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IP Basics

Do I need a patent?

Intellectual Property Office is an operating name of the Patent Office


Contents Introduction............................................................ 4 What is a patent?................................................. 4 What are the benefits of having a patent?........... 5 Is a patent right for my business?........................ 5 What are the alternatives to a patent?................. 6 Once my patent is granted, is it guaranteed?...... 7 The Process........................................................... 7 Do I need an attorney?......................................... 7 How long does it take?........................................ 8 How much does it cost?.................................... 10 What about protection overseas?...................... 11 Do I have to use an agent?................................ 11 Enforcement........................................................ 12 How will my patent be enforced?....................... 12 What can I do if my patent is being infringed?... 12 How can I resolve a dispute?............................. 12 Mediation........................................................... 13 The IPO Tribunal................................................. 13 Patent opinions.................................................. 14 High Court.......................................................... 14 Top Tips................................................................. 15

IP Basics: Do I need a Patent?

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The Intellectual Property Office helps businesses, innovators and entrepreneurs understand how intellectual property can create value from their ideas, turning inspiration into sustainable business success. In addition to granting patents, registering trade marks and designs, the IPO supports businesses to use, manage, and enforce their IP to achieve their fullest potential. A strong enterprise culture is central to creating a dynamic economy and with over 160 years experience and expertise, the IPO promotes innovation and growth by offering a vibrant programme of activities and informed advice and support to UK business: www.ipo.gov.uk/business

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IP Basics: Do I need a Patent?


Intellectual property and your business Most successful businesses, large and small, are built on well managed intangible assets or intellectual property (IP). McDonald’s ® has used their IP to establish franchises across the globe, while Coca Cola’s ® secret recipe and trade mark logo have stood the test of time and kept their product on the shelves. For companies like these, the value of their IP— whether it’s a trade mark, patent, design, copyright or trade secret— far outweighs the value of their physical assets. IP Basics: Do I need a patent? will help you decide if a patent is right for your innovation; the process by which the Intellectual Property Office grants patents; and how to enforce your patent. It does not provide legal, business or other professional advice so if you are in any doubt, you should get independent advice.

IP Basics: Do I need a Patent?

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What is a patent? A patent protects inventions and incorporates how things work, what they do, how they do it, what they are made of and how they are made. Essentially, a patent is an exchange where the patent holder is granted a monopoly which allows them to stop others from making, using or selling their invention. In return for this monopoly, their invention and how to create or replicate it is then published in publicly available patent databases that others can use after the patent expires. This trade-off strikes a balance between private interest to make money from an invention and the public interest for innovation in society. In the UK, the body responsible for granting patents is the Intellectual Property Office. In order to apply for a patent your invention must be new, demonstrate an inventive step, have a technical aspect and be capable of being made or used industrially. A patent can protect inventions such as machines, industrial processes, pharmaceuticals and their productive methods, computer hardware, electrical appliances and biological products and processes. You cannot patent artistic creations, principles, theories, mathematical models or any purely mental processes that have no tangible commercial application.

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IP Basics: Do I need a Patent?


What are the benefits of having a patent? A granted UK patent protects your invention in the UK and can last for up to 20 years if renewal fees are paid each year. A granted patent also gives you exclusive rights over your invention. You can control how the patented invention is used, including licensing or selling the rights to another person. You also have the legal authority to prevent others from copying, manufacturing, selling, and importing it without your permission, although any legal action is your responsibility, and you should ensure you have the resources to take enforcement action. Claire Mitchell, Inventor and Managing Director of Chillipeeps Limited, considers her patent an invaluable asset to her company, “If people copied our idea it would be detrimental to our business. The patent warns people off, gives us protection and was important for our innovation.�

Is a patent right for my business? Considering a patent should form part of your overall business strategy. You need to be sure that the potential for commercial return outweighs the time, effort and money required to get and maintain a patent. You also need to ensure that the protection a patent offers would help lessen the risks of IP infringements in the markets you are interested in.

IP Basics: Do I need a Patent?

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What are the alternatives to a patent? Depending on the type of invention and the extent of your financial resources, other types of Intellectual Property (IP) protection may be more suitable; design rights (registered and unregistered), trade marks, copyright or trade secrets. Patents are the most difficult to obtain and the most expensive to enforce. As it can take several years to reach grant and your application will be published after 18 months of filing, others may find ways to work around your patent or launch a similar product in this time. Therefore, you should carefully consider the best route for your innovation. For example, it may prove more beneficial to be the first to take the product to market and build a strong brand through a registered trade mark, which is a faster, cheaper process and easier to enforce. If you choose to patent you should consider carefully the right timing for filing your application. You must file before telling anyone about your invention, unless you have a strict non-disclosure agreement with them. Filing earlier also reduces the risk that someone else may come up with the same idea and file an application before you. However, filing too early, before you have properly determined how your invention works can also cause problems as you cannot add information to a patent application once it has been filed. This is an issue an IP attorney can help you with.

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IP Basics: Do I need a Patent?


