1. A description of at least one preferred embodiment of the invention. The law requires that a particular example, or "embodiment", of the invention be described in detail. If, as is probable, the invention is for a device or an apparatus, then this description will have to be accompanied by drawings. Note that this detailed description of the invention does not limit the scope of protection which the patent gives. The scope of the patent is defined by the claims (see below) and not by the description of the embodiment.
   
   
2. Claims. From the legal point of view, these are the most important part of the specification. They consist of a series of numbered paragraphs defining in words the invention in broad terms. Usually, claim 1, the first numbered paragraph, has the broadest scope and this claim defines, in essence, the scope of the protection conferred by the patent. It is to this claim that you look when you want to decide whether a particular product infringes the patent or, conversely, whether the patent is valid or not on the basis of a particular item of prior art. The subsequent claims are usually appendent to claim 1 and describe the invention in greater detail.
   

During its progress through the Patent Office (see later), the Patent Office Examiner carries out a search to ascertain whether the invention is new. The rule is that the invention must be novel and inventive over all matter published before the filing date of the patent application. This "matter" is known as "prior art" and includes prior publications of similar inventions in patent specifications, magazine articles and similar, or existing known products.

Filing a Patent Application

It is usual to file an initial patent application in your own home country - Great Britain in our case - and to follow up later with any foreign patent applications you wish to file - see below. In Great Britain, it is normal practice to initially file an "informal" application, which differs from a normal application only in that the accompanying specification does not need to have claims or an abstract. The informal application must be formalised by the filing of claims, an abstract and a request for novelty search within one year of the filing of the informal application. Any developments made in the invention during this one-year period can be incorporated in the formal application.

The timing of the filing of the initial informal application is crucial to the success of the patent application. The initial application should be filed as soon as the invention has been developed up to a sufficient extent for it to be realised that a potentially viable product exists. However, filing should not be too early; it would be premature to file before any real detail of the invention has been developed - the resulting patent specification might not then contain sufficient detail to provide a worthwhile priority date. On the other hand, it can be fatal to the application to leave it too late: once the invention has been "published" it is too late to file a patent application - the application must be filed before publication takes place. All of the following acts constitute publication:

1. Publication of details of the invention in a book or periodical.
2. Giving details of the invention in a talk or lecture.
3. Selling of products made according to the invention (sale of just one item is enough).
4. Talking too freely about the invention to people outside your immediate organisation.
5. Posting details of the invention to a public web site.
   

In connection with (4) above, it is generally reckoned to be safe to talk about the invention to other firms whom you hope to help you in producing the product - for example an extruder, but it would certainly not be safe to talk about the product to potential customers. To be on the safe side, where you have to talk about the invention to people outside your organisation, you should insist on some form of obligation of confidence. This does not need to be lengthy, or worded in excessively legal language but it does need to be stated some way or other - we can advise on suitable wording if necessary.

Ownership of Patents

The legal right to own a patent vests with the actual inventor or inventors of the invention or, where the inventor(s) are employed, with his employers. In all other circumstances an assignment is necessary. In particular, inventions which result from work which you commission will not be owned by you unless you make specific provision for this when commissioning the work. Thus you should make it clear in writing to all outside contractors or consultants whom you use, and who are likely to make inventions, that all inventions and patents resulting from the work which they carry out on your behalf will be owned by you and that you will require assignment of all such inventions to yourself.

Foreign Applications

Generally speaking a patent in any one country gives you protection against manufacture, sale or hire of the patented product or process in that country. Importation into the country counts as infringement; so does manufacture in the country and immediate export to another country. By and large, in order to obtain protection in other countries, it is necessary to obtain separate protection in each country to be covered. There are some exceptions, however:

European Patents

In order to obtain protection in Europe, it is possible either to apply nationally in each country; however, if three or more countries are to be covered, it is more cost effective to apply for a European patent which may cover one or more of the following countries:-

Austria	Greece	Slovakia
Belgium	Hungary	Slovenia
Bulgaria	Ireland	Spain
Cyprus	Italy	Sweden
Czech Republic	Luxembourg	Switzerland (incl Liechtenstein)
Denmark	Monaco	Turkey
Estonia	Netherlands	United Kingdom
Finland	Poland
France	Portugal
Germany	Romania

In addition, a European patent may be extended to:-

Albania
Latvia
Lithuania
The Former Yugoslav Republic of Macedonia

The European patent application passes through a common examination process at the European Patent Office but, once the patent application has been allowed by the European Patent Office, it is split into a bundle of national patents in the designated countries. Thereafter it is treated as a national patent and is subject to national law.

