Questions & Answers
- Q: What is a patent?
A: A patent protects new and non-obvious technical inventions, including products and processes. It gives the patent owner the right to prevent others from making, selling or using the invention in the particular country (or group of countries) where the patent is granted.
Generally speaking, to be "new", the invention cannot already be in the public domain anywhere in the world. This means that it cannot have already been disclosed by anyone, including the inventor themselves.
Technical inventions in most areas of technology can be patented. From electronic devices, to pharmaceuticals, to mechanical gadgets. Non-technical things such as literary works and music cannot be patented (these can be protected by copyright). Also, certain abstract things such as scientific theories and business methods generally cannot be patented.
Patents are not awarded automatically. They must be applied for and will only be granted if the Patent Office considers that the application meets all of the necessary requirements. A patent application is a legal document that must describe the invention and how it works, and include "claims" which are statements clearly setting out what is to be protected. A patent attorney can prepare and file a patent application, and help get it granted.
A patent can last for up to 20 years. Renewal fees must be paid (normally annually) to the patent office of the country concerned in order to keep the patent in force.
- Q: I have an invention. What should I do first?
A: The most important first rule is not to tell anyone about your invention until you have investigated protecting it. If your idea is disseminated too early, it can become impossible to secure ownership of it. Next, decide whether you are willing to invest the time and money needed to exploit the invention commercially; e.g. by putting the invention into practice yourself, or by selling or licensing it for someone else to use.
In order to stop competitors from copying your invention without your permission, you will need to file for a patent. Patents protect ideas in all areas of technology, so long as they are not already known and are inventive - i.e. solve a problem or provide some technical advantage.
You do not need to have built a working example of your invention before you apply for a patent. However, it is often worthwhile to prepare a brief written description of the invention, perhaps with one or two drawings, at an early stage. This description can then be taken to a patent attorney, who can advise on the most appropriate route for protecting the invention, within a budget and timescale that's appropriate to your business plan. A patent attorney is an expert in preparing patent applications and in managing the complex process of seeing an application through to grant of one or more patents.
Dehnscan provide an initial consultation with a patent attorney usually by telephone at no cost and with no obligation. Please contact us for more information.
- Q: What can I get a patent for?
A: Patents can generally be obtained for an idea or an invention, for example a product, a process, a method of doing something or a new use for a known product. The invention must be new, it must not be obvious and have some commercial use. Hence the invention must not have previously been described in a publication or used in public, and so it is very important to keep your invention secret until a patent has been applied for.
Patents are by no means only available for ground-breaking inventions; many everyday items such as stationary or kitchen utensils are patent protected. It is not possible to patent a theory or an artistic work, and there are some further exclusions which vary from country to country. If you are unsure whether your invention can be patented, please contact Dehns for further information or see http://www.dehns.com/site/information/information_sheets/.
- Q: Do I need a non-disclosure agreement with Dehns?
A: No, there is no need for such an agreement, because we are bound to confidentiality by our professional code of conduct. Thus, you can rest assured that you can discuss your invention freely with us and that we will not disclose this information to anyone else. It is, however, important to use a non-disclosure agreement when disclosing your invention to anyone else who may not be bound to confidentiality, such as a potential investor.
- Q: Is there anything I can do to speed up the patent process?
A: Once a patent application has been filed, it can take several years before it proceeds to grant. Some of the delay can be avoided by ensuring that all of the relevant paperwork is filed in a timely manner. However, often there can be long delays when the application is simply in a queue waiting to be looked at by a patent examiner. These delays can be avoided by requesting accelerated processing. In the UK reasons need to be given for why accelerated processing is needed. Typically, a good reason would be an infringing act is taking place and a granted patent is needed to resolve the issue. Another reason that is generally accepted is if the invention is a "green technology", meaning that it relates to improving the environment (less pollution, more energy efficiency etc.). If the request for accelerated processing is accepted, the UK Intellectual Property Office aims to review the application and issue further examination reports within two months. When applying for a European patent at the European Patent Office (EPO), it is possible to request accelerated processing without giving a reason. The EPO will then endeavour to review any submissions you file within three months. There are also provisions for requesting accelerated processing of applications pending at patent offices other than the EPO or in the UK. For example, a number of patent offices (including the UKIPO and EPO) have signed up to the "Patent Prosecution Highway", which allows applicants to speed up examination if the equivalent application has already granted in another jurisdiction. Please contact us if you have any queries about a particular country where you require patent protection as quickly as possible.
- Q: Do I need a patent attorney?
