Protection of Innovation and
the Patentability of Inventions

A patent may be granted only for inventions in respect of which all the following conditions are satisfied:

• the invention is new - otherwise known as novelty;
• it is involves an inventive step; and
• it is capable of industrial application.

Novelty

This simply means that the invention must be something different from what has been done before. An invention is taken to be new if it does not form part of the "state of the art". This refers to all matters which at any time before the informal application (the priority date) have been made available to the public by written or oral description, by use, or in any other way.

Accordingly, confidentiality is imperative. Otherwise, the invention may become available to the public and become part of the state of the art, thereby losing the essential quality of novelty. Even the mere exhibition in a bookshop or window display is enough for an invention to have been made available to the public. Prior public use will clearly invalidate any claim to novelty for these purposes.

An Inventive Step

The second requirement of patentability is that the invention involves an inventive step. In this respect, if it is obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art, then an invention does not involve an inventive step. In other words, the invention must be "non-obvious", i.e. it should not be obvious to someone with a good knowledge and experience of the subject. One way in which this can be tested is to ask whether the invention fills a long felt want and is an overnight business success - if so the invention is more likely to be "non-obvious", otherwise others would have thought of prior to the patentee.

Capable of Industrial Application

The third characteristic of a patentable invention is that it must be capable of industrial application. An invention would be taken to be capable of industrial application if it can be made or used in any kind of industry, including agriculture. So, generally, inventions relating to products or processes that can be made or used by any industry are patentable. It is important to note that the invention may be used or applied in industry, it merely must be capable of that application.

Is Patent Protection Essential to Protect Innovation ?

It may be difficult sometimes to identify the products of research and development that are best suited to intellectual property protection by the patent regime and other areas of intellectual property. In many cases it is not essential to obtain patent protection to properly protect and exploit the invention. Whether patent protection is the most cost-effective form of protection in any field in part relies on whether the product or process is itself able to be reverse engineered once it enters the market. For example, in a software development project, the concepts and deliverables produced as the output of research and development may fall under or outside the umbrella of intellectual property protection.

Reverse Engineering Patented Inventions

To take a straight forward example, if one may literally look at an patented object and see the improvement over the prior art – patent protection is in all likelihood the only method that will successfully prevent others from exploiting the results of the capital investment in the research and development that product the patentable invention, as the invention is readily reverse engineered.

On the other hand, if the deliverable of a patented invention is not readily reverse engineered, be it a product or process, then it may be that adequate protection can be obtained by combining a mixture of other areas of intellectual property protection. Copyright protection shored up by licensing arrangements coupled with asserted trade secret rights provides one avenue to exploitation of the invention.

Consideration of Resources required for Exploitation

A shortage of resources to commit to bringing a new process or processes to the market and balancing the short, medium and long term objectives of the business may lead decision-makers in the direction of the licensing model to create a regular, alternative revenue stream. The resources that should be considered include:

• the capital available;
• intellectual capital – can a third party be brought up to speed within a commercial time frame to further develop the product ?
• labour availability;
• production line availability;
• access to a suitable and adequate distribution chain.

Keeping Focus

It is easy to lose focus on the objective and be held back by considering that the only practical form of intellectual property protection is patent law. Taking stock of the entire situation, objectives, resources and means of protection available may provide a provocation for cost-effective solutions which may make the difference between an exploited invention and one that remains on the shelf.

You can more read about patent infringement and the differences between patent and copyright protection, and our solicitors discuss software patents here.