Applying for Patent

What is a patent?

A patent protects new inventions and covers how things work, what they do, how they do it, what they are made of and how they are made. If a patent application is granted, it gives the owner the ability to take a legal action under civil law to try to stop others from making, using, importing or selling the invention without permission. This may involve suing the alleged infringer through the courts, which is costly and time consuming because it involves expert legal advice. The patent owner needs to be able to pay for this civil legal action and advice themselves, although they may get some costs back if they win their case.
Your invention must:
  • be new
  • have an inventive step that is not obvious to someone with knowledge and experience in the subject
  • be capable of being made or used in some kind of industry
not be:
  • a scientific or mathematical discovery, theory or method
  • a literary, dramatic, musical or artistic work
  • a way of performing a mental act, playing a game or doing business
  • the presentation of information, or some computer programs
  • an animal or plant variety
  • a method of medical treatment or diagnosis
  • against public policy or morality.

If you have a granted patent, you must pay a renewal fee to renew it every year after the 5th year for up to 20 years protection.

Do I need patent protection?

 

If you have an invention, for example a new product or process, you may be able to protect it by filing for a patent.

 

Why should I apply for a patent?

A granted patent will give you exclusive rights over your invention and you will be able to try to stop anyone who uses it without your permission. However, patent infringement is not a criminal offence, and therefore you will have to enforce the patent rights yourself by taking a legal action under civil law - this can be costly and time consuming.

To get patent protection your invention must be:

  • new, not known anywhere in the world prior to filing
  • have an inventive step, not obvious or a simple adaptation or combination of existing products
  • be capable of industrial application, having a technical effect
  • If your invention meets these requirements, you may be able to apply for protection.

 

Download Application Guide

Benefits of patent protection

A patent gives you the ability to take legal action to try to stop others from copying, manufacturing, selling, and importing your invention without your permission. The existence of your patent may be enough on its own to stop others from trying to exploit your invention. If it does not, the patent gives you the right to take a legal action under civil law to try to stop them exploiting your invention. This may involve suing the alleged infringer through the courts, which is costly and time consuming because it involves expert legal advice. The patent owner needs to be able to pay for this civil legal action and advice themselves, although they may get some costs back if they win their case.

 

The patent also allows you to:

  • sell the invention and all the intellectual property (IP) rights
  • license the invention to someone else but retain all the IP rights
  • discuss the invention with others in order to set up a business based around the invention.
  • The public also benefit from your patent because we publish it after 18 months. Others can then gain advance knowledge of technological developments which they will eventually be able to use freely once the patent ceases.

 

What if I do not patent my invention?

If you do not patent your invention, anyone can use, make or sell your invention and you cannot try to stop them. You can attempt to keep your invention secret, but this may not be possible for a product where the technology is on display.

 

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About copyright

Copyright can protect:

  • literary works, including novels, instruction manuals, computer programs, song lyrics, newspaper articles and some types of database
  • dramatic works, including dance or mime
  • musical works
  • artistic works, including paintings, engravings, photographs, sculptures, collages, architecture, technical drawings, diagrams, maps and logos
  • layouts or typographical arrangements used to publish a work, for a book for instance
  • recordings of a work, including sound and film
  • broadcasts of a work

You should only copy or use a work protected by copyright with the copyright owner's permission.

Copyright applies to any medium. This means that you must not reproduce copyright protected work in another medium without permission. This includes, publishing photographs on the internet, making a sound recording of a book, a painting of a photograph and so on.

Copyright does not protect ideas for a work.  It is only when the work itself is fixed, for example in writing, that copyright automatically protects it. This means that you do not have to apply for copyright.

A copyright protected work can have more than one copyright, or another intellectual property (IP) right, connected to it.  For example, an album of music can have separate copyrights for individual songs, sound recordings, artwork, and so on.  Whilst copyright can protect the artwork of your logo, you could also register the logo as a trade mark.

The law of copyright and its related rights in the UK can be found in the belew link:

Download Copyright Law

What is a trade mark (or brand)?