Patent Co-operation Treaty (PCT)

This is a treaty between a number of countries and provides for the common searching and preliminary examination of applications. Such "international" applications are filed at the office of the World Intellectual Property Organisation (WIPO) in Geneva and have two phases: firstly an international phase during which an international search and (optionally) preliminary examination is carried out and secondly a national phase in which the international application is split into a bundle of national patent applications in the designated countries. In some countries, the national phase is regarded as little more than a formality - if the application has passed successfully through the search and preliminary examination processes in the international stages it is reckoned to be in good order, and will be granted without difficulty. However, in the more stringent examining regions such as Europe and USA, the examination procedure, and sometimes the search as well, is likely to be repeated in the national phase, and the national Patent Office Examiner may come to a different opinion to the international Examiner.

The great advantage of PCT is that it puts off for several months, or possibly more than one year, the large cost associated with filing national patent applications. During the international phase, a high quality international search is carried out and this gives a good idea as to the likely prospects for success for the eventual national patent applications.

There follows a list of the principal countries covered by the PCT; we can advise on the full list:

Australia	Germany	South Korea
Austria	Greece	Russia
Belgium	Ireland	Singapore
Brazil	Italy	South Africa
Canada	Japan	Spain
China	Luxembourg	Sweden
Czech Republic	Netherlands	Switzerland
Denmark	New Zealand	United Kingdom
Finland	Norway	U.S.A.
France	Poland

The Paris Convention

This is a long-established international convention to which almost all countries of the world adhere. Its most important provision, as far as we are concerned, is that it allows patent applications filed abroad to be backdated to the date of filing of your original home application. This, however, is subject to the condition that any such foreign applications are filed within one year of your home application. The significance of this convention is that, at the time you file your original "informal" application, at a time when the invention is hardly developed, and is certainly not proven in the market place, you are not faced with having to make important and potentially expensive decisions as to the countries in which you require coverage. You have a whole year to make the decision, secure in the knowledge that any foreign application you file within that year will be backdated to the date of filing your home application.

The Paris Convention applies to European and International (PCT) applications in the same way as any other foreign application. Thus you can file a British "informal" application, and follow this up in one year's time with a European or International application which is effectively backdated to the British filing date. Since Great Britain is one of the countries which may be designated in a European or an International application, it often makes sense to designate Great Britain, and then save money by abandoning the British application because it is now redundant.

First Publication

Under British law, all patent applications are published by the Patent Office 18 months after their original filing date. This is known as "first publication", and takes place at a time when the application is still pending,. The European Patent Office similarly publishes applications 18 months after their original "home" filing date. The main purpose of this publication, as far as the applicant is concerned, is to provide provisional protection under the application. This takes the form of provisions whereby, once a patent has been granted, it is possible to obtain damages for acts of infringement which occurred after first publication, even though the application was not at that time granted.

The Granted Patent

The granted patent gives its owner the right to stop others from infringing the patent, in other words from manufacturing or selling the invention which is covered by the claims of the patent. It does not give the owner the exclusive right to manufacture or sell the invention since the patentee's ability to do this may be restricted by other granted patents which are owned by third parties. In fact, it is quite possible for the patentee to find himself in the position of being unable to work his granted patent because of the existence of such other patents.

The right granted by a patent is for a limited period, referred to as the term of the patent. The term of a British patent is 20 years, subject to the payment of annual renewal fees from the fifth year. No renewal fees are payable when the application is pending. Other countries differ widely as to the term of the patent, and the arrangements for paying renewal fees. For example, a European patent application requires annual renewal fees to be paid from the third year. However, a 20-year term has become standard in European countries. An action for infringement of a patent cannot be commenced until the patent is granted, although note that it is possible under certain circumstances (see above, under First Publication) to obtain damages for infringement which occurs prior to grant.

Product Marking

In many countries there are likely to be limitations on damages awarded to the patentee in an infringement action unless the products themselves, and/or
literature associated with the product, mentions the fact that the product is patented, and quotes the patent number. It is recommended therefore that products are marked with the appropriate patent numbers. If the product itself is not susceptible to having these details printed on it, then the literature and/or packaging associated with the product should be marked. If the patent is not yet granted, care should be taken not to state or imply that it is granted, but there is no objection to quoting the patent application number, provided it is made clear that the number being quoted is an application number, and not a patent number.

Summary of Stages of Progress of typical British Patent Application

Month 0
File informal application.

Month 12
Formalise informal application by filing claims and request for search; possibly file foreign applications.

Month 16
Search Report issued and sent to applicant.

Month 18
First publication; provisional protection commences (see under "First Publication").

Month 24
File examination request.

Month 36
First examination report issues.

Month 42
Respond to first examination report.

Month 44
Application accepted.

Month 48
Patent granted.

For patents in chemistry, metallurgy, biochemistry and biotechnology, contact Stephen Wilkinson in our Bristol office.

For patents in physics, electrical engineering, general engineering and computing, contact Chris Boydell or Sarah Perkins in our London office or David Marles in our Bristol office.