The answer to many questions about patents is, “it depends”. It depends on your circumstances, the territories where you or your business act, your budget, your commercial strategies, the technical field, and so on. That said, some questions come up regularly, and this article seeks to give general answers to some of those questions.
We would still always recommend raising your questions with a patent attorney who can consider them in the relevant context. If you have a question, get in touch!
What is a patent?
A patent is a legal monopoly, limited both in how long it lasts and where it applies. It grants the patent holder the right to stop others from using their invention, as defined by the claims.
Why would I want a patent?
A patent grants you the exclusive right to use your invention in the territories where the patent is in force. If someone else uses the invention without your permission in those territories, you could sue them for patent infringement. You can also offer licenses to people who want to use your invention, for example in exchange for some revenue.
What is patent infringement?
The definition of infringement varies somewhat from territory to territory. In the UK, a patent is infringed when someone who does not have permission of the patent owner:
- Makes a product according to the invention;
- Uses the invention (whether as a product, or a method if the invention is a method);
- Disposes of a product according to the invention (e.g. by selling it);
- Offers a product or method according to the invention;
- Imports a product according to the invention; or
- Keeps a product according to the invention.
There is also “indirect” or “contributory infringement”, and infringement by use of equivalents. Through these, it may be that someone still infringes a patent even if they are not literally carrying out one of the acts above. Whether someone is infringing will depend on what they are doing and where, as well as on the language of the patent claims. Talk to a patent attorney as soon as possible if you think someone may be infringing your patent.
What does a patent cost?
This will vary significantly depending on the technical field, territory, and how complicated the invention is, for example. You might spend anywhere from ~£10,000 to ~£20,000 + VAT getting a typical UK patent application through to grant, although only part of this cost is up front, for drafting and filing an initial application, and the remaining costs come later. After that, there are annual renewal fees to keep it in force. These start at under £100 in the UK, but increase year-on-year until the end of the patent life time. Costs in other territories will be different.
I have an invention, and I’d like a patent, but I have no money. What should I do?
This will depend on your circumstances, but we would recommend not taking on personal debt in order to seek patent protection. Instead, we would suggest seeking support, for example from local councils and business support groups, Scottish Enterprise, etc, and of course from investment groups.
While there is no guarantee that a patent application will lead to a granted patent, the vast majority of applications that we file do result in this. Meanwhile, even applications can be a strong indicator of value in inventions, and this can be attractive to investors. In any case, it will be important for your success to understand how your IP fits in with your business strategy.
I have a patent application, but I can’t afford the next steps in the process. What should I do?
First, speak to your patent attorney. They can help you to strategise and to plan how best to make use of any available funding. For example, it might be that some optional steps could be omitted, that protection could be sought in a reduced number of territories, or that the next steps could be delayed for long enough to allow you to raise funds. Your patent attorney can also tell you about the implications of not taking the next steps, and what you might do instead, and when. Usually, the sooner you speak with your patent attorney, the better they will be able to help you.
I have a PCT application and need to decide where to file national and regional phase applications soon. How do I choose?
We suggest thinking about two main factors:
1. Cost: This step of the process is expensive and few of us are lucky enough to have endless funds. There will be more costs later on, and the more applications you file at this stage, the greater those costs will be. Talk to your patent attorney about what your budget is now, and what you would be able to expect to spend on your IP portfolio over the next 5 years or so. Remember, you can always decide to drop an application if funds are tight (or for any other reason) but you can’t add a new application for the same invention later on.
2. Commercial markets: Where will your product sell? Where will it be manufactured? Or, where will your method be used? Where do your competitors act? Are there any territories that are important your investors? Some territories will be irrelevant to your business, whereas some will be very important. While this is not true for all applicants, we normally see applications filed in at least the USA and Europe.
I have a European patent that is moving to grant, and I need to decide on validation territories soon. How do I choose?
Again, we suggest considering cost and commercial markets (see above). You should also consider whether obtaining a Unitary Patent is a good strategy for you. While not true for all applicants, we normally see validation in at least the UK, France, and Germany, or validation in the UK alongside a Unitary Patent.
See our article “How to choose countries for European patent validation” for more details.
I have a great idea and I want to get a patent and then sell the patent and retire on the money, how realistic is this?
In practice, this doesn’t happen very often. That said, it is possible. Whether you can do this will depend on the idea, the technical field, and the business contacts you already have or can make. Unless you can prove that the idea is marketable though (and you’d usually prove this by running a successful business that uses it) you’re unlikely to be able to quickly sell you patent or your idea.
How long does it take to get a patent?
In the UK the process usually takes about 3 to 5 years, or sometimes a little more. This is fairly typical for patents in most territories. However, in many territories (including the US and Europe) applications can proceed more slowly, particularly if the applicant takes steps to slow the application down. See our article “How long does it take to obtain a patent?”, for more details.
I need patent protection quickly, can I speed things up?
