Understanding the patent system for engineers

Every engineer is an innovator by definition, so it’s important to understand how the patent system works and how to get the most out of it. Patent lawyer David Sant addresses some of the typical questions he has to deal with.

Q: Why should I patent my invention at all? Isn’t it cheaper to just get on with manufacturing and marketing the idea?

A: Well, you could of course enter the market place without any protection, but the risks that someone will copy the invention are considerable. Are you prepared to invest money in your invention and product, only for it then to be copied by the competition? If you apply for a patent and the application is successful, you will be granted protection limited by scope and duration, meaning that products or processes falling within the scope of the patent may not be made or sold or imported without your consent. It is only the patent system which offers innovators the necessary guarantees to enable them to bring their invention on to the market, and thereby to procure their reward for inventing, developing and investing in the product.

Q: I have invented a new type of packaging material. I discussed the idea with a lot of people in the market, and everyone likes it. I would like to obtain a patent for my invention and was wondering how I would go about filing a patent application.

A: Until the patent application is filed it is crucial that it remains outside the public domain. It will not be patentable if it is not novel because it has been previously made available to the public, even if the inventor was the one doing the disclosing. It sounds like you have already disclosed the invention to many people and, unless those disclosures were made in confidence, you may have put in the public domain. It is a common misconception that if the disclosure was made by the inventor himself, then that disclosure does not damage a patent application: the identity of the person making the disclosure is, however, irrelevant. If your packaging invention has been disclosed, such that it is has been made available to the public, and is not novel, then, sadly, it will not be possible to obtain patent protection.

Q: Some time ago, my company had confidential discussions with a firm in Reading to manufacture a new low-cost drug dispenser, which is protected by patents owned by us, but the discussions came to nothing. I have recently found out that soon after our discussions they went ahead without our knowledge and are already selling on the market.

A: If the product made by the Reading manufacturer falls within the scope of your patent, you may have a claim for patent infringement. You will need to investigate the firm’s product in detail by obtaining samples, so that infringement can be assessed and the necessary evidence gathered. If infringement has occurred, you should first approach the other side to try to receive compensation by negotiation before starting an infringement action. For both the assessment of infringement and any approach to the infringer, the advice and assistance of a patent specialist is recommended. If the infringing product is based on the disclosure you made during your discussions, you may also have a claim for breach of confidence.

Q: My colleagues and I have developed a new type of business practice related to auctioning of cattle, but it could also be applied to antiques or any commodity. It seems that no-one else is using this type of auction.

A: Not everything can be protected by patents, even if it is new and highly innovative. Some innovations are specifically excluded from patent protection, simply because of the nature of the innovation, such as a work of art or piece of music, which nevertheless may be protectable by copyright. Inventions, which constitute pure software or pure business methods, are not patentable. If the auction practice you mention is a business method as such, then it will not be patentable. However, if you can show that it is not just a business method and there is in fact “more to it”, then in principle it may be patentable. In such cases, it is particularly advisable that any application for a patent on the invention is carefully drafted to stress relevant elements of the invention, and expert advice from a patent specialist is recommended.

Note: the above answers do not constitute legal advice and may not be used as such.

David Sant is a patent lawyer and European patent attorney, with over 25 years’ experience both in patent prosecution and litigation. He is a partner at Pearl Cohen in London. Send your own patent queries to engtechmag@theiet.org

For direct enquiries, contact David on +44 (0)7725566715.

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