Q&A: Patents

Patents file

Tristan Benson, dispute resolution solicitor at Tollers LLP, answers some key questions about patents

What is a patent and why take one out?

A patent protects the function and technical specifications of a new product or process. Once a patent has been obtained, the inventor has a monopoly on exploiting the invention for up to 20 years. Generally, patents are taken out on mechanical devices or components and industrial processes. As well as profiting from your invention, you can stop others using it or grant a licence for its use or sell the invention and its intellectual property rights.

What are the qualification criteria?

Your invention must be new - ie not in the public domain when the initial application (priority date) for the patent was submitted. It must also go beyond existing technology. When assessing whether there is an inventive step, consideration is given to whether the invention is 'obvious to a person skilled in the art'. It must be capable of industrial application, too.

How do I get a patent?

You lodge an application with the patent office of the country in which the protection is sought (in the UK this is the Intellectual Property Office). This should contain a request for a grant and patent specification. The specification will contain an abstract, description of the invention and the claims. The abstract is a short summary used for referencing. The description must provide information about the invention, enabling it to be performed by a skilled person. The claims set out the monopoly limits the applicant seeks.

What happens then?

After the initial application, you must submit a request for a search, if you haven't already done so. This must happen within 12 months of the filing or priority date. The search will check against current published patents and documents to see whether your invention meets the necessary requirements. If it does, it will be published, which usually takes place within 18 months of the filing or priority date. A thorough examination must then be requested within six months of the publication. When all the requirements have been met - the patent will be granted.

Can I license my invention to others?

Yes, but it's important to get your license agreement right. Generally, each licence is different, so great care must be taken to ensure the correct type of licence is granted. In addition, the licence must explain what the licensee is being granted, duration of the agreement, details of calculation and payment of any royalties or license fees. There are also various other standard provisions about termination, territory and whether a sub-licence can be created.

If I take out a patent in the UK, am I protected elsewhere?

No. If you're thinking of licensing the patent or selling your invention abroad, you should seek specific protection in that territory.

What about renewal?

The patent can last for up to 20 years from filing date, providing renewal requirements are met. Patents must be renewed on the fourth anniversary of the filing date and every year thereafter. There is a different fee each year for the renewal.

How can I ensure I'm not using someone else's patent?

Searches can be made via the Intellectual Property Office, however, you'll be charged for some searches. If you use someone's patent without their authorisation, the Court could order damages to compensate for their loss or require you to account for profits made as a result of the infringement. A person facing a claim for infringement should first consider whether there's any defence.

Such as?

Well, firstly, whether a licence has been granted for patent use. You might seek to challenge the patent's validity. Section 60 of the Patents Act provides defence if the act is done privately and not for commercial purposes or is "done for experimental purposes, which relate to the subject matter of the invention". Lack of intent or awareness doesn't provide a good defence.

What if someone uses my patent without my permission?

Initially, send a strongly worded letter to them asking them to stop. If that doesn't work, you should initiate court proceedings. Depending on the infringement, you may need to make an application to the Court for an injunction to prevent further infringement. Other remedies may be required, such as an order for the delivery up or destruction of the offending goods, an account of profits or damages to compensate for loss suffered. The extent to which they contest the claim will impact on how proceedings pan out. Alternatively, parties may seek to undertake some other form of dispute resolution.

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