NHS Innovations London

Intellectual Property Rights

PATENTS

A Patent for an invention is granted to the inventor, giving the inventor the right for a limited period, to stop others from making, using or selling the invention.  A Patent lasts for 20 years from first filing.

To be patentable your invention must be:
            New
            Involve an inventive step
            Be capable of industrial application

An invention is not patentable if it is:
            A discovery, a scientific theory or mathematical method
            An aesthetic creation
            A scheme or a method for performing a mental act, playing a game or doing business
            The presentation of information or a computer programme

How do I know whether my invention is new and/or inventive?

The best way is for us to conduct a search through the relevant local and international databases to see whether there are any publications which are the same or similar to your invention.

Searching requires not only finding relevant documents but also the analysis of those documents to determine whether or not they might pose any difficulties for your invention. Some documents may appear from the drawings to cover a product different to yours, but in fact are broadly worded and could still cause you difficulties. Similarly, documents that look very close to your invention might be possible to work around. You can conduct your own preliminary searching on the internet to get an idea as to whether or not your invention might be new and inventive.  

If relevant publications are uncovered in a search, we need to consider the risk, if you make or use your invention, of you infringing another's patent rights by making or using a product which is covered by someone else's registered patent. If you infringe someone else's rights this could be very costly. It is therefore important to conduct what is called an "infringement clearance search" (a search to determine your chances of infringing someone else's rights) prior to launching any new product onto the market.

Patent Process

The Patent Process

What do I need to do?

We encourage inventors to work with our Intellectual Property Managers in drafting a patent application and following this to work with the Patent Attorney on drafting the "claims". This is the most cost effective way of approaching an application.

The application should:

The inventor should;

This description should include technical drawings and CAD images to illustrate the invention as necessary.  Details of the invention should include a description of all embodiments of the invention in an attempt to secure the scope of the patent and limit possible methods of avoiding infringement by a competitor.

Who are the Inventors?

An inventor is a person who has had an original idea or otherwise contributed intellectual input to one of the claims of the patent.  A patent application may be filed naming one or more inventors. A person who works under the direction of another and does not contribute any original thought to the claimed invention, i.e., "works as a technician" to confirm an invention, must not be named as an inventor. Professional collaborators may or may not contribute to the inventive concept being claimed and great care should be taken in deciding who should be named as an inventor. If you are in doubt about inventorship, please contact NHSIL or your Parternership Liaison Manager.

Why file in the UK first?

The initial filing of an application for a UK patent establishes a priority date for the invention. This prevents the same idea being patented at a later date by somebody else.  The initial application costs are relatively low, though these can increase significantly with complex applications that require a lot of input from a Patent Attorney.

What is a PCT?

The rights granted under a national patent apply only to that country. Patent law varies from country to country and an application for a patent in a particular country must be made in accordance with that country's individual requirements. The Patent Cooperation Treaty, (PCT) is a centralized system that allows an application filed in a PCT governmental receiving office to be recognised as an application in some or all of the member countries.

Once filed, a patent search is carried out on the application. When the search is completed, a PCT governmental office evaluates the patentability of the application with reference to standards set forth in the Patent Cooperation Treaty. Finally, the PCT application must be officially entered into the national patent office of each of the countries from which the applicant desires patent protection.

When should one file a PCT application?

The PCT application should be filed about 12 months after the UK filing. The supporting work on the UK patent application should have been completed by then. The applicant will have an idea of the value of the patent and will be able to authorise the entry into the PCT process and justify the expense.

When does one file an European Patent Application?

An EPO application typically occurs in the year following that of the first filing in the home country. An International Preliminary examination may already be available if the PCT application was the chosen route. If an EPO application is not filed one may cover individual countries in separate filings.

What is required from the inventor?

As the patent application is processed it will be examined at various stages by professional examiners in the UK, as part of an international application and as part of a US application. This procedure will entail a response to a series of questions raised by the examiner about the invention and the scope of the claims made in the application. Some of these questions can be answered by the Patent Attorney, if they fall within his field of expertise, but often these will be relayed to the inventor. The patent process is regulated by strict guidelines and deadlines that must be adhered to. An efficient communication link between the Patent Attorney and the inventor, or his agent, is therefore essential.

What does the examiner do?

The examiner must be satisfied that the patent:

What does it cost?

Patent Attorney fees are charged on a time basis. Some organisations may quote a standard fee for filing an application in the UK but these are in the minority. A list of the formal fee structure can be found at: www.patent.gov.uk./patent/forms. Depending on the complexity of the application one could typically expect to pay between £3000 - £5000 for a UK-granted patent.

After a patent has been granted there are costs associated with maintaining the validity of the patent in each of the territories that it has been granted. These fees increase over the life of the patent. The rationale behind this fee structure is to encourage the release into the public domain of those patents that are no longer in use or of immediate commercial value. These renewal fees can also be viewed at the Patent Office website (www.patent.gov.uk). 

COPYRIGHT

Copyright is automatic (unregistered) when a work is 'fixed' in a tangible form as for example when words are written on paper or sounds are recorded on tape. It does not protect the idea behind the work. Generally the duration is for the lifetime of the author plus 70 years and for entrepreneurial works is the lifetime of the producer/director plus 50 years.

