Patent protection guidelines

Considerable amounts of time and money may be invested in developing new products and techniques, but what options are available to try to protect this innovation?

Patents provide the broadest protection for a new product or method, and are the only way to protect the way in which something works. A patent may prevent someone from taking the general concept of an invention, even if they do not copy it exactly. In the UK and most other countries, a patent application must be filed before any form of public disclosure is made including via a website, orally or through sales. It is important to seek advice as to whether a development may be patentable at an early stage to leave time for an application to be prepared and drafted before any planned disclosure. A patent attorney can advise whether there is potential for a patent application and ensure that any application is written in a way which may secure the broadest protection for the invention. It is important that an application is drafted carefully and fully from the start, as it is not generally possible to make changes to an application once filed. Drafting and filing an application typically costs in the region of at least £2000-5000.

Once an application is filed it is searched and examined by the Patent Office. Ultimately a patent will only be granted for an invention which is considered new and inventive in view of what was previously known. It can be several years before an application reaches the grant stage, and costs of prosecuting the application once filed can be similar to those involved in initially filing the application. While a patent cannot be enforced until it is granted, a pending application is often a considerable deterrent to competitors. A granted patent may be kept in force up to 20 years from the filing date.

The first step is to file a patent application in the UK. Foreign applications can then be filed within a 12 month period and backdated to the UK filing date. Deferring foreign filing provides longer to consider whether commercial factors justify the costs associated with foreign filings. It is also possible to have a search carried out to get a better idea as to potential patentability within the first year.

While a patent can prevent others from using the invention claimed, it does not provide freedom to operate the invention. It is possible that the product or process claimed could still infringe someone else's earlier patent.

Often considerable investment is also made in developing the appearance of products. Design law provides a way of protecting this added value. Design protection may complement patent protection, or provide an alternative if patent protection is not appropriate.

Under current design law it is possible to register a wide range of designs, including graphic symbols and logos, as well as the shape or ornamentation of a product. The design registration process is relatively cost effective and simple in Europe. As well as UK design registrations, it is possible to apply for a single EU wide registration. Photographs or other images of the design are submitted. A design registration can still be validly filed up to 12 months after a design is first publicly disclosed. Corresponding design registrations can be obtained based on the original UK/EU registration.

Unlike patent applications, design registrations are only checked for formal matters, and normally proceed to registration in a few months providing a useful deterrent effect. Validity of the registrations would only be put to the test if challenged by a third party. To be valid, a design must be considered to be original and produce a different overall impression to previously known designs.

In Europe and the UK a limited unregistered design right similar to copyright may arise automatically. However, unregistered design right is of limited scope, and duration, only protecting against direct copying, and not all designs will qualify for protection depending on factors such as nationality of the designer. Design right does not apply to surface decoration. If it is possible to register a design this is the best option. To maximise ability to enforce unregistered design right if necessary, it is important to keep careful records of designs, the date they were produced, and the designer.

Although it is possible to register designs yourself, it is advisable to seek professional advice to ensure that the maximum level of protection may be secured, and to determine whether other forms of IP protection may be available.

Design registrations only protect the appearance of the product as registered, and not the way a product works. Someone could avoid infringing a design registration by making a product appear different to the registration. While design registrations are a useful option for products where patent protection is not available, or to complement patent protection, a design registration cannot replace patent protection.

Katherine Mabey, Associate
First published in The Daily Engineer, April 2010