Patent law

What is a patent?

A patent is a monopoly right which protects inventions. The key point about a monopoly right is that it protects the invention not merely against people who copy it, but those who independently devise or develop something falling within the scope of the patent’s claims. Patents can cover either processes or products.

Obtaining a patent is the best way of protecting an idea or invention because of the scope of protection it offers. However, it is both the most difficult form of protection to obtain and the one which is most expensive in terms of upfront costs, incurred before the patented product is marketed.

To qualify for patent protection, an invention must be new, useful and ‘not obvious’. It must also be something which is capable of technical application. In most countries the patent is awarded to the person who first files an invention, not the person who first invents it.

Patent law; filing for national patents

For a national patent you must appoint a patent attorney to submit an application to the Intellectual Property Office (IPO), formerly known as the UK Patent Office. Patent registration can be a complex process and usually takes several years. Key dates in the process are the priority date, the filing date, the publication date and the date of grant.

We can advise you in your choice of patent attorney, as well as advising you about your overall intellectual property protection strategy.

Patent law: Filing for international patents

Expert advice is particularly important when you want to obtain international protection for your invention, as filing overseas patents can be a lengthy and expensive process. In addition to filing, examination and renewal fees, if you file patents in other countries you will also have to translate the patent into the local language(s).

Design rights

Design right protection in the UK is complex and multi-layered. First, there are UK unregistered design right and UK registered design right. There is also unregistered EU design right and registered EU design right which currently cover the UK.

Design rights, whether registered or unregistered, protect novel features which determine the appearance of products or articles. They do not protect functionality, which may be eligible for patent protection. Both design right and patentability may co-exist in different aspects of the same product, so it is important to consider protecting all applicable rights.

Registered design rights

For better protection, you can register your design. To do this, we work with our international network of patent attorneys.

Patent protection

To protect your patent:

• Make sure that your patent (and application) is not vulnerable to revocation. This includes filing required documents and paying required fees in plenty of time. Deadlines in patent matters are almost invariably non-negotiable and being late will put your patent at risk.
• Draw attention to the patent’s existence. You can do this by putting patent numbers on your patented product and its packing, and by requiring any licensees you appoint to do the same.
• Monitor the market place. It is possible to put in place patent watch services at relatively modest cost in order to see what patents are being filed by your professional rivals and alert you in advance to ones which you may need to challenge.
• Make sure you thoroughly understand your patent claims – what is protected by your patent and what is not. This will make it easier for you to know if your patent has been infringed.
• Defend against patent infringement. Keep alert for infringers and take appropriate action against any you discover. Where infringement takes place prior to the date of grant but after the publication date no action can be taken until the patent proceeds through to grant. After the grant date, however, the patent holder can sue for damages for acts of infringement which took place between filing and grant.
• Ensure your licensees are obliged to keep you informed of any infringing issues they discover and that they are fully compliant with their licence terms. Properly drafted licences should provide for audit rights, and you should be prepared to exercise these if need be.

It is important never to ignore a threat to sue for patent infringement, even one you feel is far-fetched, and always take expert advice.

Our patent services

Our lawyers can:

• Recommend a patent attorney experienced in the specific technical sector relevant to your invention, and work closely with them and with overseas patent attorneys to see your applications through to grant.
• Provide a strategic and commercial overview on patent protection and exposure.
• Enforcing patents by means of actions for infringement in the High Court and Intellectual Property Enterprise Court and coordinate multi-national patent enforcement actions.
• Defending patent actions concerning revocation and / or invalidity in the High Court and Intellectual Property Enterprise Court and coordinate multi-national patent enforcement actions.
• Assist in putting your patent portfolio in order by ensuring that assignments and licences are properly recorded on relevant registers and ensuring that patents are assigned out of dormant companies before those companies are dissolved.
• Assist in reviewing licensing structures and royalty rates paid by manufacturers on product, including working with patent license and / or tax experts.
• Provide specialist corporate support in relation to transactions including mergers and acquisitions, where patent rights can be among the most valuable assets the target company possesses. This includes intellectual property due diligence, as well as drafting relevant intellectual documentation to support a corporate transaction.
• Assist in assessing infringement risks and propose strategies for mitigating those risks.

Like the vast majority of law firms we do not file patents ourselves, but have close links with patent attorneys who can provide filing services. We recommend and select patent attorneys based on their experience in different technology sectors in order to ensure the best scope and depth of protection for our client’s inventions.

Contact a patent lawyer

If you would like to find out more about  protecting, acquiring or exploiting a patent or for contentious patent issues, please contact Richard Moore.

Clarke Willmott has offices in Birmingham, Bristol, Cardiff, London, Manchester, Southampton and Taunton and we provide IP advice both to clients located within the UK and around the world.