Yes, often you can. Depending on the territory and the stage of the proceedings, you may be able to accelerate the application. In some cases you need a reason to do so (e.g. to help to raise investment funding, or to take action against an infringer). In some territories, applications relating to particular technical fields can be accelerated. For example, in the UK, applications relating to environmentally friendly inventions can be accelerated through the “green channel”. Many territories also take part in the “patent prosecution highway” (PPH) which allows acceleration where a patent has been granted in another territory, or where a positive search or examination report has been obtained in another territory.
I have a deadline I can’t meet – can I get more time?
Often you can, but not always. A great many deadlines can be extended (often with a fee) but caution is needed, because some deadlines cannot be extended and missing deadlines can mean losing your patent or patent application. Always ask your patent attorney.
How long does a patent last?
In most territories, a patent can last for up to 20 years after the date on which the patent application was filed. For example, if a patent was filed in 2008, it could stay in force up until 2028. In most territories, this will only be true if the patentee pays renewal fees to keep it in force. It is also only true if nothing happens to invalidate the patent. In some territories, such as the US, patents can last beyond the 20th year due to “patent term adjustment”, in which case the number of additional days will be indicated on the front page of the patent. In some cases, particularly in relation to pharmaceuticals, protection can also be extended with “supplementary protection certificates.”
I accidentally shared my invention publicly; can I still get a patent?
The strict answer to this question is: No, if you share your invention publicly then it is no longer novel and so you cannot get valid patent protection.
The realistic answer to this question is: Maybe. It depends exactly what was shared and how. There still could be parts of the idea which are secret. It may also be possible to obtain valid protection in territories that offer grace periods.
The first thing to do is to discuss this with your patent attorney, who can help you to decide whether there is still value in seeking protection and, if so, for what and where.
Do I need to ask my patent attorney to sign an NDA before I tell them about my invention?
No. UK patent attorneys are members of IPReg, a professional body that regulates patent attorneys and trade mark attorneys. Among other things, this requires them to adhere to a code of conduct, which in turn requires them to keep their clients’ (and their potential clients') inventions secret unless and until they are instructed to share them. When a patent attorney files a patent application for you, they will be sharing your invention with the patent office and, all being well, that application will usually be published 18 months later. For at least these reasons, UK patent attorneys usually do not sign NDAs.
My idea is just a small improvement on something that already exists, can I still get a patent?
If the idea is new, inventive, technically applicable, and does not relate to excluded subject matter, then you should be able to get a patent even if it is only a small improvement. Patents are not only available for inventions that represent huge leaps forward in technology, smaller steps can be patented too. Sometimes, the simplest ideas are the best ones!
Can I get a patent for a computer program?
Patent systems in most countries refuse patent applications that are for computer programs per se. However, this restriction only bites in fairly specific cases. Consider the fact that Google, Apple, etc., have thousands of patents. So, you may be able to get a patent for something that involves a computer program. It is a good idea to discuss this with your patent attorney, and to consider whether the patent would cover something commercially valuable to you and your business. Our article “Is it possible to patent computer software?” explores this in more detail.
My invention is different to everything else, but a patent examiner says it isn’t novel, why?
Patent examiners specifically look at the claims of a patent application. A claim acts almost like a checklist of features that sets out the scope of the monopoly you’re asking for with your patent application. A patent examiner will tell you that your claims aren’t novel if they can find any document (or other public disclosure) that describes every item in that checklist, even if you have lots of new and different ideas that are described elsewhere in your patent application. The good news is that you can usually amend the claims to include details about those new and different ideas, and then the examiner should agree that your claims are novel.
My Freedom to Operate search came back clear, why am I now finding out about “prior art” that is relevant to my patent application’s novelty?
Freedom to operate (FTO) and patentability relate to two very different questions. An FTO search will look at rights held by third parties that might be enforced against you if you work your invention (for example, if you manufacture or sell your product, or if you use your method). Patentability considers whether the claims of your application are new over anything that has been made publicly available before. In one example, an earlier patent application that was never granted might deprive your patent application of novelty if it describes each of the features of the broadest claims. A patent application that was never granted won’t be a problem for your freedom to operate though, because if it was never granted it can’t be enforced. Our article “What is the difference between a patentability search and a freedom-to-operate search?” explores this in more detail.
How do you pronounce “patent”?
Most English speakers will say “paht-ent” (with the emphasis on the first syllable). It is less common to hear “payt-ent”. Both are perfectly well understood. You say payt-ent, I say paht-ent, let’s call the whole thing off.
What is the difference between a patent and a trade mark? What about copyright?
A patent is an Intellectual Property (IP) right which offers protection for a new and inventive technical invention. A trade mark is an IP right which offers protection for a name, a brand, a logo, or anything else that indicates that goods or services came from a particular business or person.
Copyright is an IP right which offers protection for creative works, such as music, writing, artwork, and so on.
There are other forms of IP rights as well, such as registered designs, utility models, database rights, etc. Many businesses will have some combination of these rights.
Do you have a question? Get in touch!
Author: Rebecca Douglas