Once my patent is granted, is it guaranteed? No. We do our best to ensure that the patents we grant are of the highest quality but it is possible that after grant, prior art (which is any proof that your invention is already known) may come to light and your patent may be proved invalid.

The Process Do I need an attorney? We strongly advise you to seek legal advice before applying for a patent as it can be a complex and costly process. A patent attorney will ensure you are on the right path for your innovation and will help draft your application to give you the best protection and commercial value from your work. As with most legal assistance, patent attorneys charge for their services but many will provide an initial short consultation free of charge giving basic advice. The Chartered Institute of Patent Attorneys (CIPA) can help you locate an attorney in your area www. cipa.org.uk

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How long does it take? It can often take around four to six years from the earliest application date to get a patent granted. There are a number of different stages to go through during this time, those of which are simplified in the diagram below: File a Description and Drawings at the IPO with Form 1 (fee £20/30). This will give you your first filing date, also known as your ‘Priority Date’.

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File Claims defining desired scope of patent protection and an Abstract, with Form 9A (fee £130/150) to request a search for relevant documents (‘citations’). File Form 10 with Form 9A if Combined Search & Examination is required.

Any time in the first 12 months from Priority Date (recommended same time as Description and Drawings).

Receive Search Report and any citations. Decide now if patent protection is worth pursuing, and in which foreign countries you might want patent protection.

About 6 months after filing Form 9A.

If wishing to file abroad, or to re-file a UK application, based on the application filed first at the IPO, this is your last opportunity to have these later filings treated as if they had been filed on the Priority Date.

12 month deadline of the ‘Priority Period’.

IP Basics: Do I need a Patent?


File Form 7 if requested to state your ownership of the application (eg: you are the inventor’s employer).

No later than 16 months from Priority

The application is published (‘A’-publication), and sent to libraries and databases around the world. If the invention is unlawfully copied in the UK, and if the patent is later granted, infringement damages can apply from now.

18 months from Priority Date

If not already done, file Form 10 and fee £80/100 to request Substantive Examination.

Within six months of ‘A’publication (two years of Priority Date).

The Substantive Examiner examines the application. Usually he or she issues an Examination Report raising objections in accordance with the Patents Act 1977, often relating to the citations found earlier, any citations found since, or those arising from third parties alerted by the publication of the application; plus any clarity problems etc.

About three years from Priority Date.

IP Basics: Do I need a Patent?

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The applicant responds either to rebut the objections or make amendments to the application without adding new technical disclosures to the application. Several exchanges of Examination Reports and amendments or arguments may follow until the Examiner is satisfied that the application is in order for grant.

Applicant responds within four months of first Examination Report. Response periods to subsequent reports are shorter.

The application is granted and the patent published (‘B’publication). For the patent to remain in force, annual renewal fees must be paid. The maximum duration of the patent is twenty years from the Priority Date.

Usually no later than 4½ years from Priority Date or 12 months from first Examination Report.

How much does it cost? The Intellectual Property Office (IPO) charge £230 - £280 to process a patent application, with discounted fees for applying online. Legal assistance is not included in this price so if you require professional advice or help with your application, you will need to factor this in also. You should expect to pay around £3000-£5000 for the drafting and filing of a patent application, although if your invention is particularly complex the cost could be higher. Taking an application through to grant is likely to cost £1500-£2500; again this may vary depending on the complexity of your case. Filing overseas will incur additional costs.

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IP Basics: Do I need a Patent?


Once your patent is granted, renewal fees start at ÂŁ70 for the 5th year and rise to ÂŁ600 for the 20th year. Also, should you need to enforce your patent at any time, this will generate additional costs.

What about protection overseas? If you want to protect your invention overseas you will need to apply to the relevant countries within the first 12 months of filing your UK application. You can apply to each country individually, file a single application under the European Patent Convention (EPC) covering over 30 countries in Europe or file a single application through the Patent Co-operation Treaty (PCT) covering a number of countries worldwide. www.epo.org - for European applications www.wipo.int - for worldwide applications Getting protection overseas can be a difficult and expensive process (added expenses include translating your application into various languages) so you may want to seek professional advice to determine where to apply and how best to go about it.

Do I have to use an agent? No, you can apply directly without going through a patent attorney or agency. Although the IPO can guide you through the process, we are unable to draft your application or advise on the best commercial approach. You should also bear in mind that a patent specification is a legal document and a lack of IP knowledge could prove detrimental to your application. This may mean that your application cannot be granted, or that your granted patent is less commercially valuable than it might have been.

IP Basics: Do I need a Patent?

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Many patent applications that are made are not granted; between 1991 and 2006, around a third of patent applications filed using professional advisors were granted but only around one-in-twenty patent applications filed without professional help were granted.

Enforcement How will my patent be enforced? It is your responsibility to enforce your patent and ensure it is properly protected, meaning that any legal action against another party will need to be initiated and funded by you. To try and deter others from using your work you can mark it as ‘patented’ with the patent number and country of application or if not yet granted, the words ‘patent pending’ or ‘patent applied for’ can be used. The IPO cannot help you enforce your rights, although we do offer a number of services for resolving disputes.

