Applying for Patents

,

• Publisher: Emerald Publishing
• Year: 2016
• Print ISBN: 9781847166548
• eBook ISBN: 9781847166883
• Topic: Law
• Subtopic: Law Theory & Practice
• Index: Law

Applying for Patents is a concise journey through the maze of obtaining Intellectual Property Rights. The book is all encompassing and covers the whole process of protecting IPR, from the application for a patent, through to the application for a trade mark, registered design and also copyright. Overall, the reader will gain a clear idea of how to protect their creation and how to navigate the maze of this complex area, also how to manage the ongoing protection of intellectual property once permissions have been granted.

Ch. 1

Patents Generally

Why is it you are choosing to apply for a patent? Many people waste a lot of time and money applying to protect something that, in the end, can’t be protected for one of a number of reasons. The information below will help you to consider the reasons that you are applying for patent protection and chapter 2 provides a step-by-step guide to making the application.

What does a patent protect?

A patent protects new inventions and covers how things work, what they do, how they do it, what they are made of and how they are made. If a patent application is granted, it gives the owner the ability to take legal action under civil law to try to stop others from making, using, importing or selling the invention without permission. www.gov.uk/government/organisations/intellectual-property-office provides guidance on resolving patent disputes. The Intellectual Property Office has very detailed guidance on applying for patents, trademarks, registered designs, copyright and all other forms of protection.

The Intellectual Property Office (IPO)

The IPO is the official government body responsible for Intellectual Property (IP) rights in the United Kingdom. These rights include:

•   Patents

•   Designs

•   Trade marks

•   CopyrightOther forms of protection

The IPO is an Executive Agency of the Department for Business Innovation and Skills. They promote innovation by providing a clear, accessible and widely understood IP system, which enables the economy and society to benefit from knowledge and ideas. As an Executive Agency of the BIS they are directed and controlled by corporate governance rules to ensure that they supply public services of the highest quality, share good ideas, control costs and above all deliver what they are supposed to. To ensure that they act within these rules Ministers appoint independent members to sit on a Steering Board. This Steering Board has no executive functions; its role is to advise Ministers, through the Director General, on the strategies that the IPO must adopt.

Patent Attorneys-What is a patent attorney?

A patent attorney is a member of a profession of around 2000 members who have a particular expertise in the field of intellectual property. Intellectual property encompasses patents, industrial designs, design rights and related copyright areas, from computer programs to the shape of teapots, and trade marks. Patent attorneys work either in patent departments of large industrial organisations, in private firms of patent attorneys, or in government departments, and their work deals with obtaining and enforcing intellectual property rights.

Qualifications

To start with, all patent attorneys need a scientific or technical background. Nowadays, this usually means a science or engineering degree from a university or similar institution that confers eligibility for both UK and European qualifying examinations. A scientific training, however, is not enough. The would-be patent attorney must have the ability to acquire, and enjoy exercising, legal skills of drafting, analysis and logical thought, and, particularly the skill to use the English language aptly and accurately, in written work. In addition, because patents are increasingly international, a knowledge of at least French and German, although not essential, is highly desirable. Patent attorneys act at an exciting interface between disciplines of law, language and science.

Recent legislation has granted patent attorneys the same rights as solicitors and barristers to conduct litigation (i.e. to control the conduct of the cases) and to act as advocates in the Patents County Court. This Court was set up to hear patent and other intellectual property cases without the complexity and cost of High Court proceedings. Many patent agents become heavily involved in litigation generally in the Courts of the UK and in other countries. Also, some patent attorneys acquire an additional qualification entitling them to conduct litigation in the High Court.

The history of patents

The origins of patents for invention are obscure and no one country can claim to have been the first in the field with a patent system. However, Britain does have the longest continuous patent tradition in the world. Its origins came from the 15th century, when the Crown started making specific grants of privilege to manufacturers and traders.

Open letters marked with the King’s Great Seal called Letters Patent, signified such grants. Henry VI granted the earliest known English patent for invention to Flemish-born John of Utynam in 1449. The patent gave John a 20-year monopoly for a method of making stained glass, required for the windows of Eton College that had not been previously known in England.

Tudors and Stuarts

In the time of the Tudors, it became common practice for the Crown to grant monopolies for trades and manufacturers, including patents for invention. From 1561 to 1590, Elizabeth I granted about 50 patents whereby the recipients were enabled to exercise monopolies in the manufacture and sale of commodities such as soap, saltpetre, alum, leather, salt, glass, knives, sailcloth, sulphur, starch, iron and paper.

Under Elizabeth I and her successor James I, the granting of monopolies for particular commodities became increasingly subject to abuse. It was common for grants to be made for inventions and trades that were not new. In some instances, grants were made to royal favourites for the purpose of replenishing royal coffers.

In 1610, James I was forced by mounting judicial criticism and public outcry to revoke all previous patents and declare in his “Book of Bounty” that ‘monopolies are things contrary to our laws’ and “we expressly command that no suitor presume to move us”. He stated an exception to this ban for “projects of new invention so they be not contrary to the law, nor mischievous to the State”.

The doctrine of the public interest was introduced into the patent system and the words were incorporated into the Statute of Monopolies of 1624. Section 6 of the Statute rendered illegal all monopolies except those “for the term of 14 years or under hereafter to be made of the sole working or making of any manner of new manufactures within this Realm to the true and first inventor”.

