Patents

When most people hear the term ‘intellectual property’, the first word that often comes to mind is the word ‘Patent’, although other forms of intellectual property (design right, copyright, database right, trademarks) also exist. A patent can be relied on to stop other parties from commercial activities involving an invention which has been protected in this way. This right is granted in return for providing sufficient information to enable a skilled person to understand how to make the invention work. Patent rights last for 20 years in most countries, subject to payment of annual renewal fees (although some pharmaceutical products may be granted a 5 year extension due to the amount of time it can take for such a product to go through all the trials required to bring it to market) and are territorial (there are no such things as ‘worldwide patents’); patents are granted in respect of individual countries and can only be enforced in those countries (i.e. UK patents are not valid outside the UK). Efforts have been repeatedly made for the EU to adopt a single patent enforcement system. There has been significant progress during 2012 towards implementation of the European Unitary Patent although we are not sure at the time of writing (March 2013) as to when the Unitary Patent will become available. While patents have to be obtained on a country-by-country basis, there are however mechanisms to streamline the granting procedure when protection is required in several countries, through international and European patent applications.

To qualify for patent protection in the UK, and other countries in Europe, an invention should be:

  • Novel: The invention should be completely new with no disclosure to any third parties having taken place prior to the patent being filed unless they understood that details had to be kept confidential. This includes not presenting any details of an invention at any meeting (for example in discussion, or on a poster), on websites, by sale or supply of a product, or in publications, prior to a patent application being filed.
  • Non-obvious: The invention should involve an inventive step, so that the invention would not be seen as obvious to someone who is skilled in the area. This requirement prevents patents being granted for trivial inventions. An invention will be seen as being inventive if it provides a solution to a technical problem with unforeseen advantages.
  • Capable of Industrial Application: This requirement is interpreted broadly so that, in practice, it is satisfied by most inventions.
  • Not excluded: Certain types of invention are ‘excluded’ from being patentable. These include musical, artistic and literary works, scientific theories, methods of doing business and computer software (more information about software patents can be found in the ‘Software Patents and Database Right’ fact sheet available from Medipex). It is also not possible for patents to be taken out on methods that involve contact with a human or animal body such as treatment regimes or surgery. Methods of diagnosis are only patentable if they take place away from the body, e.g. on blood samples in a laboratory.

The filing date of the first patent application for an invention is filed is called the priority date (this date is important because it is the date against which an invention is compared with what already exists to assess whether it is patentable). It can then take several years from this date for a patent to be granted, although the procedure can be accelerated if a granted patent must be obtained quickly.

Patents in most countries are granted on a ‘first to file’ basis, meaning that if two individuals come up with the same invention, the party which applies for the patent first will be more likely to be granted the patent. Historically, a different approach has been applied in the US where greater emphasis was placed on being first to make the invention rather than being first to file a patent application. This will continue to apply to patents and patent applications filed in the US up to 16 March 2013, but changes in the law from that date have brought the US law closer into line with that in the rest of the world.

Patent infringement can have serious consequences for the party that has carried out the infringement as it is likely they will have to stop the sale of any products which infringe the patent and potentially pay damages. When Medipex is assessing an idea for possible commercial value, one of the first stages in the assessment is to assess the risk of infringement of patents owned by other parties, and to advise on the options for minimising those risks. Once granted, patents exist as a tangible right which can be treated as corporate assets which can be bought, sold, licensed and which can be valued on a company's balance sheet. Note that rights in an invention (including patent and other intellectual property rights) which you generate during the course of your employment will generally be owned by your employer.

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These patent facts have been produced in conjunction with Urquhart-Dykes and Lord, Patent Attorneys (telephone 0113 245 2388 or email email@udl.co.uk). It is provided for the purposes of information only and is not intended as a comprehensive guide to patents. In any cases where you have concerns or require advice regarding intellectual property matters, you should get in touch with your IP lead or email Medipex.

For further information visit our Patents FAQs page.