the invention.

Under UK law an employer owns the invention if it was made by an employee in the course of their normal duties or during other duties specifically assigned to them, or if the employee has a special obligation to further the employer’s interest (for instance if they held a senior position in the company).  If the invention was made by a contractor then the ownership will depend upon the terms of the contract.

Ownership can be assigned.  Accordingly, if you are not already the legal owner then you could ask the owner to assign their rights to you.

  1. Ensure that your patent application provides the breadth of protection that you need

A patent lasts for 20 years and most businesses change their products or production methods over time.  A valuable patent application will not only cover the current embodiment of the product or process but will be broad enough to cover any changes that you may make in the future.

You should also look to ensure that the scope of protection prevents any competitors from making a similar product, or from being able to “work around” the patent.

  1. Check that you are protected in the geographical regions which are important to you

Patents are territorial.  Accordingly, patent applications must be filed in each country or region where protection is required.

Typically, we would initially file a British patent application to protect your invention.  If protection is required outside of the UK, we would need to file further applications covering the territories of interest, within a year of the British application’s filing date.

To ensure that your patent applications give you the protection you need, you should aim to pursue protection in key markets, i.e. in countries where you or your competitors may manufacture, sell, or license the invention.

  1. Check that you have freedom-to-operate

A patent allows you to prevent others from manufacturing or selling a product or using a process.  Similarly, a third party with patent rights could prevent you from launching a product or carrying out a process if they have a patent which would be infringed. Even if you have obtained a patent, your product or process may nevertheless infringe a third party’s patent rights.

For this reason, whether or not you intend to seek patent protection, it is advisable to perform a freedom-to-operate search before launching a new product or using a new process.  This can ensure that you are free to act.

  1. Consult a patent attorney

While the above points are a helpful guide, a professional patent attorney will be able to guide you smoothly through the patent process, avoiding pitfalls.

We offer an intellectual property clinic where you can talk to an attorney free of charge to answer any queries you might have.  Please get in touch if you would like to book a slot.

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