Patents

A SUMMARY OF SERVICES FHS CAN OFFER:

• Preparation of patent specifications in all technical disciplines.


• Personal representation of clients before the UK and European Patent Offices.


• Ability to instruct attorneys to represent our clients before other Patent Offices around the world.


• Pursuing patent applications to grant through the Examining Divisions of the UK and European Patent Offices.


• Filing and defending oppositions to European patents and revocation or invalidity actions before the UK Patent Office and courts.


• Advocacy at oral proceedings before the UK and European Patent Offices.


• Enforcement of patents against infringers and defence of clients against allegations of infringement.

ABOUT PATENTS

What is a patent?
A patent is a legal monopoly right granted by a Patent Office in return for the public disclosure of information about an invention. Patents are granted for the functional and technical aspects of products and processes and specific conditions must be fulfilled. The technology doesn't necessarily have to be complex; most patents are not for revolutionary leaps of technology but for incremental improvements.

The monopoly rights granted by patents allow their owners to recoup their investment in research and development before others can enter the market.

In view of the complex nature of preparing, filing and prosecuting a patent application, it is important to seek professional advice from a Patent Attorney. If the application is not prepared correctly this could affect the protection provided.

What else do I need to know?
Patent rights are territorial and have to be applied for in each state of interest. A UK patent does not give protection outside the UK.

What protection do I get?
A granted patent gives you the right to stop others from commercially exploiting your invention. Patent rights last for up to 20 years in the UK. Some patents, such as those of medicinal products, can be extended for a further five years protection with a Supplementary Protection Certificate.

What about overseas protection?
In general, a patent application must be filed at each national Patent Office to obtain a granted patent in that state. However, international patent applications can be filed covering over 100 states via the Patent Co-operation Treaty (PCT) in an initial single application. European patent applications can also be filed covering a number of European states in a single application.

What if someone infringes my patent?
If you become aware of someone commercially exploiting your invention without your permission, this should be brought to our attention. As your professional advisors, we can prepare a carefully worded letter asking the infringer if they are aware of your patent. The mere existence of a patent may often be enough to deter a potential infringer. Otherwise, legal action may need to be taken to claim damages and seek an injunction to stop the infringement.

What about other people's patents?
Owning a patent does not prevent you from infringing someone else's patent and so it is important to bear this in mind when commercially exploiting your invention. Whilst this may sound alarming it is rarely a cause for concern. However, it may be that you will need to negotiate a licence with the owner of another patent.

What about the phrase "patent pending"?
When used in conjunction with products or advertising documents, this serves as a warning to third parties that the owner has applied for a patent to be granted and gives notice of rights that may be gained. The phrase should preferably be used in combination with the official patent numbers allocated by the Patent Office. It is a criminal offence in the UK to use the phrase falsely.

REQUIREMENTS FOR A PATENT TO BE VALID

An invention can only be protected by a patent if, at the date of filing a patent application, the invention is novel (and also non-obvious).

Novelty is destroyed by any public disclosure of the invention, eg by it going on sale or display or by it being described in a published article. So it is extremely important that due consideration be given to the possibility of seeking and obtaining patent protection for a new or improved product before information relating to it is disclosed to third parties. We are happy to consider new products as and when they are developed, and to provide advice regarding their potential patentability.

Obtaining UK patents
To file a patent application, we will need as much information as you can provide (including any sketches) relating to the invention (or a planned product incorporating it) and details of existing relevant products. Based on this, we would prepare a draft patent specification for you to review. For the patent to be valid and strong, the patent specification needs to include as much information as possible about the invention and how it functions.

For the first 18 months of its life, a patent application is kept secret by the Patent Office and cannot be made available to anyone (other than Patent Office employees) without the consent of the applicant. Once filed, the words 'patent pending' and the official patent application number provided by the Patent Office can - and indeed should - be used on the product and all relevant literature. You can then publish details of the invention, undertake initial marketing and, if appropriate, start selling products embodying what is disclosed in the patent application.

Any improvements or modifications made to the products should be disclosed to us in confidence before products including them are published or sold - to ensure that the improvements or modifications are protected by the existing patent application, or to enable any necessary follow-up patent applications to be filed.

After filing a patent application, the Patent Office requires what is known as a 'preliminary examination and search' to be carried out. A request for this can be made at the time of filing the application or within one year following the filing date. During the course of preliminary examination the Patent Office conducts a search through existing published patent literature, the search results providing a useful guide as to the likely valid scope of any patent granted.

The next step is publication of the application (with the results of the search conducted) 18 months after the application filing date. Within a six month period following publication a request for substantive examination of the application must be made.

Obtaining patents in other countries
If foreign patent applications are made by the first anniversary of the filing date of the original UK patent application, their effective filing date, known as the 'priority date', will be that of the UK application.

Obtaining patents in other countries is an expensive, complex and lengthy process. We strongly recommend that you ask us for our specific advice before considering embarking on obtaining foreign patents but the following brief summary provides a general introduction.

Foreign patents can be obtained in a variety of ways, the most common being:

1. Individual national patent applications
Patents are national monopoly rights granted by governments for their respective countries, so if you wish to obtain protection in several different countries, you have to obtain individual national patents in each country of interest to you. One way to achieve this is to instruct us to file individual national patent applications on your behalf in each of the countries.

There are also international procedures by which a single patent application 'designating' many countries may be filed. One example is a European patent application which results in a granted European patent that is split into individual national patents once the European patent is granted. Another example, known as the 'PCT' procedure, defers your need to file individual national patent applications while retaining your UK priority date.

2. European patents
At the European Patent Office it is possible to file a European patent application 'designating' some or all of 36 European countries selected from:

Austria, Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Macedonia, Malta, Monaco, the Netherlands, Norway, Poland, Portugal, Romania, San Marino, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the United Kingdom.

You may also extend your European application to cover Albania, Bosnia and Herzegovina and Serbia.

Once the European Patent Office has granted a European patent, the patent must be registered in each of the designated countries in which you wish to maintain it. Consequently, the European patent is split into several national patents, each of which must be maintained independently by payment of annual renewal fees.

3. International patent applications via the PCT route
It is possible to defer the costs associated with filing foreign patent applications by up to two and a half years by filing an international patent application under the Patent Cooperation Treaty (PCT). An international patent application covers more than 100 countries in a single application until two and a half years after the filing date of the original UK patent application when it is necessary to split the international patent application into individual national or regional (for example, European) patent applications of interest.

In addition to delaying the costs associated with filing foreign patent applications, an international patent application is searched and examined and a preliminary report on patentability is issued. This report can be useful when deciding whether to proceed with the international patent application into the individual national or regional patent applications of interest. If the report is favourable, it can also streamline the examination procedure once the international patent application has split into the individual national or regional patent applications of interest.

The overall cost of the PCT procedure is greater than applying initially in each of the countries of interest. However, it has the advantage of deferring the large costs associated with filing foreign patent applications (including translations where needed) until two and a half years after the filing date of your original UK patent application. By this time, your invention may be generating a revenue stream sufficient to warrant international patent filings and sufficient to fund the additional associated costs.

The above represent general principles/guidelines only and should not be taken as legal advice. If you need more information or require advice, please contact us. Please see which of our specialists best match your discipline in the Patent Specialisms or the Partners & Staff section of this site.