A: For many applicants, there is no legal requirement to use a patent attorney at either the UK Intellectual Property Office or the European Patent Office. Only applicants not having a residence or principle place of business in an EPO contracting state require a European Patent Attorney to act as their representative at the EPO. Neverthless, we would strongly advise seeking advice from a Chartered Patent Attorney or European Patent Attorney at an early stage when seeking protection for your invention. If you have been accused of infringing a patent, there is no requirement to be represented by a patent attorney. However, if you have no legal representation, we would advise contacting a Chartered Patent Attorney as soon as possible. Please contact us if you have any queries regarding the services that a patent attorney can provide. Any enquiries are treated confidentially and do not come with an obligation to use our services.
- Q: Can I apply to have a competitor's patent revoked?
A: In the UK, it is possible to revoke a patent either at the UK Intellectual Property Office or in the High Court. To do this, a brief setting out the reasons why the patent should be revoked is filed together with any evidence to support the arguments. After filing the request for revocation, the patentee will have a chance to respond with counter arguments. It is also possible for the patentee to amend the claims to address the objections raised. There is no time limit for revoking a UK patent, except where the entitlement of the patentee to the claimed invention is challenged. Revocation under these grounds has a time limit of two years after the patent granted. The European Patent Office also has a system for challenging the validity of granted patents. However, any opposition must be filed no later than nine months from the date that the patent was granted. As with the procedure in the UK, the patentee is given an opportunity to submit counter arguments and also amend the claims to address the objections raised. There are also provisions for requesting revocation of patents in other countries. Please contact us if you have any queries about a particular patent that you would like to revoke setting out the reasons why you think the patent should be found invalid.
- Q: Is there a deadline by which a European patent application must be granted, refused or withdrawn?
A: Whilst some countries (such as the UK) have a deadline by which a patent application must be granted, refused or withdrawn, there is no such deadline for European patent applications. Applications will often be granted or refused within a few years of filing, however, some applications, particularly those in subject areas where the European Patent Office have a large backlog of cases, can remain pending for many years. Many people do not find this a problem, since a patent application provides a certain level of protection from the date on which it was published, and it also delays the costs associated with having a European patent validated in individual European countries (this must be done shortly after grant). However, if it is important to obtain a patent quickly, then it is possible to request accelerated examination of a European patent application, in order to speed things up.
- Q: What is a trade mark?
A: A trade mark is a sign that distinguishes the goods or services of one trader from those of another. It is an essential element in creating and developing a brand. Usually trade marks are words, numerals, graphic designs, or a combination of any of these. However, any sign capable of graphical representation can function as a trade mark. Thus, the shape of goods, their packaging, colours and musical sounds can also be trade marks.
- Q: How do I find out if a USA patent gives protection in the UK?
A: A patent only has effect in the country that granted it. So a USA patent would not be infringed by someone making, using or selling the patented product within the UK. That said, a USA patent may restrict marketing and export of the product from the UK to the USA, as well as exports from the USA to the UK.
- Q: What is an NDA?
A: An NDA is a Non-Disclosure Agreement, which can also be known as a Confidentiality Disclosure Agreement (CDA). This is a confidentiality agreement between two parties that prevents the disclosure of shared information with a third party. Basically, the recipient of the shared information will be bound by the NDA not to disclose the information to any other party without the permission of the person or body providing the information. Before a patent application is filed for an invention, the details of the invention must be kept confidential. In most countries, any disclosure of the invention can prevent a patent being granted for an invention (See our information sheet - Essential Information on Confidentiality). It is therefore always preferable, where possible, to apply for IP protection before disclosing your invention to anyone. However, sometimes discussions regarding the invention may need to be made prior to applying for protection. Such discussions should be made under an NDA. There are exceptions where an NDA is not necessary, for example where the recipient of the information is a qualified lawyer, solicitor or patent attorney. Any discussions with these people will be legally privileged and thus confidential. The exact content and format of an NDA will vary depending on the situation. You should seek legal advice before using any confidentiality agreements.
- Q: How long will a patent last for?
A: The typical lifespan of a patent is 20 years, but it is necessary to pay maintenance fees to keep a patent alive. A patent may therefore expire sooner, if the maintenance fees are not paid. In some jurisdictions, notably the US, there are also certain circumstances in which the term of a patent may be extended by several weeks or even months. For certain inventions, the protection afforded by a patent may also effectively be extended by means of a Supplementary Protection Certificate. If you need to determine whether a particular patent is in force, it is prudent to contact a patent attorney for assistance.
- Q: Should I mark my product as being patented?
A: Indicating that a product is subject to patent protection can have benefits. For example, marking a product as having patent protection may reduce the likelihood of someone simply replicating your product. In some countries, marking a product as having patent protection can also have certain legal benefits, such as increasing the degree of infringement damages that can be awarded to you.
