Patent FAQs

I have developed a piece of software for use in GU medicine. Can I patent it?

As a general rule, software can only patented if it involves a “technical effect”. For some inventions in a non-technical field, identifying a technical effect can be a significant challenge (although the requirements can be less onerous in the US). You should contact Medipex if you would like to review the options for protecting an invention which uses software so that we can identify the available options.

Software is however protected in the UK and many other countries by copyright laws. More information about software patents can be found in Medipex’s “Software and Database Protection” fact sheet. If you should want to pursue patenting your software in the USA then you should contact Medipex for specific advice.

I have recently submitted a paper for publication but think that there may be some intellectual property rights in my work. Would I still be able to patent my invention?

Whether or not the invention can be patented depends on whether the paper has been supplied to anyone who is not required to keep its contents confidential. A peer review of a paper is frequently conducted under conditions of confidentiality so patent protection might well be available if the paper has not actually been published.

In any event, there is a 12 month grace period in the USA in which patents can still be filed after a non-confidential disclosure, so it may still be possible to obtain a patent in that market. You should contact Medipex for specific advice.

I have devised a new diagnostic technique. Is it patentable?

Whether or not your diagnostic technique is patentable will depend on whether or not the method is practised on or in the human body. If the diagnostic technique is carried out in a laboratory on a fluid or tissue sample (i.e. away from the patient) then it may well be patentable. However, if the diagnostic method is practised on a human body then it is unlikely to be patentable because surgical, diagnostic and therapeutic techniques/methods which are performed on or in a human body are not patentable (they are “excluded”). Materials, instruments and compositions for use in surgical, diagnostic and therapeutic procedures can however be protected.

I am currently developing a medical device but need to use some technology for which the patent belongs to another party. I am not carrying out this development for commercial purposes, so can I use the technology freely or do I need to seek permission from the patent holder to use it in my device?

A patent can be relied on to prevent activities which involve the manufacture, sale, import and use of a patented product. A licence agreement can eliminate liability for infringement. There can also be other defences which can apply in special situations, including use for private and non-commercial purposes or for experimental purposes. However, these defences require careful review to assess their applicability. Contact Medipex for more information.

Seven months ago I filed for a patent on an invention that I came up with during the course of my research a couple of years ago. Last week, another group in the UK published a paper which describes how they have come up with the same invention and all the details of how it works. They have not to my knowledge submitted a patent on their work. How does this affect my patent application?

The other group's paper will not affect your patent application in the UK if your application was filed before the paper was published and before its contents were disclosed.

Bear in mind that the other group might have filed a patent application and that the application has not yet been published (patent applications are not published until 18 months after the initial priority date). If both parties have filed patent applications, then the earlier application will be prior art which can be cited against the later application, meaning that the later application might be less likely to succeed than the later application. You should make your patent agent aware of the situation. In situations where you have developed an invention which you think might be patentable, you should contact Medipex as soon as possible.

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Further information or advice

Please contact Medipex on 0113 397 0830.