Background on Patents

On this page I will provide useful links to reference material on patents and intellectual property, generally this will be from a European perspective.

  • The UK Intellectual Property Office provides a lot of material on patents and patent filing.  A useful starting point is their Overview Page
  • Defining what is inventive has been the subject of many books.  A recent one by Justine Pila is entitled “The Requirement for an Invention in Patent Law” published by Oxford University Press and an excerpt from her introduction is available here.
  • A presentation for a general IP overview and what to consider when starting a business is given here:

PATENT SEARCHING

Anyone interested in patents will need to be able to search for,  download and analyse patents already published in their particular field.  A useful portal for doing this is

PATENTSCOPE

Having used this service for around 12 months I can confirm that the user interface is extremely easy to use and the presentation of the data is well structured for rapid assessment of the contents.  The analysis tools are particularly useful and with a login, you can download upto 10K records for further analysis.

Newsletter Extracts

In my recent newsletters I have included some articles on Understanding Patents.  They are reproduced here to provide some additional insights into the patent process.

Understanding Patents – What Right does a Patent give you?

There are several questions that repeatedly pop up when people are asking me about the patenting process and advantages of having a patent portfolio. In this article I will address the question of what rights a granted patent gives to the owner (the assignee).  The most common misconception is that a patent gives the owner a right to practice his/her invention. In fact, it is not uncommon for an inventor to be granted a patent and not have the right to practice the invention.

The patent merely grants the right to stop or exclude others from practicing the invention.

At the same time, the patented invention may have subject matter that falls within the exclusive rights of someone else’s broader patent. In such an instance, the broader patent is said to dominate.

Such a situation commonly occurs when the second patented invention represents an improved version of an earlier issued, more basic patent. The owner of the earlier dominating patent may be free to practice the basic invention (but may not be free to practice the improved version of the second patent). The owner of the second patent may not be free to practice either invention without permission of the owner of the first patent.  These situations are quite common and can lead to the development of patent license agreements between companies such that both companies are able to use each other’s inventions and mutually benefit.

Understanding Patents – Why do a Prior Art Search?

There are several questions that repeatedly pop up when people are asking me about the patenting process and managing a patent portfolio. In this second article I will address the question of why a prior art search is so useful.

Prior art is the expression used to describe any published material that describes your invention and pre-dates your own disclosure of the invention in your patent filing.  It often comes in the form of an earlier patent but with the huge amount of data on the internet, it can equally well come from a journal article, a blog or press release, etc.  Many inventors feel that they do not need to do a prior art search and feel that it is not money well spent especially when the patent office is going to do their own search anyway to find out if the invention is novel.

My answer to this has three parts.

Firstly, it is unlikely that you will know all the prior art in your subject area, there is just too much to keep track of.  Drafting a patent without this knowledge may lead to a description of the invention which lacks a clear definition of how it differs from the prior art and could result in claims which will be rejected and will need significant revision.  Just occasionally, you may find that your invention is already fully described and you have wasted time, money and effort on drafting and filing the application when you could have been working on other things.

Secondly, the search you get from the patent office will take several months and if there is prior art, all you get will be a listing of just enough of the prior art to satisfy the examiner that the invention is not novel.  It will still leave you without a full knowledge of all the potential prior art and if you want to re-draft your application you will almost certainly need to do another search to fully understand the patent landscape.  Understanding this patent landscape early in the process will actually help you to develop your invention and may even help define your final design so that it is clearly differentiated from the prior art.

Finally, if you are looking for venture capital or other forms of investment, you will find that there will be an expectation that you have done due diligence in understanding the prior art for any ideas you need funding for.  A patent search report or patent landscape is the best way to provide supporting evidence for this and a landscape report will provide good visualisations of the patent trends, inventors and assignees who are active in the technology space.

Advertisements

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s