Copyright is the right to prevent others from copying original "works".  "Works" that are covered by copyright in most countries include computer software, many logos (but not brand names), written text, music, photographs, artworks, sculpture and design drawings. Copyright exists automatically from the moment you complete a work and it is wise to clearly date and file copies of any new works, or even better, send dated copies by registered post to yourself. That way, you will have firm evidence of the date on which a work was created.

Can I republish something without infringing copyright?

First, copyright is the right of an author to control copying of his work.  Copyright attaches to "works" which are recorded into a sufficiently permanent form.  The author of a work retains copyright until he assigns it and an author can only assign the copyright, in English law, in writing.

When I send a letter to a friend, I give him the paper on which the letter is written, but I retain copyright in the text. I can therefore have the right to prevent him, for example, taking copies of the letters, and I also have the right to prevent him republishing letter if that involves copying it.

What about email?

There have been no English law decisions directly on this issue as regards electronic mail, but it is unlikely that the court would wish to treat e-mail differently. They would not wish correspondence created electronically to differ, in general, with less protection than that available to the paper based correspondents. Nevertheless, there are substantial differences. First, whenever an e-mail is sent, there are inevitably many copies made. As an email is read, there will be a copy on screen, a copy in memory, and a copy on disk. There may easily be ten or more on other computers. Each of these may also keep copies of the mail transmitted through their systems although, given the volume of such data, there will be few who keep them for any lengthy period. 

DATABASE RIGHT

With increasing amounts of information stored on computer systems using databases, protection has become increasingly important.  Database Right prevents the unauthorised extraction and re-utilisation of the whole or part of the contents of the database.

Database Right does not require registration. It commences when the material to be protected is in a recorded form (both paper and electronic databases may be protected). Database Right lasts for 15 years from creation or, if published within this time, 15 years from the publication date.

The collection of data into a database may be protected by Copyright and/or Database Right. If Copyright is used to protect it, the database must have a novel arrangement or selection of contents. For Database Right to be applicable the database must be created through substantial investment of time, money and effort.  In some circumstances, as with copyright, there may be exceptions to Database Right for the purposes of research or private study.

Software

Software also is best protected by patent registrations if possible. That computer programs are best protected by copyright is a common misconception. Patents may be an investment, but they are usually much easier to enforce, and a much better deterrent to infringement, than copyright protection. In addition, those seeking venture capital for software related inventions would perhaps have more success if an application for patent protection had been filed (and published) before approaching potential investors. A patent application tends to create the impression, rightly or otherwise, that inventors are serious about their invention, that the software is unique, and that the investor will have good, strong protection for the invention should they choose to purchase it or to invest. Further, patents are assets and particularly start-up software or Internet companies can be lacking in identifiable assets to present to investors. 

REGISTERED DESIGN RIGHT

Designs can be registered nationally or on a European wide or international basis.  A registered design must be new (novel) with individual character. Design encompasses the appearance of the whole or part of a product resulting from the features of the lines, contours, colours, shape, texture or materials of the product or its ornamentation. The only features excluded from protection are those dictated solely by function. Registered design rights usually cover commercial objects with a unique or aesthetic appearance.

When registered the design is granted monopoly protection for a period of five years, which can be renewed five times for a total of 25 years. It is usually much cheaper to obtain than a patent. Drawings or photographs showing the article to which the design is applied are submitted to the Designs Registry, and provided these drawings or photographs meet the requirements of the Registry the application will proceed directly to registration with few, if any, objections raised. Thus, in many cases, no costs are incurred subsequent to the initial filing. 

UNREGISTERED DESIGN RIGHT

(Unregistered) Design right is an intellectual property right which applies to original, non-commonplace designs of the shape or configuration of products, e.g. physical design of computer chips, engineering components and architectural drawings.

Design Right is not a monopoly right and does not need to be registered. It does, however, protect against deliberate copying and lasts for 10 years from first marketing, up to a limit of 15 years from the design's creation. Design Right is exclusive for the first 5 years after marketing; for the final five years the design can be made under licence. Design Right may exist in addition to other forms of protection such as Patent, Copyright or Registered Design.

Where a new design is created in the UK or Europe, any drawings, data files or prototypes should be signed and dated by the author. The original drawings and prototypes should be kept in a safe place. While design right can be relied upon in the United Kingdom, similar protection is not usually available in foreign countries and where foreign protection is sought, filing a Registered Design application is strongly recommended. 

TRADE MARK

A trademark is a badge of origin of goods or services and the owner of a registered trademark can prevent others from using an identical or similar trademark. Trademarks may be applied for nationally, within the European community or worldwide (as for Registered Design Right). Trademark registration can be held indefinitely, subject to renewal every 10 years. 

KNOW HOW

Confidential information or "Know-how" is information which may be commercially or technically valuable and which is regarded as secret. It may, for example, include information on industrial processes or be a list of clients. The law of confidentiality can protect these "trade secrets". A trade secret can be defined as information known to only a few people where disclosure would constitute a breach of confidence.

In all cases, the "know-how" will only retain its value if it is managed effectively. The law of confidentiality will only be applied if all parties are aware of and agree to the obligation. Employees are likely to be bound by the terms of their employment contract regarding maintaining the confidentiality of their employer's business. All exploitation partners, business partners and collaborators should be bound by conditions of confidentiality through a Non-Disclosure Agreement.

Know-how and confidential information can be bought, sold and licensed like any other form of IP and persist indefinitely, as long as they remain "secret".

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