IP for Startups and other Small Businesses - Patents
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The handout for my talk on IP for Startups and other Small Businesses at the Beacon Enterprise Centre in Llanelli on 22 March 2019
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IP for Startups and other Small Businesses - Patents
- 1. Patents Jane Lambert1 A patent is a monopoly of a new invention. Where the invention is a product, the owner of the patent (“the patentee”) enjoys the exclusive right to prevent others from making, using, offering for sale, selling, importing or keeping the product for those purposes. Where the invention is a process, the patentee may prevent others from using the process, and using, offering for sale, selling, or importing products obtained directly from that process. Obtaining a Patent Patents are granted for countries, groups of countries or dependent territories by national, supranational or territorial patent officers. The world’s largest patent offices are the Chinese National Intellectual Property Administration (“CNIPA”), the United States Patent and Trademark Office (“USPTO”), the Japan Patent Office (“KPO”), the Korean Intellectual Property Office (“KIPO”) and the European Patent Office (“EPO”) in that order. Applicants have the choice of applying to individual patent offices or to a group of patent offices under the Patent Cooperation Treaty (“PCT”). Countries that are party to the European Patent Convention have the choice of2 applying to a national patent office or to the EPO in Munich. The EPO grants patents on behalf of the governments of its contracting countries. It is not an EU institution and the UK will remain a party to the European Patent Convention (“EPC”), the agreement that established the EPO after Brexit. Applying for a Patent Patents are granted for inventions that are: ● new ● not obvious ● useful, and ● not otherwise excluded from patentability. 1 Barrister, 4-5 Gray’s Inn Square, London, WC1R 5AH, Tel 020 7404 5252, jane.lambert@nipclaw.com 2 Includes all EU countries plus several others such as Norway and Switzerland that are outside the EU. 1
- 2. Applicants seeking a patent for the UK may apply to the Intellectual Property Office (“the IPO”) in Munich if they seek a patent for the UK alone or the EPO if they want a patent for the UK and one or more other parties to the EPC. The Specification Applicants must submit among other things a document known as a specification. Such specification should describe the invention for which a patent is sought with sufficient detail and clarity for it to be made or used by a person with the appropriate skill and knowledge (“the skilled addressee”). It should also set out the monopoly sought in numbered paragraphs known as the claims. Examination Officials known as examiners examine the application and consult all available materials to see whether the invention meets the above-mentioned requirements for patentability . If they think it does they will publish the3 application. The application cannot be opposed in the IPO but third parties may make representations to the examiner. If any and all objections can be resolved to the examiner’s satisfaction, the application can proceed to grant. The EPC has a procedure known as opposition by which a European patent can be challenged within 9 months of grant . That is more akin to revocation of a patent in the IPO than an opposition to a trade mark.4 Legislation Patents Act 1977 www.gov.uk/guidance/the-patent-act-1977 Patent Rules 2007 assets.publishing.service.gov.uk/government/uploads /system/uploads/attachment_data/file/694249/Patents -Rules-2007-06042018.pdf. European Patent Convention www.epo.org/law-practice/legal-texts/html/epc/2016/e /index.html Costs Costs vary greatly from country to country, the complexity of the application and the professional services required but in most countries there are three sets of costs: ● Patent office fees for examining the application; ● Professional fees; and ● Renewal fees that increase over the life of the patent in some countries. 3 That is to say, novelty, inventiveness, utility and not falling with any objection 4 See art 99 EPC 2
