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London Tech Week 2014 – Top patent issues

Keltie LLP

K2 IP Limited

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LTW14-Logo-slideKeltie took part in London Technology Week between 16 and 20 June. We ran an IP seminar and held a number of IP clinics throughout the week and we’d like to say thank you to everyone that came along to the seminar and signed up to one of the clinics.

We discussed many patent, trade mark and design related issues throughout the week but a number of common themes kept cropping up which we thought we’d revisit in a blog post. Today’s post focusses on the patent related issues that we discussed.

Careless talk costs patents

To paraphrase Kryten from Red Dwarf:

As far as disclosing your invention is concerned. One, you shouldn’t disclose your invention before you’ve filed a patent application. And two, you shouldn’t disclose your invention before you’ve filed a patent application. Now I realise that technically speaking that’s only one point but I thought that it was such a big one that it was worth mentioning twice.

The are many hurdles to overcome before your patent application reaches the grant stage but it is extremely important not to publicly disclose your invention, for example by including details on your website, before you’ve filed a patent application. Any disclosures that you make become part of the “prior art” and could be cited against you when your patent application is examined by the Patent Office. So, in a worse scenario your own disclosures could preclude you from getting a patent through to grant.

Now, in some circumstances you may find yourself needing to disclose information to someone outside of your company, e.g. to an investor, to a developer etc. A confidentiality arrangement is vital in such circumstances but if possible, think about filing a patent application before you make the disclosure.

“But I’ve not built a prototype yet so I can’t patent it”

You don’t need to have built a prototype or validated your new process before you can apply for a patent application. As long as you’ve worked it out in sufficient detail that you could describe it to a skilled person in enough detail to allow them to reproduce the invention then you can consider filing a patent application.

Patents are evil/I’m never going to sue anyone so why bother?

There are many reasons to consider filing a patent application to your invention. The classic use of a patent is to prevent others from using/working the invention described in your patent. However, there are other reasons to consider patents, namely:

  • Patents can be used to raise money from investors. Just think how often the Dragons on Dragon’s Den ask if the product is covered by a patent.
  • They can be important in Licensing and M&A proceedings
  • They can be a deterrent to competitors
  • They can control your supply line. Imagine you develop a new product and sub contract for the provision of certain components or parts that you’ve developed as part of the product. Your sub-contractor may be tempted to commercially exploit the components they’ve worked on but if you have a patent to the parts in question you can control what the sub-contractor can and cannot do.
  • They can reduce your corporation tax. The UK’s Patent Box regime will, once it is fully in effect, reduce your corporation tax to 10% from 21% on the qualifying parts of your profits. For this to be an option however you need to have a granted UK or European patent (or a limited number of other granted patents in Europe) and a UK company. If you’re wondering whether Patent Box is worth it for your company then we can put you in touch with people who can give a rough answer to that question within 20 minutes!

“But I’ve got a software invention. You can’t patent software”

Don’t believe the hype!

As long as certain conditions are met, patents can be obtained for software inventions (or computer-implemented inventions) – (see also our 5 common misconceptions about software patents post).

It is true that there may be additional issues to consider compared to hardware based inventions and there may be instances where the invention in question falls within a class of subject matter that cannot be patented but this assessment is not necessarily obvious. It should also be appreciated that the approach in other countries (e.g. the US and South Korea) is different to the approach in Europe and the UK. So even if something is unlikely to be patentable here, it may still be patentable elsewhere.

The take home suggestion from us is: If you’ve developed something you think is new or cool/solves a problem then go and see a patent attorney for their input. You never know, something might be patentable!

Our next wrap up post on London Tech Week will take a quick look at the trade mark related issues we encountered.

Mark Richardson 2 July 2014

 


1 Comment

  1. Really good post, especially for someone like me who is new to intellectual property law and patents. Very easy to read, simple to understand and informative.

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