Patents demystified. Second edition.
by Helen Gavaghan
Business and Patent librarian, Ged Doonon, from Leeds Central Library led aspiring entrepreneurs last week through the whys and wherefores of searching for patents, those coveted State-granted licences for time-limited, exclusive rights to develop functional ideas for market.
Seven reasons drive patent database searches. Most obvious is the worldwide exploration needed to clarify whether your idea is new. Next, are there States in which distribution of your product would impinge a patent existing in that State? Or you might have a technology problem and want to check whether patents already granted or pending spark lateral thinking. Alternatively there may be some technology derivable from lapsed patents, just begging for your investment to take them to market. Remember that after the first four years patents must be renewed annually. If not they lapse, and a lapsed patent cannot be re-issued.
WHAT ARE YOUR COMPETITORS DOING?
You might search to keep up to date with filings by your competitors, so that you can gauge their business development ideas. Or you could track a group of patents to enhance your sector awareness.
Finally, individual companies or inventors: what are they doing? When checking on competitors one needs to realise that a patent, being a piece of property, may have been left in a Will or transferred to someone else. That information is not necessarily recorded, and additional professional advise may be needed. If a company goes into receivership, where the receiver is the Official Receiver, any intellectual property it owns then becomes the property of the Crown. Additionally, if a company is dissolved, its property belongs to the Crown.
In general terms if a patent passes as an asset on dissolution of a company to the Treasury Solicitors, then the Treasury Solicitors are obliged to obtain the best price possible for the property. In the case of the Official Receiver (as opposed to a receiver appointed to protect an asset in the event of, for example, dissolution of a company) dealing with an insolvency the situation can be very complex, and, says a spokesperson for the insolvency service, often experts are appointed to clarify the situation.
A spokesperson for the UK Intellectual Property Office says,"To change the owner of a patent, the applicant needs to fill out patent form 21 from the IPO website. The applicant also needs to attach as evidence a copy of the probate certificate, death certificate, or a letter of administration, as well as the fee of £50. Once this information and payment is received, the patent owner will be changed in the UK patent owner database, and the online register will be updated."
A patent application is a full disclosure of an idea, what it does and how it works. The idea must be functional. There is an abstract, an overview, with technical description and discussion of how it is better than other inventions which do the same thing. Here the applicant can describe how the invention differs from other similar ideas. Technical drawings are needed for mechanical inventions, such as a locking mechanism for a supermarket trolley. The final part, claims, is where the inventor says what is new about the invention. The application might include up to 10s of claims. "This part," said Doonan, "is the most important part of the application."
Once filed the patent is given a priority date and priority number, events which mark the first public disclosure of the idea. For the next 12 months nothing happens. During this time the inventor can evaluate whether there is a market. And during this period other inventors could be working independently on a similar invention, not knowing they could be wasting their time. If you are working independently on an invention not knowing an application has been filed which could undermine your work you have no redress, says Kate Reid, a Leeds-based, intellectual property solicitor from Pemberton Reid.
After 12 months the patent office undertakes a search and prepares a report including similar prior art. A letter x next to an existing patent means that patent is a particular threat to the applicant. After 18 months from filing the applicant's patent is published, and the letter A appended, denoting the patent is not yet granted. Next a substantive search is undertaken, after which if the patent is granted the letter B is added. German patents have a letter C when granted, because the German process used to be in three stages.
To minimise disappointment, a thorough search of country jurisdictions and patents within different subject classifications is essential.
Doonan says, "No patent search is perfect, not even those by the UK Intellectual Property Office. Databases have limitations. No current patent database contains every published patent, and, of course, thousands of new patent applications are published every week. And large numbers of database patent records are missing a classification, or English-language title, or an abstract".
Doonan began his talk by saying that even if granted a patent can be overturned. Though in the UK a patent is granted for 20 years from date of filing, the average life time is 10 years. The fee for the first year is £70.00, and the final year is £600.00.
It might be that an inventor simply wants to take an invention into production in a particular country, in which case that is possible, providing there is no patent in that country which could be infringed.
Patents covering many States are possible, though the cost increases per country.
Finally, never disclose your idea before filing your patent application. The date of filing is, in the UK system, the date from which, if granted, the patent will be valid.
Internet Patent sites selected by Leeds Business and Patent Information Library include:
Espacenet, the European Patent Office: http://worldwide.espacenet.com
US Patent Office: http:uspto.gov/patft/index.html
Patentscope, for mainly WO patents: www.wipo.int/patentscope/en/
International classifications: http://classifications.wipo.net
For further information contact:
Helen Gavaghan is, among other things, a former technology news editor of New Scientist, where, for three and a half years, she edited a patents page written by Barry Fox. The first edition of this feature on this URL, published 13th July, 2013 was based heavily on Ged Doonan's talk to the Leeds Inventors' Club at Leeds Central Library, given on Wednesday 10th July. This edition is published 16th July 2013.
Lambert J (2011). "Divided by a common language: US and UK Patent Law." Science, People & Politics. Issue Two (April to June), Volume ii, VII, 7th April, 2011.
Israel Brett (2009). "Intellectual property rights and English insolvency law: a need for new tools?"
Accessed on the Bird and Bird website 16th July, 2013.
Link supplied by Insolvency Service press office.