- 3. A patent for the UK alone is unlikely to cost less than £5,000. Patents for the world’s largest economies could cost several hundred thousand pounds, Term Unless the patent is revoked, surrendered or allowed to lapse, the monopoly will last for 20 years from the date of application, Infringement A patent is infringed by: ● making, marketing, distributing, importing, using or keeping a product that falls within any of the claims of the patent where the invention is a product; ● using a process that is specified in any of the claims or using marketing, selling or importing products obtained from using using such process where the invention is a process; without the patentee’s consent. Enforcement Patents are enforced by proceedings in the civil courts. In England and Wales patent infringement proceedings have to be brought in the Patents Court or the Intellectual Property Enterprise Court (“IPEC”). IPEC is for claims under £500,000 that can be tried within 2 days where the recoverable costs are limited to £50,000. There are no such limits in the Patents Court. Patent infringement is not an offence in the UK but it is in some other countries. According to TaylorWessing England and Wales is the most expensive jurisdiction in Europe in which to bring5 patent infringement proceedings. That is largely because England and Wales is a common law jurisdiction where the parties determine the issues to be heard and the evidence to be adduced. In a hotly contested patent infringement claim the costs often exceed £1 million on each side and the losing side is usually required to contribute to the costs of the successful party. Continental countries, Japan, China, Brazil and Russia are civil law countries where the judge decides the issues to be determined and the evidence to be considered. The USA is also a common law country but the losing party rarely has to contribute to the legal fees of the successful party. Also, many lawyers will act on the promise of a share of any damages that may be recovered. England and Wales is probably the most expensive jurisdiction in the world to bring patent proceedings. 5 https://united-kingdom.taylorwessing.com/patentmap 3
- 4. Reading a Patent Patents are addressed to skilled addresses and courts try to construe claims in a way that would be understood by a skilled person. For example, claim 1 of a hair removal device was as follows: “An electrically powered depilatory device comprising: ● a hand held portable housing (2); ● motor means (4, 4') disposed in said housing; and ● a helical spring (24) comprising a plurality of adjacent windings arranged to be driven by said motor means in rotational sliding motion relative to skin bearing hair to be removed, said helical spring (24) including an arcuate hair engaging portion arranged to define a convex side whereat the windings are spread apart and a concave side corresponding thereto whereat the windings are pressed together, the rotational motion of the helical spring (24) producing continuous motion of the windings from a spread apart orientation at the convex side to a pressed together orientation on the concave side and for the engagement and plucking of hair from the skin of the subject, where by the surface velocities of the windings relative to the skin greatly exceed the surface velocity of the housing relative thereto.” In a dispute over the patent, the question was whether “a cylindrical rod of elastomerised synthetic rubber held by its ends to form an arc subtending about 60°” which was used to trap and pluck out body hair was the same as a “helical spring”,6 Revocation In the UK patents may be revoked for any of the following reasons: (a) the invention is not a patentable invention; (b) the patent was granted to a person who was not entitled to be granted that patent; (c) the specification does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art; (d) the matter disclosed in the specification extends beyond that disclosed in the application as filed, or (e) the protection conferred by the patent has been extended by an amendment which should not have been allowed.7 Counterclaims for revocation of patents are usually made in infringement proceedings. Inventions that cannot be patented Art 53 (1) of the EPC provides that patents shall not be granted in respect of: (a) inventions the commercial exploitation of which would be contrary to "ordre public" or morality; 6 See Improver Corporation and Others v Remington Consumer Products Limited and Others [1990] F.S.R. 181 7 S.72 Patents Act 1977 4
- 5. (b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof; (c) methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods. Also, the following are excluded from the definition of invention by art 52 (2) EPC: (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information. However, this exclusion applies only only to the extent to which a patent application or patent relates to such subject-matter or activities as such. Threats Patentees should be careful when communicating with suspected infringers because they can be sued for threatening infringement proceedings unless the threat is justified.8 Transactions Patents may be licensed or assigned. Assignments and exclusive licences must be in writing and signed by the patentee. Useful Websites Intellectual Property Office www.gov.uk/government/organisations/intellectual-pr operty-office European Patent Office www.epo.org World Intellectual Property Organization www.wipo.int British Library Business and IP Centre www.bl.uk/business-and-ip-centre NIPC Law www.nipclaw.com 8 S.70A (1) Patents Act 1977 5