A trade mark is a sign which can distinguish your goods and services from those of your competitors (you may refer to your trade mark as your "brand"). It can be for example words, logos or a combination of both. The only way to register your trade mark is to apply to us - The Intellectual Property Office.

You can use your trade mark as a marketing tool so that customers can recognise your products or services.

Trade marks are acceptable if they are:

  • distinctive for the goods and services you provide. In other words they can be recognised as signs that differentiates your goods or service as different from someone else's.
  • You may be familiar with the trade marks below. They don't describe the goods or services, which is why they are good examples of registrable trade marks.

Trade marks are not registrable if they:

  • describe your goods or services or any characteristics of them, for example, marks which show the quality, quantity, purpose, value or geographical origin of your goods or services;
  • have become customary in your line of trade;
  • are not distinctive;
  • are three dimensional shapes, if the shape is typical of the goods you are interested in (or part of them), has a function or adds value to the goods;
  • are specially protected emblems;
  • are offensive;
  • are against the law, for example, promoting illegal drugs; or;
  • are deceptive. There should be nothing in the mark which would lead the public to think that your goods and services have a quality which they do not.

A registered trade mark must be renewed every 10 years to keep it in force.

What is a brand?

A brand is a 'promise of an experience' and conveys to consumers a certain assurance as to the nature of the product or service they will receive. Intellectual property rights provide legal protection for some of the most important aspects of a brand.

What is a Registered Design?

 

Legal definition of "design"

A Registered Design is a legal right which protects the overall visual appearance of a product or a part of a product in the country or countries you register it.

For the purposes of registration, a design is legally defined as being "the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or ornamentation."

This means that protection is given to the way a product looks. The appearance of your product may result from a combination of elements such as shapes, colours and materials.

References to texture and materials does not mean that protection may be granted for the feel of a texture, or what the product is actually made from; only that these features may influence what the overall product looks like. Equally, design registration cannot protect non-stylised wording (ie. basic text), the way something works, or the idea or concept behind a product.

What is a "product"?

You can register a three-dimensional product such as an industrial or handicraft item (other than a computer program), or two-dimensional ornamentation alone, eg. a pattern intended for display upon a product, or a stylised logo. In all cases, the term "product" can mean things like packaging, get-up, graphic symbols, typographic typefaces, and parts of products intended to be assembled into a more complex product.

In respect of 'get-up', protection may be granted to the overall presentation of those products which comprise multiple components but which are sold as one single item, eg. a board game complete with playing pieces, or a product in its packaging. 'Get-up' does not include sets of items which may be bought individually, such as cutlery or suites of furniture.

A Registered Design can be a valuable intellectual property right. It can form the basis of an infringement action against other parties, and will help you in stopping others from creating designs which are too similar to your own (within the same geographical area you have protected your design).

 

Does my design have to be brand new?

For its registration to be valid, a design must:

be new

have individual character.

A design is considered to be 'new' if no identical (or very similar) design has been published or publicly disclosed in the UK or the European Economic Area (EEA). For example, a design would not be considered new if it had been 'published' on an Internet website viewable in the EEA before the date it was filed. However, you can apply to register a design in the UK up to 12 months after the designer first discloses it.

The term 'identical' covers designs whose features differ only in 'immaterial details'.

Individual character means that the appearance of the design (known as the overall impression) is different from the appearance of other already known designs.

 

This is assessed from the view of the "informed user", a person who is familiar with the kind of product in question, and the amount of design freedom will be taken into account.

Other protection

Intellectual Property (IP) covers a wide range of subjects and you may find that you can protect your idea by another right.

Companies House

Registering company names

Companies House is responsible for company registration in Great Britain.

 

Company law is different from trade mark law. You cannot stop someone using a trade mark, which is the same or similar to yours, just by registering your name with Companies House.

We cannot guarantee that the name of a company accepted for registration at Companies House is acceptable by us as a registered trade mark.

The company name may not qualify as a trade mark because, for example:

  • It is not considered distinctive,
  • It is a descriptive word or term
  • It may indicate geographical origin,
  • It may already be registered in someone else’s name
  • The following examples of company names would not be accepted as trade marks:

 

Reliable Builders

Cheap Car Insurance Company

In the same way, a trade mark, which is a word, might not be accepted for registration at Companies House.

