Top tips on patent protection

Patents are about the protection of IP that offer a novel, inventive and industrially useful ‘technical effect’. 

For this blog, I asked Kathy Lumsden and Mark Sweetinburgh, from Sweetinburgh and Windsor, to help us dispel some of the most common misunderstandings and myths out there about patents. 

PATENTS ARE OFTEN GRANTED FOR THE SMALL HURDLES YOU OVERCOME IN ADDITION TO THE END GOAL OF YOUR RESEARCH

The UK Patents Act says that an invention shall be taken to involve an inventive step if it is not obvious to a person ‘skilled in the art’. This means that in order to be patentable IP must be more than a routine modification or alternative over what is already known. This could include something unexpected, that no one would have thought to do. Evidence of a surprising result is helpful here.

In Mark’s experience, scientists often think that most IP that they generate isn’t ground-breaking enough to merit patent protection. That tends to come from thinking that the value from their work lies solely in answering the very specific (and highly challenging) scientific question which they are working on - but they could be unaware of the wider range of interesting IP created along the way. 

“In order to deliver your project, will you be creating new methodologies, materials, tools, data sets, algorithms, software, know-how?” asks Mark. “Whenever you are solving a problem that no one else has overcome before, there could be something potentially protectable there. Be aware of the small improvements that you make over time too.”

CONSIDER THE IMPORTANCE OF PATENTS TO DELIVER IMPACT AS SOON AS YOU START YOUR PROJECT

Thinking about IP at an early point in a project will give you time to make informed decisions on whether protection is needed to maximise the impact from your project outputs.

If the route to impact for your outputs are commercial ones, and the level of investment needed to translate them into new products or services is high, then you should look at IP protection seriously. 

Patents can be expensive items of property. Filing, prosecution, renewal and enforcement costs should not be overlooked. So, if you identify that IP protection through a patent is needed to deliver impact, doing market research early in your project becomes even more important. 

The technology transfer professionals in your organisation will be running against the clock as soon as a patent application is filled trying to find partners, licensees or buyers for your outputs. They will be much more effective in their work if you are working with them in that.

JUST BECAUSE YOU OWN A PATENT, IT DOESN’T MEAN YOU DON’T INFRINGE ANYONE ELSE’S

“This is another common misconception,” says Kathy. “Sometimes scientists think that because they have a patent for their invention, they are free to use it. That is not necessarily the case. Sometimes a patent will be granted as an improvement to existing technology which has been protected. And the owner of that existing technology could stop use of any improvements.”

Owning a patent is not a defence for infringing another patent. The cost of defending an infringement claim is expensive, and damages can be significant. So, make sure you work with the technology transfer professionals in your organisation to check the patent landscape. 

And if you do find an overlap with existing patents, then don’t despair. This could mean you have just found yourself a partner who will be interested in taking the output that you have generated - through collaboration, licensing or acquisition of your IP. If you were hoping to deliver impact through a start-up or spin-out, then licensing or cross-licensing can be investigated.

When doing your initial search, consider pending patents and patent applications for the territories of importance to your invention. Useful sites for initial searches include Espacenet, Google Patents, WIPO and the European Patent Office Register.

PATENTING DOESN’T REQUIRE YOU TO STOP SHARING KNOWLEDGE – BUT YOU NEED TO CONSIDER TIMINGS!

Seeking IP protection through a patent application is not incompatible with disseminating findings from scientific research. In fact, the patenting process involves the publication of knowledge. However, due to the requirement for IP to be novel in order to merit protection, timing is of the essence.

The UK Patents Act says that an invention shall be taken to be new if it does not form part of the ‘state of the art’. This means that any public disclosure before the filing date of your patent application is relevant, including earlier published (or filed) patent applications, academic publications, external presentations, grant applications or even a chat in the pub!

If you have established that the best route to impact for the outputs from your work are commercial, and that IP protection is needed to enable companies to justify the investments required into further research, development and the commercialisation of new products and services, then you should file your patent application before making any disclosures.