However, in most countries, patent protection must be indicated on a product in the right way in order to obtain any legal benefits. There can also be legal penalties for marking a product incorrectly.
If you would like advice from Dehns regarding marking a particular product or advice regarding a particular country, then please contact one of our attorneys.
- Q: How do I find out if my invention is already known?
A: You could start by searching the internet using a search engine, such as Google or Bing. You could also search the European Patent Office database, which is known as Espacenet. This is perhaps the cheapest and quickest way to find out if your invention is already known.
If you find out that your invention is already described in someone else's patent application, then it is worth considering whether or not you are at risk of infringing their patent rights.
If you would like more advice regarding this, then please contact one of our attorneys. If you are unable to find your invention using the internet, then Dehns could conduct a search for you. The cost for conducting a search starts at a few hundred pounds and will be dependent on the scope and complexity of the search.
Alternatively, Dehns could file a patent application for your invention and instruct the patent office to conduct a search for you. The cost for drafting and filing an application starts at a few thousand pounds and will be dependent on the complexity of your invention.
If you would like Dehns to a conduct a search or to draft a patent application for your invention, then please contact one of our attorneys.
- Q: What do you need from me to write a patent?
A: If you have an invention that you would like to protect, then please contact us to discuss your idea and the options for getting protection for it. We can offer you a brief initial consultation at no cost and with no obligation.
You need to explain to us what your invention is and how it works. It is also helpful if you can give us some background information about the field of your invention to help us explore in what way your invention differs from what is already known.
If your invention is a device, then drawings are useful and it is also helpful for us to examine a prototype, if this is available. We can also turn an unpublished manuscript into a patent application.
If you decide to take matters further, then we can provide you with more detailed, tailored guidance as to what information we require.
- Q: Can a patent make me rich?
A: A patent gives you a monopoly right in your invention. There are several ways in which such a monopoly may be exploited.
Your may use your patent to stop competitors from using the patented invention, which may well be beneficial, particularly if your invention concerns a product that you wish to sell to the public. Alternatively, it may be possible to generate an income by licensing or selling the patent to third parties. Many companies also find that owning a patent can be a helpful tool for attracting investment.
The UK Government is introducing a preferential regime for profits arising from patents, known as a Patent Box. This will allow companies to apply a reduced corporation tax rate to profits attributed to patents. Please refer to our information sheet entitled "The Patent Box" for more detail.
A patent can thus be a great asset, which may well bring about financial gain, provided that appropriate steps are taken to exploit it.
- Q: What is a design?
A: A "design" is defined in the Registered Design Act 1949 as meaning the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. The Act goes on to define a "product" as meaning any industrial or handicraft item, including parts of a more complex product, packaging, get-up, graphic symbols and typographic typefaces.
- Q: What is the design application process?
A: In order to register a design and ensure full IP protection, a design application needsd to be filed at the relevant national and regional registration office where protection is required.
In the UK, the UK Intellectual Property Office (UKIPO) is responsible for granting design registrations, and in Europe it is the European Union Intellectual Property Office (EUIPO).
In both the UK and EU design systems, up to seven representations (which can take the form of drawings, sketches, photos, formal line drawings, etc..) can be submitted for each design. These representations usually show the design from different angles, or in different positions if relevant.
In the UK and EU systems, an infinite number of designs (sometimes called “embodiments”) can be included in a single design application – this is called a “multiple design application” and this effectively consists of a “bundle” of designs originated by the same owner(s) and filed as a single application.
All designs (or “embodiment”) in the multiple design application need to be in the same class as per the Locarno Classification System, which is the recognised International Classification for Industrial Designs. In a multiple design application, each design can still have up to seven representations, and each design is dealt with and assessed separately, as well as having its own legal status once granted as a registered design. One of the advantages of the multiple design application is that there are a significant reduction in official filing fees when compared with filing multiple applications for different designs.
Once the application has been filed, there is no substantive examination by the UKIPO or EUIPO – the only examination will be to ensure formalities have been met. As a result of this, designs can often be granted in a matter of days. If the relevant office believes there to be issues with the application, any objections will be communicated to the applicant and delays will follow.
Outside of the EU, countries approach to designs sometimes differ, so if you are looking to obtain design protection in non-EU territories, please contact us to discuss your specific requirements.
The information on this page is necessarily of a general nature and is given by way of guidance only. Specific legal advice should be sought on any particular matter. Dehns accepts no responsibility whatsoever for any action taken or not taken on the basis of the information contained herein.