Companies House deal with the registration and provision of company information.

Company Names Tribunal

The Tribunal adjudicates in disputes about opportunistic company name registrations.

Conditional access technology

Conditional access technology generally refers to technical measures, such as smart cards or other decoders, which allow users to view or listen to encrypted broadcasts.

 

Some broadcasts and other transmissions are in an encrypted form so that they can only be seen by a person who has the right decoding equipment, a system usually used when broadcasters wish to charge recipients of the transmission.

On payment of the appropriate fee a person is given or is entitled to use a decoder and view the transmission.

In the same way that people make illegal copies of copyright works, they may make unauthorised smart cards or other decoding equipment with the intention of selling them in competition with the legitimate decoders, and so depriving the broadcaster or cable operator of the payments that would normally be paid for reception of the transmissions.

 

The law therefore sets out in what circumstances it is illegal to make and sell or otherwise deal in unauthorised decoders: there may be criminal as well as civil penalties. If you use an illegal decoder to receive broadcasts you’re not entitled to, you may be committing an offence.

 

The Telecommunications UK Fraud Forum (TUFF) represents some makers of encrypted transmissions who are concerned about illegal decoders in the United Kingdom.

For encrypted broadcasts and transmissions, you may need authority to produce decoding apparatus and equipment.

Copy protection devices

For copyright material issued to the public in an electronic form, you may decide to use technical measures so that it is not possible to make a copy of your material, that is, it is copy-protected.

It is also possible for you to use other technological measures to prevent other types of illegal uses of copyright material.

Where you have sold copies that are protected by technical measures, you may have the right to take action against a person who gets round or who makes, sells or otherwise deals in devices or means specifically designed or adapted to get round, the technical measures.

 

The right to take action is equivalent to the rights you have when suing for infringement of your copyright in the civil courts. Criminal offences may also apply to those who deal in the means to get round technical measures.

Copyright owners may choose to use technical measures to protect their material.

 

Confidentiality agreements (CDAs)

Confidentiality

It is important that you do not make your invention public before you apply to patent it, because this may mean that you cannot patent it, or it may make your patent invalid.

 

However, that does not mean that you must never discuss your invention with anyone else. For example, you can discuss it with qualified (registered) lawyers, solicitors and patent attorneys because anything you say to or show them is legally privileged. This means it is in confidence and they will not tell anyone else.

 

Alternatively, you may need to discuss your invention with someone else before you apply for a patent – such as a patent adviser or consultant, or an inventor-support organisation. If so, a Non-Disclosure Agreement (NDA) can help. NDAs are also known as confidentiality agreements and confidentiality-disclosure agreements (CDA).

 

No single NDA will work in every situation. This means that you must think carefully about what to include in your NDA. You may want to consult a qualified lawyer or patent attorney if you are thinking about discussing your invention with someone else and are considering using a non-disclosure agreement.

CDAs (also known as non-disclosure agreements) can be used to protect know-how or trade secrets

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Database right

A database, that is a collection of data or other material that is arranged in such a way so that the items are individually accessible, may be protected by copyright as a literary work and/or database right. This protection can apply to both paper and electronic databases.

 

For copyright protection to apply, the database must have originality in the selection or arrangement of the contents and for database right to apply, there must have been a substantial investment in obtaining, verifying or presenting its contents. It is possible that a database will satisfy both these requirements so that both copyright and database right apply.

 

There is no registration for database right - it is an automatic right like copyright and commences as soon as the material that can be protected exists in a recorded form. However, the term of protection under database right is much shorter than under copyright. Database right lasts for 15 years from making but, if published during this time, then the term is 15 years from publication.

 

Many databases are a collection of copyright works, such as a database of poetry from the last fifty years where each poem will also be protected by copyright. So people compiling databases need to make sure that they have permission from the copyright owners for use of their material and people using databases need to be aware of the rights of the owners of underlying works as well as database right owners.

In addition to or instead of copyright protection, a database may be protected by the 'database right'. This is intended to protect and reward investment in the creation and arrangement of databases

 

Design right

The term "Design Right" refers to the specific legal protection available to unregistered designs in the UK.

