Do you have an invention that you want to protect?
4 March 2019 by Andreea Brindas
What is an invention? An invention is a product or a process. This can be either new or old (but in the case of old, this must be ‘improved’). If you want to formally protect your invention you should register it as a patent which is a registrable intellectual property right. If registration is successful, you will acquire a monopoly right in the registered patent for a period of 20 years. This means that you will have a claim against anybody using/reproducing/selling your invention without your consent, subject to limited exceptions. The requirements for registration are as follows.
The invention must be totally new (or if old, must be a material improvement on the original invention); and must not already be known to the public at the date of filing the application. This is a detailed area as it involves disclosure by either yourself or a third party, of your invention to the public. It therefore comes with risks of reproduction or reverse-engineering; if you are not swift in completing your registration.
If there has been any disclosure of your invention prior to its registration application, whether intentionally or unintentionally, the invention will no longer be new; and subsequently will not be novel, often preventing successful registration. However, in certain circumstances, there is a grace period of 6 months since the disclosure has taken place. During this period you can register your patent, giving you time to iron out any issues that arise.
The invention must ‘not be obvious to a person skilled in the art’ and have an inventive step. ‘A person skilled in the art’ is considered to be an experienced but unimaginative technician. To analyse whether the invention has an inventive step, the ‘person skilled in the art’ would look at the differences between the invention and what is already out in public. If the step would have been obvious to ‘the person skilled in the art’, there is no inventive step; and therefore, registration would likely fail.
Capable of industrial application
This requirement would normally be met by an invention unless it cannot be ‘made or used in any kind of industry, including agriculture’.
An invention will not be registered as a patent if it is excluded under section 1(2) Patents Act 1977, i.e. if it is:
- A discovery, scientific theory or mathematical method;
- A literary, dramatic, musical or artistic work; NB However, copyright may subsists in these works
- A scheme, rule or method of performing a mental act, playing a game or doing business, or a program for a computer; and
- The presentation of information.
If your invention meets the above requirements, it may be registered as a patent, subject to requirement of sufficiency. Sufficiency means that the patent specification must contain sufficient information to enable the reader to put the invention into practice. This is because an intellectual property right in a patent may only be registered for 20 years. After the expiry of the 20 years, third parties are at liberty to use/produce/sell the invention without infringing the owner’s right.
Registration of a patent is a complicated area of law. The Corporate Commercial Department here at Fisher Jones Greenwood LLP can certainly assist you with any questions you may have regarding intellectual property generally and our Dispute Resolution Department can assist with enforcing a claim against a third party or defending any such action. If you wish to register a patent, you will likely require a patent attorney to prepare the specifications and claims to be included in the patent application.
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