So You think you want a Patent?

Wednesday, 16 April 2008Jane Lambert

Topics- What is a patent?- The inventor’s bargain with the public- How do I enforce it?- Are there any alternatives to a patent?- How do I choose what I really need- Questions

What is a Patent?A partial and conditional monopoly granted by the state:- to make, distribute, use or import the invention, if the invention is a product; or - to use the invention, if the invention is a process (including distributing, using or importing products made from the process);within its territories for a limited period of time.

Partial and Conditional Monopoly- The invention has to be new, inventive and useful- The specification must disclose the invention clearly and fully so that it may be performed by anyone with the right skills

Partial and Conditional Monopoly- The Patentee has to pay his or her renewal fees and other dues- The Patentee must not abuse his monopoly

Within its Territories- The inventor discloses his invention to the world- Protection is limited to the territories of the contracting states- A “European patent” is not an EC patent but one or more national patents granted by an inter-governmental agency on behalf of the contracting governments.

Within its Territories- Paris Convention gives a patentee only a head start over other applicants in applying for patents in other countries- Patent Co-operation Treaty simply facilitates simultaneous applications to more than one state- no such thing as a “World Patent” or even a European Union patent - yet

Inventor’s Bargain with the Public(See notes page)

Are you still sure you want a patent?

Enforcement- No criminal penalty for infringing a patent in the UK – for very good reason- Patents have to be enforced by patentees in civil courts- Representation expensive in UK: £150-250,000 in County Court and £1 million in High CourtThought : is there a connection between cost of enforcement and number of EP applications?

InfringementIf the product is a product, the patent is infringed if, but only if, while the patent is in force, a third party makes, disposes of, offers to dispose of, uses, imports or keeps the product without the proprietor’s consent (s.60 (1) (a) Patents Act 1977).

InfringementIf the product is a process, the patent is infringed if, but only if, while the patent is in force, a third party uses the process knowing that such use would infringe including disposing and offering to dispose of, using or importing, any product obtained directly from the process without the proprietor’s consent (s.60 (1) (b) (c) Patents Act 1977).

Scope of Patent[An invention] .... for which a patent has been granted shall unless the context otherwise requires be taken to be that specified in a claim of the specification of the .... patent .... as interpreted by the description and any drawings ..... and the extent of the protection conferred by a patent ...... shall be determined accordingly (s.125 (1) Patents Act 1977).

Scope of PatentThe Protocol on Interpretation of Art 69 EPC ..... shall for the time being in force, apply for the purposes of [s.125 (1)] as it applies for the purposes of that Article. (s.125 (3) Patents Act 1977)

Scope of Patent The Protocol on Interpretation of Art 69 EPC has recently changed.

See the notes page for the wording of Art 69 and Protocol.

Infringement Procedure- Action must be brought in the Patents Court, Patents County Court (or theoretically in the UK IP Office with consent of all parties)- Claimant must specify at least one infringement in at least one of the claims- Court construes claim in accordance with s.125 (1) and (3) Patents Act 1977 and Protocol on Interpretation to decide what the claim means

Infringement Procedure- Court then considers whether the defendant’s product or process really does fall within the claim as construed in accordance with s.125 (1) and (3) and Protocol- Defendant usually counterclaims for the revocation of the patent on the ground that it should never have been granted because it is not new, not inventive, does not disclose the invention or some other ground- Counterclaim often succeeds because the defendant’s enquiry into prior art is almost always more extensive and more thorough than search by examiner

Infringement Procedure- If the action succeeds and the patent is upheld the court will usually order further infringement to cease on pain of fine or imprisonment together with an enquiry into claimant’s damages or an account of the defendant’s profits- Enquiry or account is essentially another trial which is at least as expensive as the trial on liability- If one or more of the claims are found invalid it may be possible to amend them without losing the whole patent

Reason for Expense- The Common Law adversarial system in use in UK, USA and Commonwealth requires the parties to raise the issues and produce the evidence whereas the inquisitorial systems of France, Germany, the Netherlands and Japan require the court to define the issues and decide the evidence they will hear- Expert evidence is nearly always needed to assist the court to interpret a claim in the way it would be understood by the industry- If there is an account or enquiry, forensic accountants will be needed to calculate the defendant’s profit or the claimant’s loss- Costs follow the event in this country but not in the USA- The success fee in England is too low to justify the risk and cost of taking instructions on a no win, no fee basis.

What can you do about it?- Ideally take out IP insurance before there is a claim- Seek an IP Office examiner’s opinion on validity and/or infringement under s.74A and s.74B of the Patents Act 1977 and looking for after-the-event insurance or someone to fund the case if the other side does not cave in- Consider proceeding outside the UK if you have a corresponding foreign patent that has also been infringed

Are there any Alternatives to a Patent?- Confidentiality if you can keep your invention secret long enough to make some money- Design right provides some protection against copying the shape and/or configuration of designs of articles in the UK but with some limitations- Copyright protects source code, screen output from unlicensed reproduction- Plant varieties protect new seed and plant varieties

How do I choose what I really need?- Remember that intellectual property protects businesses rather than specific inventions- Analyse business income streams and consider their vulnerabilities- Consider available legal protection and cost of enforcement- Prioritize protection- Back up any protection with IP insurance wherever possible.

Any Questions?Jane LambertNIPCThe Media Centre7 Northumberland StreetHuddersfieldHD1 1RLT +44 (0)870 990 5081E Jane.Lambert@nipclaw.com