 

There are specific differences between Design Right and Registered Designs.

 

Registered Designs give you exclusive rights in a design, in the UK, for up to 25 years. You can stop people making, offering, putting on the market, importing, exporting, using or stocking for those purposes, a product to which your design is applied. You can protect two-dimensional designs or surface patterns as well as shape and configuration with a Registered Design.

 

By comparison, Design Right gives you automatic protection for the internal or external shape or configuration of an original design, i.e. its three-dimensional shape. Design Right allows you to stop anyone from copying the shape or configuration of the article, but does not give you protection for any of the 2-dimensional aspects, for example surface patterns. Protection is limited to the United Kingdom (UK), and lasts either 10 years after the first marketing of articles that use the design, or 15 years after creation of the design - whichever is earlier. For the last 5 years of that period the design is subject to a Licence of Right. This means that anyone is entitled to a licence to make and sell products copying the design.

 

If you are the owner of a design right subsisting in a design, you have the exclusive right to reproduce the design for commercial reasons by making articles to the design or by making a design document recording the design for the purpose of enabling articles to be made. If anyone else carries out these activities without your permission, they may infringe the design right.

 

However, it is more difficult to prove infringement of an unregistered Design Right as you must be able to prove it was copied, or that the potential for copying existed.

 

Infringement proceedings must be brought before the Courts, however some disputes concerning the subsistence of design right can be referred to us.

United Kingdom (UK) Design Right and Community Design Right may give automatic protection for the look of your product.

 

Plant breeders rights

Plant breeders' rights are a form of intellectual property designed specifically to protect new varieties of plants. They entitle the holder to prevent anyone producing, selling, importing and exporting plants and seeds protected by these regulations.

 

You can register new plant or seed varieties with The UK or EC plant varieties offices. More information is available from the Department for Environment Food and Rural Affairs (defra) External Link which has responsibility in this area.

 

The International Union for the Protection of New Varieties of Plants (UPOV) External Link is responsible for an international convention on plant breeders' rights.

 

You may also be able to register the name of a new variety of plant or seed as a trade mark.

 

If you have created a new variety of plant or seed, you may be able to protect it at The Plant Variety Rights Office and Seeds Division in the Department for Environment Food and Rural Affairs (DEFRA).

 

Publication right

Publication right gives rights broadly equivalent to copyright, to a person who publishes for the first time a literary, dramatic, musical or artistic work or a film in which copyright has expired.  However, there is one major difference, publication right only lasts for 25 years from the year of publication of the previously unpublished material.

 

It is important to note that the owner of publication right is the person who first publishes the unpublished material in which copyright has expired which will not necessary be the original owner of the copyright in the work.

Publication right gives you rights equivalent to copyright if you publish for the first time a literary, dramatic, musical or artistic work or a film in which copyright has expired.

 

Protection abroad

Intellectual property (IP) rights are territorial, which means they only give protection in the countries where they are granted or registered. Unprotected items can be used freely, including for import and export.

To protect your IP abroad, you usually need to apply in each country you want protection in, although this is not always necessary.

 

If you want to protect your IP abroad you will generally need to apply for protection in the countries which you want your IP to have effect.  Except particularly in the case of Copyright and other limited circumstances, your UK IP rights do not give you automatic protection abroad .

 

Trade secrets

You should consider keeping something as a trade secret if:

  • it is not appropriate for intellectual property (IP) protection
  • you want to keep it secret or
  • you want protection to extend beyond the term of a patent

If it would be difficult to copy the process, construction or formulation from your product itself, a trade secret may give you the protection you need.

 

However, a trade secret does not stop anyone from inventing the same process or product independently, and can be difficult to keep.

 

The law of confidentiality protects trade secrets. To keep trade secrets protected, you must establish that the information is confidential, and ensure that anyone you tell about it signs a Non-Disclosure agreement (NDA). If they then tell anyone about it, this is a breach of confidence and you can take legal action against them.

 

There is no legal requirement for you to file a patent, you could decide to keep your invention secret but if it enters the public domain then you may lose your rights to it.