30 November 2022

What to know before filing a patent application

Have you come up with an idea which you want to protect? In that case, you might be interested in filing a patent application. We have prepared a guide to help you through the process.

Is my idea patentable?

Generally, a patent can protect subject-matter which provides a technical effect, such as a more efficient motor, a method of manufacture of chemical, or a method for processing an image. However, not everything can be patented, notably, a business method, aesthetic creation, or computer algorithm with no physical effect are typically excluded from patentability.

In addition, to be patentable, an invention must meet two main criteria. First, it must be novel which means that it must have never been publicly disclosed anywhere in the world before the date on which the patent application is filed. Second, it must involve an inventive step which means that it must be more than just a minor or obvious modification of something that has already been disclosed to the public.

If you think your idea is not patentable, there may be other ways to protect your idea. For example, an aesthetic creation may be protected using trade marks or designs and copyright , a computer algorithm with no physical effect may be protected under copyright law, and a business method may be kept secret using non-disclosure agreements (NDAs).

To find out more, please view our relevant services or contact us to find out if your idea is protectable.

What benefits does a patent provide?

A patent provides the rights holder with the ability to prevent anyone else from making, importing, selling, storing for sale, offering to sell, or using a product covered by the patent, or performing or offering to perform a process covered by the patent within the relevant territory for a maximum of 20 years from the filing date. Therefore, obtaining a patent enables you to prevent competitors from imitating your invention without your authorisation.
Being in control of the production and use of your invention helps you to build goodwill around the quality of your product or process to improve your business’s reputation and public image.

As the owner of a patent, you do not have to, or be the only one to, make the patented product or perform the patented process — you can license others to do so and collect revenue from the negotiated royalties. Alternatively, you can sell ownership of the patent through assignment. Due to the control over the invention provided by a patent and the ability to make money solely from owning a patent, developing a patent portfolio increases the valuation of a business.

If a competitor owns a patent covering an element of your product or process, obtaining a patent can be used as a bargaining tool for cross-licensing to lower royalties charged by the other patent holder and secure freedom to operate for your business.Furthermore, filing a patent application may provide security for an investor as a granted patent results in a monopoly in the market.

Profits earned from patented inventions are also subject to a lower rate of corporation tax in the United Kingdom using the Patent Box scheme.

What should I know before filing a patent application?

A patent application will only be granted if it covers subject-matter that is new and inventive at the filing date. Therefore, it is very important that the invention is kept secret before filing the patent application. A publication of the invention before the date of filing will result in the invention not being considered new in many jurisdictions and so will prevent the invention from being patented there.

You can discuss the invention before filing so long as there is implicit or explicit confidentiality. If you are unsure if there is explicit confidentiality, you can ask people to sign an NDA . To avoid the risk of others publicising the invention, we recommend minimising your meetings with others before speaking to a patent attorney.

Patent attorneys are also able to perform a search of the state of the art to find out if the invention appears to be new and inventive, as well as provide a freedom to operate opinion to discover whether there are any active patents which cover elements of the invention.

Patent protection cannot be obtained at the same time as keeping the invention a secret from competitors. A requirement of the patent application is that it must enable a skilled person in the relevant field to make the product or perform the process. The patent application will also be published 18 months after filing unless it is withdrawn beforehand. A patent is a monopoly right provided by the government in exchange for the publication of information about the invention which might otherwise be kept secret.

Another aspect to consider is the commercial benefit of obtaining a patent and whether the time scales and costs incurred are appropriate for the product or process life cycle and expected revenue. For example, a patent is suited to protect a product or process which is easy to copy but difficult to develop and will be commercialised for a long period of time. Successfully commercialising a product or process is not guaranteed by obtaining patent protection — patent protection is necessary to control competition, but focus is also needed on marketing and attracting investment.

I want to file a patent application, what now?

Congratulations on devising a patentable idea which appears new and inventive. The next steps will enable you to protect that idea and garner investment.

The first step is to provide a patent attorney with a detailed description of your invention to enable them to draft a description, claims, and figures of the invention for the patent application. It is not allowed to add new information to your patent application after the filing date. Therefore, it is very important that the patent application contains a detailed description of the invention including all possible embodiments.

Claims are a series of statements which specifically define the invention and, in a granted patent, they set out precisely what the patent protects and therefore, what actions done by third parties would constitute infringement of the patent. Claim 1 is generally the most important claim and provides the broadest definition of the invention. In order to form the basis for the best possible protection for your invention, the claims should describe not only the invention as you envisage it, but also the general underlying principle or concept of your invention, so they also cover alternatives or equivalents.

The cost and time for drafting and filing a patent application depends on the complexity of the invention and the territory in which protection is sought.

You will have to decide where you would like protection for your invention. You can select to file patent applications in specific national offices such as in the United Kingdom and United States, file a regional patent application such as a single European patent application covering up to 39 countries, or file a single international (PCT) patent application which will provide you with approximately 30 months to decide which national or regional patent offices to enter the application into.

You can also make use of the 12-month priority period after an initial filing to delay filing additional applications in other territories without affecting the patentability of the invention. Using the priority period and/or the 30-month period after filing a PCT patent application are useful if time is needed to assess the commercial potential of the invention and patent after securing a filing date.

What happens after filing?

After filing the patent application, the invention can be disclosed without the need for confidentiality which makes it easier to attract potential investors. Due to the ability to claim priority from an initial filing, any subsequent applications in different territories relating to the same subject-matter filed within 12 months will be examined for novelty and inventive step based on the state of the art at the time of filing the initial application. Therefore, publications of the invention subsequent to the initial filing will not be prejudicial to future filings.

Within approximately six months of filing, a search report from the patent office should be received detailing the state of the art found relating to the claims of the application and containing any objections against the application.

If the claims are not considered to be new and inventive, the claims may have to be amended and potentially narrowed to exclude products or processes known at the time of filing. These amendments should be done while maintaining a broad claim scope to avoid overly limiting the potential scope of protection.

Depending on what limitations of the claims are commercially acceptable and the nature of the objections, an examination report may later be received from the patent office maintaining the objections or presenting further objections. There can be a handful of rounds of written communication with exam reports being received from the patent office and responses from the applicant and their patent attorney being filed regarding the objections. Each round results in the application becoming closer to grant, takes around six months, and incurs service fees of approximately £1,200 depending on the complexity of the objections.

If the examiner agrees that the claims as filed or as amended are novel and inventive, a patent will be granted, otherwise the patent application will be refused following a final oral proceedings between the examiner and patent attorney. Most patent applications will either be granted or refused within a period of approximately four years from filing.

Once the patent is granted, it can be enforced immediately to stop others from commercialising the invention or to obtain damages/licensing fees for acts started from the point at which the application was published (which is usually 18 months after filing).

Renewal fees are also due for the patent application or patent which vary depending on where the patent application is filed. Renewal fees have to be paid to maintain the patent application or patent.

Although there are costs and timescales involved with obtaining patent protection, a patent provides control over how your invention is commercialised, improves your business’s public image, and helps generate investment. Firms that own IP rights, such as patents, have on average 20% higher revenue per employee than firms that do not according to an analysis performed in February 2021.

If you are interested in obtaining protection for your idea, please contact us here.