TWe are
often asked by clients with IP in
their businesses to provide an
explanation of the patent system.
Here our guest author, specialist
intellectual property barrister
Jonathan DC Turner of 13/14 Old
Square, Lincoln’s Inn, London, WC2A
3UE
http://www.13oldsquare.com/jonathan_dc_turner.htm
provides a layman’s guide to some
basic aspects of the patent system.
The different parts of a patent.
A patent contains three elements:
- A description of the
invention;
- drawings referred to in the
description; and
- claims
The patent as a whole must
disclose the invention in a manner
which is sufficiently clear and
complete for the invention to be
performed by a person skilled in the
art (i.e. the relevant field). This
function is achieved essentially by
the description and drawings.
The function of the claim or
claims is to define the extent of
the invention and hence the
protection accorded to the patentee.
They must be clear and concise and
they must be supported by the
description.
The scope of the claims
The scope of the claims
determines:
- whether the patentee can
object to the manufacture and
sale of a product or the use of
a process without its licence;
and
- whether the requirements for
a valid patent, such as novelty
and inventive step, are
satisfied.
A patentee can, in principle,
object to the manufacture and sale
of a product or the use of a process
without its licence if, but only if,
the product or process is within the
scope of one or more of the claims.
On the other hand, if the scope of a
claim covers a product or process
which is not new and inventive, a
patent should not be granted. If a
patent has been granted with such a
claim, it is invalid and should be
revoked.
A claim of a patent typically
specifies a combination of features,
known as “integers”. The patentee
can, in principle, object to the
unlicensed manufacture and sale of a
product or the use of a process if
the product or process contains each
of the integers specified in one or
more of the claims. On the other
hand, a claim lacks novelty or
inventive step if, but only if, the
combination of all of the specified
integers has previously been made
available to the public (the “state
of the art”) or is obvious from the
state of the art.
Use of multiple claims
Patent applications and patents
normally contain one or more series
of claims of differing scope, so
that if the broadest claim lacks
novelty or inventive step, the
application or patent can readily be
amended by the deletion of that
claim. Usually the broadest claim in
the series is placed first.
It is common to present a
principal claim (“independent
claim”) which sets out each feature
of a claimed combination, followed
by other claims (“dependent claims”)
which specify the combination
referred to in the independent claim
by reference together with one or
more additional features, eg
“2. A trundlehumper as claimed in
claim 1 with a widget to stop the
motor automatically when a red line
is crossed”.
In this example, claim 2
comprises all of the integers in
claim 1 with the additional feature
that there is a widget to stop the
motor automatically when a red line
is crossed.
In the above example, claim 1 is
broader than claim 2, in that the
scope of protection of claim 1
extends to trundlehumpers with the
features specified in it whether or
not they also have a widget to stop
the motor automatically when a red
line is crossed. But claim 1 is also
more vulnerable than claim 2, in
that it lacks novelty if a
trundlehumper as claimed in it was
already known to the public; whereas
claim 2 would survive if it was not
known or obvious to have a
trundlehumper as claimed in claim 1
with a widget to stop the motor
automatically when a red line is
crossed.
Applying for a patent
To obtain a patent it is
necessary to apply to the patent
office. A national patent office
(such as the UK Intellectual
Property Office) can grant a patent
for the national territory, but not
for other countries. So if
protection in Germany (for example)
is desired, it is necessary to apply
for a patent in the German patent
office.
Alternatively, the European
patent office can grant a patent for
most countries in Europe, including
the UK and Germany. It is also
possible to file an international
patent application (sometimes called
a world patent application) for
patents in numerous countries around
the world, but this has to be
converted into separate national
applications and/or a European
application at a later stage in the
procedure.
Drafting a patent to obtain
effective protection requires
considerable skill. Professional
advice from a patent attorney is
highly advisable.
Fees are payable to patent
offices at different stages of the
procedure. The amounts vary
depending on the office and the
number of claims, but can add up to
a substantial sum, particularly if
protection in a number of countries
is sought.
Search for prior art
When an application for a patent
is made in the UK or Europe, the
patent office first searches the
literature (particularly previously
published patent applications and
patents) to see if the invention as
claimed is already available to the
public or obvious from what is
already available (called the “prior
art”). The patent office then
publishes the application under a
number ending in ‘A’ together with
its “Search Report” identifying any
relevant prior published documents
which it has found.
Examination
The patent office then examines
the patent application against the
prior art identified in the Search
Report and provides a further report
(the Examiner’s Report) indicating
whether it considers that the
requirements for granting a patent
have been met and if not, why not.
The applicant is given an
opportunity to respond to any
objections taken by the Examiner,
either by arguing that they are
incorrect or by submitting
amendments to the application which
overcome them (or possibly both).
Amendment
An amendment often involves
adding a feature or features to one
or more of the claims, where a claim
as drafted lacks novelty or
inventive step, but a combination of
the features of that claim and a
further feature or features would
satisfy these requirements. Where a
feature is added to an independent
claim, it is also added (by
reference) to each of the subsidiary
claims which depend on that
independent claim.
A feature added to a claim by an
amendment must be present in the
description or another claim of the
patent application as filed, because
it is not permissible to add matter
to the application as filed.
Grant
If the applicant’s response
satisfies the Examiner, the patent
is then granted (as amended, where
applicable) and published under the
same number as the published
application but with the suffix B.
The patent office file, including
the Examiner’s Report and the
patentee’s response to it, is
available to anyone who asks the
patent office. |