Patents

Patents protect inventions.

Patents have to be applied for and if granted provide a 20 year term of protection. Generally patents made by employees will belong to their employer so that whilst the employee will be named as the inventor he or she will be required to assign the benefit of the application to his/her employer. A possible area of difficulty concerns patents and inventions made by employees. Until recently it was the case that an employee who made an invention which was subsequently protected by a patent was entitled to compensation where the patent proved to be of outstanding value to the employer. In practice this rarely happened as it was difficult for an employee to show that the benefit to the employer was derived from the patent as opposed to the invention. This has now changed and an employee who can show that his or her invention has been of outstanding benefit to the employer may claim compensation for his/her efforts. This is a matter which ought to be dealt with in the contract of employment. Patents do not protect mere ideas nor can they protect the appearance of a product….that is the purpose of design right protection.

It is absolutely crucial that information concerning patents is maintained as strictly confidential until the patent application has been filed and a “priority date” obtained. Even after filing it is wise not to disclose details of the application until after publication in the Patents Journal as this can invite competitive applications. Also it may be possible to amend an initial filing before publication of the application and for this reason too premature disclosure is unwise.

The filing of an application gives the applicant 12 months in which to make decisions concerning the foreign jurisdictions in which it may wish the patent to be granted.

There are in fact several different routes to patent protection depending on the geographical extent of the protection sought.

Following its filing however it will be some 18 months or so before the patent application is published and becomes open for public inspection.

The application is examined for compliance with formalities and for apparent invalidity in the light of similar patents on file both in the UK and elsewhere. The application may also be contested by 3rd parties.

Whilst it is not intended to outline in detail the process for obtaining a patent there are a number of aspects of patenting which do require careful consideration not the least of which is whether to apply for a patent is the best way to protect the company's interests in any event. Given that a patent will be published to the world some companies decide that the better course is not to apply but to maintain confidentiality by using such devices as the “black box” approach in which the workings of the product are effectively hidden from view. Another approach depending on the nature of the product is to consider leasing on terms which include a suitable confidentiality agreement.

 

You can contact Rowlands via email or call 0845 230 3980 to arrange a consultation with a Rowlands Intellectual Property specialist.