top 5 patent tips. cerian jones, udl
DESCRIPTION
Top 5 patent Tips. Cerian Jones, UDLTRANSCRIPT
Top 5
Patent
Issues
Every
Innovati
ng
Compan
y Should
Consider
Dr. Cerian
JonesPh.D.
Computer
Science
Patent
Attorney, UDL
LLP
Intellectual Property – 4 main areas
• Designs
• Copyright
• Trade Marks
• Patents
1. Sort out ownership at the start of your project
• We’re all friends at the start!It’s much more difficult (& costly) to sort out ownership disputes when the relationship breaks down later
• Default position: right to patent belongs to inventor(s)– But who is the ‘inventor’?
• Unless it transfers to employer by operation of law– ‘course of normal duties’? Employee v contractor?
• Check contracts – IP clauses?
• Collaboration & join venture - who owns what?
2. Don’t disclose your brainwave (yet)
• Public disclosure of invention, anywhere in the world, destroys novelty
• If disclosure is sufficiently detailed to be ‘enabling’
• Written/oral disclosure, public use, internet, reverse engineering …
• 3rd party discussions – use an NDA
• Get patent application ‘pending’ priorto disclosure
3. Yes, you can patent software!
• Patents Act 1977: you can’t have a patent for certain types of inventions, including business methods or computer programs ‘as such’
• Does the software do something technical? Is it more than ‘just a better program’?
• E.g. does it control a process outside the computer?
• Recent UK case law: evolving approach to protection of software
• Different approach used by EPO
4. Do your homework
• Due diligence: are you walking into someone else’s territory? Do you have freedom to operate?
• Novelty searches prior to filing– Publicly available databases e.g. Espacenet– Professional search companies
• Competitor watching
• Choose a patent attorney with a technicalbackground which is appropriate foryour technology
5. Benefits of filing a patent application (or: ‘but why would I bother?’)
• Raises public perception of your company – clients/competitors see that you take your IP seriously
• Monopoly right - 20 years from filing
• Investors
• Company asset (mortgage, license, sell etc)
• Patent box: corporation tax reduced to headline rate of 10% for patent technology developed in UKapplies to all profits flowing from whole product, worldwide
