Patents provide protection for technical innovation, whether in products or processes.  A patent can protect the functionality embodied in a product or process without necessarily being limited to the particular arrangement (embodiment) adopted by the inventor. 

For the European Union, the principles that determine whether an invention is patentable have been harmonised.  Different rules may apply elsewhere, particularly the US.  For the European Union, in order to be patentable an invention must be:

• novel (new)
• non-obvious
• capable of industrial application
• not one of the various things excluded from patent protection (“the excluded categories").

Novelty and Obviousness

Novelty and obviousness are judged against what is known as the prior art.  In order to be novel an invention must possess at least one feature that is new as compared with any individual item of the prior art.  In order to be non-obvious an invention has to be inventive when compared with any individual item of prior art or obvious combinations of items of prior art (it is not permissible to cherry pick features from different items of prior art to demonstrate obviousness). 

The prior art is literally everything that has been publicly disclosed at the filing date of a patent application.  A prior art disclosure can take any form that makes an invention public knowledge.  For example, the disclosure may be written, verbal or the display of a prototype and may be in a foreign language.  Availability of the disclosure is the key issue.  It does not matter whether anyone has actually bothered to avail themselves of the information. 

For most, but not all, countries a non-confidential disclosure of an invention prior to the filing of a patent application for the invention will make the invention a part of the prior art so making it impossible to obtain a valid patent for the invention.  This applies to the United Kingdom and the other European Union countries and so the golden rule should be to file a patent application before disclosing an invention other than in confidence.

Disclosure of an invention to third parties in confidence does not make an invention a part of the prior art.  Thus it is possible to disclose an invention to others (for example investors or parts suppliers) before a patent application is filed, provided the disclosure is in confidence.  However, for safety’s sake it is best to try and avoid such disclosures and file a patent application first.  Confidential disclosures of an invention should always be supported by a written confidentiality agreement signed by the party receiving the confidential information.

If you have an invention that you have already disclosed it is still worth seeking advice.  Some countries, such as the US, have very different laws on what constitutes prior art against a patent application and some have alternative forms of patent-like protection that might be obtainable.  If in doubt ask.

Industrial Applicability

This term is interpreted broadly and extends beyond manufacture in a factory or by automated processes.  However, there are two types of process the law says are not capable of industrial application and so cannot be patented.  Those processes are:

• methods of treatment by surgery or therapy, for use on the human body or animals
  
• methods of diagnosis for use on humans or animals

However products for use in such methods can be protected.  It is also worth noting that the law applying to these exclusions is evolving and so some practices that may at first sight appear to be excluded may be patentable.  If your invention appears to fall into one of these categories it is still worth asking whether it could be patented.

Excluded Categories

The law excludes the following from patent protection:

• a discovery, scientific theory or mathematical method
• a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever
• a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer
• the presentation of information.

If your invention falls into one of these categories, it is still worth seeking advice.  The exclusion applies only to these categories of invention in themselves.  It does not necessarily exclude from patent protection a machine whose technical functions are governed by a mathematical method or a computer program.  If in doubt ask.

How To Obtain A Patent

The simplest and cheapest way to obtain a patent covering the United Kingdom is to file a United Kingdom patent application.  However, patent coverage for the United Kingdom can also be obtained by way of a European patent application. 

European patent applications are more expensive than a United Kingdom patent application but have the advantage that they can cover the entire European Union by way of a single application that is processed centrally at the European Patent Office. 

For patent protection outside of the United Kingdom, it is generally necessary to file a patent application in each country required, although, for some it is possible to obtain protection by way of a regional patent.  The European patent is an example of a regional patent.

Patent Application Procedure

European patent applications and United Kingdom patent applications go through a similar application process.  In each case, an Examiner will review an application to see if the invention falls into one of the excluded categories and is industrially applicable.  The Examiner also searches the prior art to see whether there are any items of prior art that indicate a lack of novelty or that the invention is obvious.  If the Examiner finds no fault with the application, it will be allowed and a patent granted.  It is more usual that the Examiner will raise objections; usually that the invention lacks novelty or is obvious.  In that case, there are opportunities to argue against the objection and/or amend the application to overcome the objection.  Unless it proves impossible to overcome the objections, the Examiner will eventually allow the application and a patent will be granted.

Search and examination are a feature of the patent systems of most countries, although, the exact procedure may vary considerably from country to country.  The important thing to bear in mind is that you cannot simply file a patent application and assume that a patent will result. 

Patent Infringement

It is important to remember that obtaining a patent does not give the patent proprietor any guarantee of freedom to make and sell the patented invention in the country in which the patent is granted.  When a patent is granted, it only grants the patent proprietor the right to prevent others utilising the invention.  It is possible that if the proprietor utilises that invention, that will infringe someone else’s patent. For example, Assume television is a new invention and that it has just been patented.  You buy one and after using it realise it has shortcomings.  You invent something to overcome those shortcomings.  Provided that something is new and non-obvious when compared with the prior art (which will include the television you have), you may obtain a patent for your invention.  You will be able to prevent others using your invention (including the owner of the patent for television).  However, the owner of the patent for television will be able to prevent you making and selling televisions incorporating your invention.