What is and is not protectable?
A patent is a monopoly right valid for twenty years which the government grants to creators, so that inventors will disclose how their inventions work in enough detail that anyone can implement them. The government benefits from an increased knowledge base within the country and technology advances as a result of competition. Creators benefit from security that should their invention meet the criteria for protection, the associated rights will be protected for the duration of the patent.
Essentially, there is a deal offered by the government asking whether the inventor is prepared to disclose how their invention works in return for a monopoly right for twenty years. The question must be considered carefully though, as the inventor will have to describe the level of functionality in such detail that someone can make the invention work themselves.
If you decide that you are prepared to disclose how your invention works, there are three ‘hurdles’ you need to overcome.
First, is your idea new/novel namely not already in the public domain at the time you file the patent application? This covers not only all published information but also the inventor’s own non-confidential disclosures. Second, is what we call inventive step. This is where we work out whether something is inventive or clever, but this is however, very subjective. What is clever to one person may not be to another. The fact that an idea is novel should mean that there is a point of difference with it compared to previously disclosed technology, but the important element here is identifying whether that difference has an associated benefit. The greater the number or size of benefit(s), the stronger the case for inventive step. The argument with the Patent Office would be that if this difference was obvious (namely a routine modification and not inventive) why has not been carried out before? Certainly a lengthy period of time in which that modification could have been carried out supports this line of argument. Also, if you can link a benefit with a difference and the benefit is unexpected, then this is likely to be supportive of your arguments for the innovation being patentably inventive.
Developments to existing technology can also be patented, but certain types of invention cannot, for example a method of doing business, a mental act, rules of a game, a program for a computer, presentation of information or a mathematical method. However, patents are granted to innovation in these areas because these exceptions are considered narrowly. If the invention is a method, but you can apply that method to a technical process, you may be able to patent it. These issues are all the subject of the third ‘hurdle’.
The third ‘hurdle’ relates to the above-stated exceptions but is essentially a question of whether you are solving a so called ‘technical’ problem. If the problem you can solve with your invention is a technical one, then you can overcome this third hurdle. Different degrees of rigor apply in different countries for this hurdle (with some having a very low threshold) but in the UK and Europe, for certain types of invention which sit close to these exceptions it can be challenging to overcome - this is where the skill of the patent attorney really comes to the fore.
At Keltie, our expert attorneys drill down in the core functionality of an invention in order to find the technical benefit or advantage attained as a result of the new creation. Some creations are very narrowly focused, but our approach, based on knowledge of how the patent offices of the world approach this issue and also on our previous filing experience, means we are often able to express aspects of the innovation in technical terms and put together a compelling case for overcoming this hurdle to get a patent granted. We overcome the question of borderline patentability with the combination of our experience and approach. This involves a significant effort in seeking to define what the underlying technology is that supports a business method for example or how the commercial offering is actually put into practice technically.
The way we draft an application is key. If we focus on the technical elements of the creation and their advantages or conversely the technical problems that they solve, we are likely to get the patent granted. We must think about the language involved, describing functionality such that the technical nature of the invention is clear. We also try to build in as many fall-back positions as possible which increases our chances with the first and second hurdles. We need to plan ahead and consider how our applications might be interpreted by the granting patent offices. This takes skill and experience and the often-discussed blend of intellectual property work marrying scientific and writing abilities.
When a new client comes to us asking for our help in protecting their invention, we will often ask to speak to the firm’s Chief Technical Officer as well as the research or marketing teams. As mentioned, it is the technical elements of a creation we are trying to patent. Whilst we do take care to understand your business plans and aspirations which is important for context, we focus less on your company’s commercial distinctiveness as a whole and more on the technology which enables your business. We look at the platforms, interrogate the technical elements and build a story which means we are best positioned to be able to protect your invention.
As part of our initial discussions with clients, as well as beginning to form the personal relationships which the firm is built upon, we look for the ‘technical problem’ being expressed in briefing notes, explanations and material supporting the creation. This is not an administrative problem or a business problem but one which resides in the technical domain. Provided the idea solves that technical problem, we can determine the likelihood of success especially regarding the third hurdle. For greater comfort regarding novelty and inventive step we can conduct clearance searches, though such searches are never 100% guaranteed they can help to establish the state of the art namely the baseline of technology against which the first and second hurdles will be assessed.
Larger companies perhaps focus more on a mass-filing approach where the quality of drafting is less important than the volume of applications filed in order to cover as many angles and elements as possible. For SMEs, patents are crucially important to get right and for our clients - the patent makes a huge difference to their business. In this regard, SMEs may only file one or two patents, but they are crucial to their business and can be a huge differentiator in the market place.
Our approach is different - we really engage with our clients, ask them questions, challenge their ideas and understand where the innovation fits within their wider business plans. It is this level of engagement that sets us apart and we have built the business based upon winning clients from referrals and as a result of the quality of not only our work, but the partnership approach we take. We want to be involved from the outset of a project - this is where we add real value by pairing our expertise and our clients’ ideas to deliver outstanding results.
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