Briefing Note - Patent Law Protection

A patent confers upon the inventor of some new or improved industrial product or process a monopoly right over that invention for a certain number of years to enable them to exploit it and to stop others from exploiting it without authority. It gives an inventor the exclusive right to manufacture, use or sell his invention for that time period. In return for this protection, however, the inventor must provide full disclosure of his invention. Patents are the oldest form of intellectual property.

Like trade mark protection, the protection given to inventions by patents is territorial and so applications must be made in each and every country where protection is sought.

What is an Invention?

The Statute of Monopolies 1623 defined an invention as a manner of new manufacture and this definition was carried until the Patents Act 1949. However, the Patents Act 1977 ('the 1977 Act') does not define what an invention is. But, it excludes the following (among other things) from being inventions:

• a discovery, scientific theory or mathematical method
• a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever
• a scheme, rule or method for performing a mental act, playing a game or doing a business or a program for a computer
• the presentation of information.

Applying for a Patent

There are 4 international conventions which deal with patents. They are the:

• Paris Convention 1883
• Community Patents Convention 1975 (CPC)
• Patent Co-operation Treaty 1970 (PCT)
• European Patent Convention 1973 (EPC)

The UK is party to the last two. The EPC has 17 member states, whereas the PCT has more than 60 member states.

Patent Applications

In order to obtain a patent, the process begins with the filing of an application accompanied by the specifications, abstract and claims at the Patent Office. The Patent Office will then conduct a search for evidence which might show that the invention is not novel. The date of such filing is regarded as the priority date. The patent application will then be published 18 months from the priority date. This is known as the "A" publication.

Examination

Next the Patent Office conducts a extensive examination of the application which is conducted by the Patent Office examiners to ensure that it is in compliance with the Patents Act 1977. At the nub of such examination is the object to ascertain whether the patent specification discloses the invention in such a way that it could be performed by a person skilled in the art.

If the application passes that examination, the patent is granted and republished as "B" publication. Of course, within this process the applicant is entitled to make amendments, but in doing so he is not entitled to expand the scope of the patent.

Procedure to Grant

The whole process could take between 3 to 4 years. The initial term of a patent is 4 years and may be renewed on an annual basis until the end of 20 years from the date of the application.

Click here for brief descriptions of novelty, the meaning of an inventive step, and industrial application.