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Background; The Patent Specification; Filing a Patent Application; Ownership of Patents; Foreign Applications; European Patents; Patent Co-operation Treaty (PCT); The Paris Convention; First Publication; The Granted Patent; Product Marking; Summary of Stages of Progress of typical British 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:
- Publication of details of the invention in a book or periodical.
- Giving details of the invention in a talk or lecture.
- Selling of products made according to the invention (sale of just one item is enough).
- Talking too freely about the invention to people outside your immediate organisation.
- 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.
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.
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.