23 Jan 2017
What is a Patent?
A patent is a monopoly of a new invention which is granted as a reward for teaching everyone with the relevant skills and knowledge how to make or use the invention (see Patents). The British Library defines a patent as follows:
"A patent for an invention is granted by government to the inventor, giving the inventor the right to stop others, for a limited period, from making, using or selling the invention without their permission."(see "What is a patent?" on the British Library website). The WIPO (World Intellectual Property Organization), the UN agency for intellectual property, defines a patent as "an exclusive right granted for an invention" in its Frequently Asked Questions Patents. It adds:
"In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problem."Why do Firms need Patents?
As I said above, a patent is a monopoly of am invention.
Unlike design right or copyright, you don't have to prove copying. If you have a patent and someone makes, imports, uses or sells anything that falls within any of your claims, that person infringes your patent. It does not matter if he or she developed his or her invention quite independently. It is irrelevant that he or she may never have heard of you or your invention.
For some businesses, that is exactly what is needed. A drugs multinational that has spent millions on developing a life-saving vaccine does not want a generics manufacturer to make a slightly cheaper version of its invention.
For many other businesses, however, a patent can be a complete waste of money. Patents are not cheap. It costs about £5,000 to get a patent for the UK alone and considerably more if you want patent protection elsewhere. Patents are expensive to maintain because there are renewal fees that actually increase with the passage of time in some countries. Patents can be revoked at any time without any compensation if a court or the IPO concludes that they should never have been granted.
The cost of defending a revocation action can be considerable, The cost of enforcing a patent can be even more. Anything from £200,000 to £1 million in England and Wales according to Taylor Wessing.
And the tragedy is that many patents are never worked and many of those that are worked never do more than cover their costs.
So why do so many Businesses apply for Patents?
Compared to many other European countries we don't apply for all that many patents. There were 7,095 applications for patents from the UK in 2015 compared to 31,670 from Germany, 13,370 from France, 8,451 from the Netherlands with a third of our population and 8,354 from Switzerland with one eighth. But even that figure is high when you consider how few of those patent applications actually make money.
There are lots of reasons why businesses apply for patents. It may be a condition for a grant or investment. It may be for marketing reasons in that a patent portfolio may make a business look as though it carries out lots of research and development work. It may be for personal vanity because it looks good on a CV. It may be because inventors cannot be sure whether the invention will take off or not in the early days. It may be simply that the inventor or his or her employer did not know enough about patenting.
Why do Governments grant Patents?
Patents are a way of encouraging investment in R & D and the diffusion of scientific and technical knowledge. They form part of a bargain between the public and inventors the terms of which I set out in The Inventors' Bargain on 21 Dec 2008:
“If you can persuade us that you have invented a new, inventive and useful product or process that does not fall within a number of exceptions, if you teach everyone in the industry how to make or use it, and then pay us a lot of money we shall register a specification of your invention at our intellectual property office. Registration will give you the a monopoly of that product or process in our territory known as a “patent” and so long as you keep paying us a lot of money periodically, you can enjoy that monopoly for a up to 20 years. We can’t promise that you will make any money from your invention. That’s up to you and your customers. If they like it they will buy it and if they don’t they won’t. However, if the public do buy your product or products made from your process, you have the right to prevent others from making, importing, supplying or using your invention during the term. That should be more than enough time for you to recoup your costs and make a tidy sum on the side if your invention is any good. If anyone tries to make, import, sell or use your invention during that time, you have the right to ask our courts for “injunctions” or orders to stop them, order them to pay “damages” to compensate for any loss or damage that you may suffer or both. Of course, you must have a good case and be prepared to pay your costs of going to court and maybe the other side’s if you lose. It will not be a crime to infringe your patent, so you won’t be able to complain to the police as you can if someone steals your watch or handbag. You must remember that while your patent is in force there will be restrictions on what you can do with it. You may not, for instance, threaten to sue shopkeepers just because they stock a product that you think may infringe unless it turns out that it does in fact infringe. After your term is up, anyone in the world can make the product or use the process in this country. Oh, and if at any time we find that we should not have granted a patent in the first place (which we may well do when you try to enforce it in infringement proceedings) we can take away your monopoly just like that. If we do that, you won’t be able to rely on any trade secret or other legal protection because the whole point of this bargain from our perspective is that you dedicate your invention to us. If we do take away your monopoly, all your efforts and investment will have come to nought, but, hey, that’s life. These are our terms, mate. Take them or leave them.”Patents are a great source of technical and scientific information that is available to anyone with a computer and internet connection. Not just our database but also those of other countries some of which are massive in comparison. Alternatives to patenting have been tried. Inventors were rewarded with certificates in the former Soviet Union and its satellites which afforded them certain advantages but that ceased to be possible once the means of production, distribution and exchange were returned to private ownership.
Are there Alternatives to Patenting?
Simply keeping the invention under wraps and relying on the law of confidence to prevent unauthorized use or disclosure is the usual way. That has proved to be spectacularly successful in the case of recipes for beverages like Coca-Cola and Chartreuse (see the paragraph on "Protection" in the Wikipedia article on Trade Secret). In contrast to patenting, imposing an obligation of confidence on an employee, contractor, consultant or supplier costs nothing or next to nothing to set up and can be enforced indefinitely. The drawback is that the obligation is discharged once the information enters the public domain otherwise than through a breach of confidence. That can happen because a product is lawfully reverse engineered once it is put on sale or the secret is discovered by parallel independent research.
Sometimes another IP right can be relied upon such as unregistered design right in the design of the circuitry or mechanism of a product or copyright in the source code of a computer program. That again costs nothing to set up but neither a design right nor copyright provides a monopoly. It does not protect the technology as such. Only the way in which a product has been designed or a program has been written. Not even that if it can be shown that there was no copying.
Where do I look up the Law?
The patent law of the United Kingdom has been codified by the Patents Act 1977 a useful consolidation of which appears on the IPO website (see The Patents Act 1977 (as amended). A number of statutory instruments implementing the various provisions of the Act have been made of which the most important are The Patents Rules 2007 and The Patents (Fees) Rules 2007 which have also been consolidated by the IPO (see The Patents Rules 2007 (as amended) The Patents (Fees) Rules 2007 (as amended).
if you seek a European patent you will need to look up the European Patent Convention and the Implementing Regulations which are to be accessed through The European Patent Convention portal on the European Patent Office website.
Decisions of the Patents Court, Intellectual Property Enterprise Court, the Court of Appeal and the Supreme Court are to be found on the British and Irish Legal Information Institute ("BAILII") together with those of the Scottish, Northern Irish and Irish Republic's courts. Hearing officers' decisions can be found on the Results of past patent decisions page of the IPO website. Decisions of Boards of Appeals of the European Patent Office can be accessed through the Case Law of the Boards of Appeal portal.
Who can apply for a Patent?
Generally, the inventor is the person who is entitled to apply for a patent for his or her invention. For instance, if the inventor is employed in a research or development department or in some other capacity in which he or she might be expected to invent something the right to apply for a patent passes to his or her employer.
How do I apply for a Patent?
The procedure for applying for a British patent is summarized in the article Patents Step by Step on the IPO website. There is also an excellent Inventor's Handbook on the EPO website and some additional guidance in the WIPO's Frequently asked Questions on Patents. The assistance of a patent attorney is strongly recommended.
Should anyone wish to discuss this article, feel free to call me on +44 (0)20 7404 5252 during office hours or drop me a line through my contact form.