Intellectual Property (IP)
Intellectual property is an intangible asset which exists in the form of information that has commercial value. The legal rights to use this information (Intellectual Property Rights [IPR]) are controlled by the inventor/owner who can restrict all other access (monopoly), allow 3rd parties to use the information in return for a fee (licence) or sell the IP to 3rd parties (assign).
Different forms of Intellectual Property
There are various forms of Intellectual Property, ranging from patents to secret know-how. The most common are:
Patent - a contract between the owner of an invention and the State whereby the owner is granted exclusive rights (monopoly) to exploit (make, use, sell, import) the invention for a limited period of time in exchange for public disclosure of the invention. The owner of a patent is registered as the proprietor. The proprietor may not necessarily be the inventor, as many large companies own patents that are invented by their employees. Patents are a form of industrial property that can be bought, sold, licensed or used by the owner. Patent protection generally lasts for 20 years from the date of filing the application.
Copyright - a set of economic rights which enables the creator of books, works of art, software code and computer databases to control their use. Control means to produce and sell copies or reproductions of their work, to import or export their work, to create derivative works, to perform/display the work in public and to assign these rights to third parties. It does not provide a monopoly, so third parties are allowed independent development.
Design registration (community design) - refers to the appearance of the whole or part of a product, resulting in specific features such as lines, contours, colours, shape, texture or material. The feature must be visible and can be industrial or handcrafted.
Trademarks - distinctive names, logos, graphics, packaging or symbols that distinguish a manufacturer, product or service from others. More recently, trademarks have been extended to include colours, smells, shapes and sounds.
Secret know-how (trade secrets) - relates to any unique knowledge or skills associated with a particular process or product that has commercial value and gives a business an advantage over its competitors. It either does not satisfy the criteria for patenting or the owner/inventor wishes not to disclose for strategic reasons. It can be a formula, practice, process, instrument, pattern or compilation of information which is not generally known.Protecting secret know-how is dependent on formal non-disclosure agreements between all relevant parties involved. Secret know-how can be licensed by attaching a detailed description of the secret know-how to a licence contract.
Other forms of IP include database rights and chip topography rights (mask work rights) used in the manufacture of computer chips. Some forms of IP require registration in local patent offices, with payment required for both initial filing and granting of a patent, as well as ongoing registration charges. IP that requires registration includes patents, registered designs and trademarks. Copyright, unregistered designs and know-how do not require registration.
How patents work
Patents are legal titles that are granted to the owner/inventor for the exclusive right to use and commercially exploit an invention in a specific territory for a period of 20 years (once granted) after the initial filing of the patent application. A patent needs to be granted in each country (registered at the perspective patent office) in which the owner/inventor seeks to have exclusive ownership. Thus a patent in one country has no bearing in another country. In return for this monopoly, the patent becomes open to public use after 20 years, thus helping the spread of new ideas and technology.
The owner / inventor has the legal right to stop others from manufacturing, using, importing or selling the product within the country in which the patent is granted. However, enforcement is not automatic and it is the responsibility of the owner / inventor to ensure there are no infringers on the patent and that appropriate legal action is taken when necessary. Once granted, the owners have the right to allow certain companies to access the patent (licensing) or sell ownership of the patent (assignment).
The patent system is also one the biggest and best indexed source of technical information available, with over one million patents filed annually.
Requirements for an invention to be patentable
There are three main requirements for an invention to be patentable.
Novel - it must be new and cannot be published or disclosed in public before the filing date of the patent application.
Inventive - the invention must not be obvious to a person who has sufficient knowledge in the field if they were presented with details of the problem. There needs to be some element of inspiration in arriving at the invention. Simple design improvements are not considered patentable.
Industrial appication - the invention must be capable of being made or used in industry. Certain inventions that are not patentable may still be protected under the other forms of intellectual property mentioned above.
The patent process
Step 1 – The inventor should carry out preliminary research into whether patents on the same invention already exist. This can be carried out using any patent search database, such as espacenet.com using keyword search or searching under the relevant patent category. The DIT Hothouse team can provide advice and assistance in this area.
Step 2 – A draft patent specification is drawn up by a patent agent specialising in the field of the invention and the inventor. DIT Hothouse will identify the appropriate patent agent and connect the patent attorney with the inventor. The patent agent will develop the patent specification based on notes, sketches and any other documentation provided by the inventor. The patent specification describes the invention in patenting terms, with the description in its broadest terms.
Step 3 - The inventor reviews and approves the content of the patent specification before filing with the patent office. Although you may want to protect your invention in a number of countries (or worldwide), it is only necessary to file an initial application in one country, as all countries recognise the date of first filing (Priority Date).
Step 4 - Within 12 months of the patent specification and claims being filed, the patent examination office carries out a search based on the claims of the patent specification by examining published patents and technical literature (Examining Citations). The patent examination office can raise a number of objections to the patent application. These objections are examined by the inventor and patent attorney to form a response, explaining why the current invention is different from the cited invention. This may involve revising the original claims of the patent specification.
Step 5 - Approximately 6 months after the date of examination, a patent specification is published with a search report. At this stage, the inventor (applicant) details are in the public domain and the invention is no longer novel (in patenting terms).
Step 6 - If the patent examination office is satisfied with the responses made to cited inventions, they can grant the patent (Acceptance or Rejection). If the patent examination office is not satisfied with the response to cited inventions, they have the power to reject the patent application. Even after a patent is granted, any person or organisation can still oppose the patent if they feel that the patent should not have been granted.
Firstly, a “european patent” does not exist. The European Patent Office in Munich offers a central examination centre for European countries. As described above, the patent will be examined, with a search report published within six months of the application date. When the European Patent Office grants a patent, it is really instructing the national patent offices of the various European offices to grant a patent for the application if the applicant lodges an application. The applicant has to pay for translation costs for the national language of the country they wish to submit a patent application in and pay individual registration costs per country. This can be an expensive process, costing up to €60,000+ for filing in all European countries (the actual costs will depend on the translation charges applied).
PCT route (Patent Co-Operation Treaty)
PCT is an international patent application system, not an international patent, which can defer certain costs and decisions for up to 30 months from the priority date. Applicants can keep their options open on which specific countries they want to file a patent in. A PCT application must be made within 12 months of filing the specification and claims in the original country.
Protecting your work
Never disclose the invention to people or publish your work before a patent application has been filed, otherwise the novelty of your invention will be destroyed and you will not be granted a valid patent. Secret know-how should be documented and recorded safely, marked as ‘secret’ or ‘confidential’ and only disclosed to employees on a need-to-know basis.
Licensing is the process whereby the owner/inventor of intellectual property allows third parties to use the IP in return for payment over a specified period of time. Terms regarding the payment fee and licence duration are contained within a licence agreement.