The 18th century

In the 200 years after the Statute of Monopolies, the patent system developed through the work of lawyers and judges in the courts without government regulation.

In the reign of Queen Anne, the law officers of the Crown established as a condition of grant that “the patentee must by an instrument in writing describe and ascertain the nature of the invention and the manner in which it is to be performed”.

James Puckle’s 1718 patent for a machine gun was one of the 1st to be required to provide a “specification”. The famous patent of Arkwright for spinning machines became void for the lack of an adequate specification in 1785, after it had been in existence for 10 years.

Extensive litigation on Watt’s 1796 patent for steam engines set out the important principle that valid patents could be granted for improvements in a known machine. It also established that a patent was possible for an idea or principle, even though the specification might be limited to bare statements of such improvements or principles, provided they come into effect, or were “clothed in practical application”.

The 19th century

Britain’s patent system served the country well during the dramatic technological changes of the industrial revolution. However, by the mid-19th century it had become extremely inefficient. The Great Exhibition of 1851 accelerated demands for patent reform.

Up to that time, any prospective patentee had to present a petition to no less than seven offices and at each stage to pay certain fees. Charles Dickens described the procedure in exaggerated form, somewhat derisively, in his spoof, “A Poor Man’s Tale of a Patent”, published in the 19th-century popular journal “Household Words”; Dickens’ inventor visits 34 offices (including some abolished years before).

The Patent Office came about to meet public concerns over this state of affairs, and was established by Patent Law Amendment Act of 1852. This completely overhauled the British patent system and laid down a simplified procedure for obtaining patents of invention. Legal fees were reduced and the publication of a single United Kingdom patent replaced the issuing of separate patents for each nation of the Union.

A subsequent Act in 1883 brought into being the office of Comptroller General of Patents and a staff of patent examiners to carry out a limited form of examination; mainly to ensure that the specification described the invention properly.

An important milestone in the development of the British patent system was the Act of 1902, which introduced a limited investigation into the novelty of the invention before granting a patent. This required patent examiners to perform a search through United Kingdom specifications published within 50 years of the date of the application. Even with this restricted search, a vast amount of preparatory work was involved and an additional 190 examiners assisted the existing staff of 70 examiners.

By 1905, to enable searching, patent specifications from 1855 to 1900 had been abridged and classified in 1,022 volumes arranged in 146 classes according to subject. By 1907, the abridgement volumes extended back to the first patent to have a number:

•   Patent No. 1 of 1617 granted to Rathburn & Burges for “Engraving and Printing Maps, Plans ”.

The legislation in force at present is the Patents Act 1977, as amended by the Intellectual Property Act 2014. The 1977 Act was the most radical piece of patents legislation for nearly 100 years. The Act sets out to ensure that the patent system is well suited to the needs of modern industry, sufficiently flexible to accommodate future changes in technology and adapted to operate in an international context. The changes introduced in the IPA 2014, have been made broadly to:

•   make it easier for patent owners to provide public notice of their rights

•   provide for the agreement establishing a Unified Patent Court to be brought into effect in the UK

•   allow the Intellectual Property Office (IPO) to share information on unpublished patent applications with international partners to speed up patent processing and

•   expand the circumstances in which the IPO may issue an opinion in respect of patents

Main changes to patents

•   Easier notification: Instead of including a patent number on a product, a patent owner can now put others on notice of his rights by including a link to a website which provides details of the patent

•   Increased powers of IPO: as broader power to give opinions and the Comptroller General of Patents, Designs and Trademarks has greater power to revoke a patent on his own initiative

•   Single European patent: The act enables the intergovernmental agreement to provide for a Unified Patent Court within participating European countries, to be brought into effect in the UK. This will mean that it will be possible to apply to the European Patent Office for a single patent which has effect across all participating countries and for some issues to be litigated in a new Unified Patent Court. This could save businesses a considerable amount of money

•   Permits information sharing: The act allows the IPO to share information on unpublished patent applications with international partners, in certain circumstances, to speed up patent processing

•   Minor amendments: There are a number of other minor amendments made to the Patents Act 1977 including extending the period during which a third party can challenge ownership of a granted patent

Ch. 2

Obtaining Patent Protection

Vey importantly, to obtain patent protection, your invention must:

• be new (novelty)

• have an inventive step that is not obvious to someone with knowledge and experience in the subject

• be capable of being made or used in some kind of industry

However, your invention must not be

• a scientific or mathematical discovery, theory or method

• a literary, dramatic, musical or artistic work

• a way of performing a mental act, playing a game or doing business

• the presentation of information, or some computer programs

• an animal or plant variety

• a method of medical treatment or diagnosis

• against public policy or morality.

If your invention meets the above requirements, then you will be eligible to apply for a patent.

Novelty and the Inventive Step

As w...

Table of contents

• Cover
• Title
• Copyright
• Contents
• Introduction
• Chapter 1. Patents Generally
• Chapter 2. Obtaining Patent Protection
• Chapter 3. Trade Marks-Obtaining Protection
• Chapter 4. Registered Designs
• Chapter. 5 How to apply for a registered Design
• Chapter 6. Copyright Protection
• Chapter 7. Intellectual Property and Computer Software
• Chapter 8. Other Protection
• Useful Addresses
• Index
• Appendix 1 Standard forms
• Application for Patent
• Application for Trade Mark
• Application for Registered Design