Intellectual Property Protection
You want to protect your idea from exploitation from others, and we together with the UK government are willing to help you.
There are intellectual property laws for your help – however, you have to be careful not to publicise your idea in advance. One of the first things we do when we first engage with you is to sign a Non-Disclosure Agreement. This is to protect your interests. Innovolo are highly experienced in designing an intelligent Intellectual Property protection strategy that fits your needs and will carry out what’s necessary to get your IP protected. Oh, and one thing – the IP is yours.* Even if we develop it for you.
- Advice on patentability – whether an idea meets the technical requirements for patenting and, if not, what else can be done to protect it.
- Searching – investigating the novelty of an invention to determine whether related patents or know-how already exist at home or abroad.
- Prosecution of patent infringements – drafting and filing domestic and international patent applications and answering objections raised by examiners at the domestic and international patent granting authorities to secure the grant of commercially effective patents.
- Watching and pre-grant challenges – monitoring competitors’ patent applications and providing evidence of invalidity to the official examiners to block competitor’s applications.
- Post-grant challenges – technical advice and assistance on how to challenge a competitor’s granted patents and how to defend challenges to your own granted patents.
- Patent portfolio strategies – review of portfolios and advice on international protection options and opportunities aligned to markets, competitor activity, commercial IP objectives and budgets.
- Patent Box tax opportunities – advice to UK tax paying entities on use of patents to reduce Corporation tax
- Searching and preliminary advice – to assess prior rights, establish freedom to use the design and assess its registrability.
- Registration and prosecution of the design – advising on the application process and dealing with objections raised by third parties.
- Alignment with other rights – considering how the registered design can work with patents and trade marks to create a canopy of IP protection for key product lines.
- Infringement – strategic and pre-litigation advice including cease and desist letters.
Most frequent questions and answers
A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application.
As the patent owner, you may give permission to, or license, other parties to use the invention on mutually agreed terms. You may also sell the right to the invention to someone else, who will then become the new owner of the patent. Once a patent expires, the protection ends, and an invention enters the public domain; that is, anyone can commercially exploit the invention without infringing the patent.
As the patent owner, you have the right to decide who may – or may not – use the patented invention for the period in which the invention is protected. In other words, patent protection means that the invention cannot be commercially made, used, distributed, imported, or sold by others without your permission.
Inventions may be granted patent status in any field of technology, from an everyday writing pen to a nanotechnology chip. An invention can be a product – such as a chemical compound, or a process, for example – or it could be a process for producing a specific chemical compound. Many products in fact contain a number of inventions. For example, a laptop computer can involve hundreds of inventions, working together.
Patent protection is granted for a limited period of time, which is generally 20 years from the filing date of the application.
Patents are territorial rights. In general, the exclusive rights are only applicable in the country or region in which a patent has been filed and granted, in accordance with the law of that country or region.
We will discuss your product’s specific needs with you before your application is submitted.
Patent rights are usually enforced in a court on the initiative of the right owner. In most regions, a court of law has the authority to stop patent infringement. However, the main responsibility for monitoring, identifying, and taking action against infringers of a patent lies with you as the patent owner.
It is worth bearing in mind that a patent is essentially worth to you only to the value you are prepared to defend it in a court of law.
Licensing a patent simply means that you as the patent owner grant permission to another individual/organisation to make, use, sell, etc. your patented invention. This takes place according to agreed terms and conditions (for example, defining the amount and type of payment to be made by the licensee to the licensor), for a defined purpose, in a defined territory, and for an agreed period of time.
You may wish to grant a license to a third party for many reasons:
- You may not have the necessary manufacturing facilities, for example, and therefore opts to allow others to make and sell your patented invention in return for “royalty” payments.
- Alternatively, you may have manufacturing facilities, but you may not be large enough to cover market demand. In this case, you may be interested in licensing the patent to another manufacturer in order to benefit from another income stream.
- Another possible situation is one in which you wish to concentrate on one geographic market; therefore you may choose to grant a license to another individual/organization, with interests in other geographical markets. Entering into a licensing agreement can help to build a mutually-beneficial business relationship.
Unlike selling or transferring a patent to another party, the licensor (i.e. you) continues to have property rights over the patented invention.
There are numerous conditions that must be met in order to obtain a patent and it’s not possible to compile an exhaustive, universally applicable list. However, some of the key conditions include the following:
- The invention must show an element of novelty; that is, some new characteristic which is not known in the body of existing knowledge in its technical field. This body of existing knowledge is called “prior art”.
- The invention must involve an “inventive step” or “non-obvious”, which means that it could not be obviously deduced by a person having ordinary skill in the relevant technical field.
- The invention must be capable of industrial application, meaning that it must be capable of being used for an industrial or business purpose beyond a mere theoretical phenomenon or be useful.
- Its subject matter must be accepted as “patentable” under law. In many countries, scientific theories, aesthetic creations, mathematical methods, plant or animal varieties, discoveries of natural substances, commercial methods, methods for medical treatment (as opposed to medical products), or computer programs are generally not patentable.
- The invention must be disclosed in an application in a manner sufficiently clear and complete to enable it to be replicated by a person with an ordinary level of skill in the relevant technical field.
In general, applicants can prepare their patent applications and file them without assistance from a patent attorney. However, given the complexity of patent documents and the legal skills required, such as claim drafting, it is highly advisable to seek legal assistance from a patent attorney/agent when drafting a patent application.
Furthermore, the legislation of many countries requires that an applicant, whose ordinary residence or principal place of business is outside the country, be represented by an attorney or agent qualified in the country (which usually means an agent or attorney who resides and practices in that country).
No. Patents are granted by patent offices in exchange for a full disclosure of the invention. In general, the details of the invention are then published and made available to the public at large.
It is important to file a patent application before publicly disclosing the details of an invention. In general, an invention which is made public before an application is filed would be considered “prior art ” (although the definition of the term “prior art” is not uniform at the international level, in many countries, it refers to any information which has been made available to the public anywhere in the world by written or oral disclosure before the filing date).
In countries that apply the above definition of the term “prior art”, an applicant’s public disclosure of an invention prior to filing a patent application would prevent him/her from obtaining a valid patent for that invention, since the invention would not comply with the novelty requirement. Some countries, however, allow for a grace period – usually between 6 and 12 months – which provides a safeguard for applicants who disclosed their inventions before filing a patent application. Further, the novelty criteria may be interpreted differently depending on the applicable law.
If disclosing your invention before filing a patent application is unavoidable – for example, to a potential investor or a business partner – then any disclosure should be accompanied by a confidentiality or non-disclosure agreement, which we can help you with. It should also be kept in mind that applying early for patent protection will generally be helpful when seeking financial support to commercialize an invention.