Start-up Hub Problem Page: patents and intellectual property law
This month’s problem page is a topic area that our community has told us is important, but they need to learn more about: patents and intellectual property (IP). An entrepreneur I met recently was talking about this issue, saying that he felt it was a minefield for start-ups, as they don’t know what point in the process they should be thinking about patents – and what kind of protection they really offer.
With that in mind, we’ve turned to Georgie Hart, who’s an Associate in Bird & Bird’s Intellectual Property Group. Here she explains the essentials of patent law: what they cover and things to consider.
“For any business, especially tech companies, patents can be the most valuable form of IP protection as a patent gives the inventor a monopoly over the use of their invention for 20 years – i.e others are prevented from making, using or selling the inventor’s product or process without the inventor’s permission.
“This gives the patent owner a competitive advantage in the marketplace by being the only person/entity that can profit from the invention. Alternatively, the patent owner could exploit the patent by selling it to someone who can take commercial advantage of it or by licencing it to someone who uses it for a specific purpose, while the inventor still owns the IP right itself.
“Although in the long term patents can prove very profitable to a business, the process to get a patent to grant can be time consuming and expensive so it is important an inventor has considered the requirements for a valid patent before going through lengthy applications. For a patent to be valid the invention must be:
- Novel to other ideas that exist in the world prior to filing;
- Provide an inventive step that is not obvious to someone with good knowledge and experience in the relevant fields at the date of filing;
- Be capable of industrial application. To file a patent it is advisable to take advice from a patent attorney who will do searches of all existing inventions/technology in the same industry (prior art), draft the patent for you and submit it to the relevant patent offices.
“Patents are ‘territorial’ rights and so a UK patent will only give you rights within the UK. It is possible to apply separately for a patent in each country an inventor requires protection and there are also routes that let you obtain patents in multiple countries around the world with one single application (European or World patent applications).
“In the UK, you are required to submit a ‘specification’ to the UK Patent Office, which consists of a comprehensive description of your invention and any drawings which are useful in describing the invention, along with a completed patent form, which covers basic details and drawings of the patent, and an application fee.
“European and World patent applications can also be made to the UK Patent Office and allow you to obtain a patent (if each country decides to grant you one) in all the countries listed in the application, so long as fees are paid for each country you include in the application (these fees are still cheaper than applying to each country individually).
“Once a patent is granted in a country it is then subject to the national law of that country. Once granted, you may be able to sue infringers for infringements that occurred from the filing date of the patent application and can prevent infringing acts.”
We’ll be hearing more from Bird & Bird and other members of our community about this issue. If there’s a topic area you’d like us to cover in more detail, or if you have a question you’d like to ask, please let us know in the comments below or drop us a line at firstname.lastname@example.org.
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