What can I do if my patent is being infringed? If someone has used your patent without your permission, you should seek legal advice in the first instance. Do not contact the other party yourself as this could cause further complications. The IPO cannot offer you legal advice.

How can I resolve a dispute? There are a number of ways in which you can resolve a dispute, some of which are provided by the IPO, although disputes can be difficult, drawn out and in some cases, cost a significant amount of money. Your attorney should be able to advise which method is most appropriate for you. 12

IP Basics: Do I need a Patent?


Mediation When successful, mediation is a quicker and cheaper alternative to litigation. It allows the parties involved to discuss the issue with the help of an independent mediator and come to a mutual agreement or arrangement. However, mediation does not guarantee a settlement and court proceedings may still be necessary. The outcome of a mediation can be made legally binding if the parties sign a contract. The mediator’s role is not to force parties to a decision or to make a decision themselves. The IPO offers a mediation service, details of which can be found on our website at www.ipo.gov.uk/ mediation

The IPO Tribunal The IPO Tribunal can resolve certain disputes. For example, disputes regarding ownership or entitlement of a patent are often heard by the IPO. If you are challenging someone else’s patent because you believe you can prove that it should not have been granted then the IPO can determine this issue. If the Tribunal decides that a patent is not valid then the IPO will revoke the patent and it will no longer be in force in the UK. www.ipo.gov.uk/pro-p-proceedings

IP Basics: Do I need a Patent?

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Patent opinions If you are involved in a dispute over infringement or validity of a patent and want to try and resolve the issue before going through the courts, you may want to ask the office for an opinion. Our opinion is an independent assessment of the main issues in a dispute (prepared by one of our senior examiners) and can help you negotiate a settlement or decide whether to take full legal action. www.ipo.gov.uk/p-opinion

IP Enterprise Court

(previously known as the Patents County Court) The IP Enterprise Court deals with a wide variety of IP issues, not just patents. It was established for lower value/less complex claims, with the maximum claim for damages set at ÂŁ500,000. www.ipo.gov.uk/ipenforce-courts

High Court If your claim is over the ÂŁ500,000 limit your case will be heard at the high court. Such cases are expensive and time consuming so you should carefully consider your position before deciding upon this route. However, if your patent is highly valuable and has been infringed, this may be your best option.

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IP Basics: Do I need a Patent?


Top Tips Great businesses begin with great ideas. Here are ten top tips for sustainable business success: Educate yourself. The Intellectual Property Office's 'IP for Business' tools and guidance can help you identify and protect your IP assets to turn your ideas into business success. Access a range of support at www.ipo.gov.uk/business. The free, fast and easy-to-use online IP Health Check tool can help you identify your IP assets and provide you with the next steps on how to protect them: www.ipo.gov.uk/iphealthcheck. The British Library Business & IP Centre in London supports entrepreneurs, inventors and small businesses from initial inspiration to successfully launching and growing a business. For more information go to www.bl.uk/bipc. It can be a false economy filing a patent yourself, get advice from a patent attorney or specialist IP solicitor. A list of patent attorneys is available from the Chartered Institute of Patent Attorneys (CIPA) www.cipa.org.uk. You can access advice and support though a network of 13 PatLib Centres (Patent Libraries) covering all regions of the UK. The centres have qualified and experienced staff who offer practical assistance on a variety of services including patent searching, clinics with IP professionals and business advice. To find a centre near you go to www.ipo.gov. uk/patlib.

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Whilst patent law prevents the granting of patents for a computer program, inventions which are implemented through the use of a computer can be patented. As such, this is a complex area of law where you would be well advised to seek professional advice. Investigate IP insurance; there are policies that can cover litigation costs. Use a confidentiality agreement if disclosing information to a third party before applying for a patent. You can perform your own patent search for free on the Espacenet patent database at www.epo.org/ espacenet. As well as protecting your own intellectual property, you should make sure you don’t infringe anyone else’s rights.

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IP Basics: Do I need a Patent?


Everyone owns intellectual property. What do you own? Straightforward free guides to understanding your IP. Free, interactive and basic IP training for professionals who advise businesses. Free, quick and easy IP information at your fingertips. Assess your own business for free with a tailored report to identify and value your IP. Reach your potential with quality and accredited IP adviser training.

Achieve your potential at: www.ipo.gov.uk/ business

Businesses create and use intellectual property all the time, perhaps without realising it. The value of your IP – whether it’s a trade mark, patent, design, copyright or trade secret – can far outweigh the value of your physical assets. Keep ahead of the competition with the Intellectual Property Office’s IP for Business tools and guidance which can help you create value from your ideas, turning inspiration into sustainable business success. The Intellectual Property Office promotes innovation and growth by offering a vibrant programme of activities and informed advice and support to business.

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To contact the Intellectual Property Office Tel: 0300 300 2000 Fax: 01633 817 777 Concept House Cardiff Road Newport NP10 8QQ For copies in alternative formats please contact our Information Centre.

IP Basics: Do I need a patent?  

IP Basics: Do I need a patent? will help you decide if a patent is right for your invention; the process by which the Intellectual Property...

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