Patent Pitfalls |
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| Is your idea
patentable? |
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Various things are not patentable, e.g. computer programs or ways of doing
business. The IPO has a
list of excluded material. However, it isn’t completely straightforward
because the interpretation of the list depends on a number of cases in the Law
Courts, and if you think your idea falls into one of these area (unless you are
a lawyer) it is best to get in touch with a Patent Attorney at the very start of your venture.
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Searching: Is your idea novel and inventive? |
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If somebody else has not already done it or described it, then your idea is
novel. If nobody has done or described something similar, your idea is
probably not obvious and therefore is inventive. The novelty of your
idea, and whether or not it has an inventive step can only be determined by a
search of what has been published before. You can do this search yourself by,
for example, using
Google Patents,
Google Scholar,
Free
Patents Online, etc. |
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If you find articles or patents that describe your idea exactly, then
your idea is not novel, and it's probably back to the drawing board. If you find
articles that are similar to your idea, the situation is a little
trickier. On the one hand, it probably means that your idea is novel, but
the question now is whether the differences between these articles, and what was
generally known at the time they were written, make your idea obvious, and
therefore not inventive. |
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The pitfall of doing the search yourself is that there is a chance that you
might miss articles concerning the novelty of your invention, and a bigger
chance that you will miss articles that cast doubt on its inventive step. This
means that all subsequent stages in the patenting process are at risk. |
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In addition to or instead of doing the search yourself, you can pay the
Application Fee (£30) and the Search Fee (£100) and ask the IPO to do a search.
But before you can do this you need to have drafted your patent application,
including an abstract and at least one claim; drafting is not without its own
pitfalls… (see below). When the IPO do the search, they
search worldwide documentation to help decide whether patent applications
have novelty and an inventive step. However, if the patent application you have
drafted doesn’t properly capture your idea, and the claims do not adequately
delineate the scope of your idea, then the search results may not be very
accurate. |
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The IPO aims to complete the search within four months of request and
will send you the results of your search together with copies of the relevant documents.
Armed with the results of the search, you can decide whether to carry on
with patenting your idea or not. You can also think about whether you should add
or amend your patent application to work around the documents that have been
identified in the search. At this stage, you may well have thought of
embellishments or improvements to your idea anyway. These can all be included in
a revised document and you can file another application, claiming priority from
the first one.
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Drafting: have you adequately captured your idea? |
A good patent draft has:
- Context
The description should set out your invention against what has already been done
- Clarity
The description of your idea must be clear and avoid “relative terms which have
no generally accepted meaning” and “imprecisely defined parameters”
- Enablement
The description should be detailed enough so that a competent technician could
do or make your idea work, and critical information should not be omitted
- Utility
Your idea has to work!
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To construct a good draft then, at least a rudimentary search of some kind
should be done, and against the background information, what you are trying to do is put into
words the features of your invention, describing it fully and in such a way that
there is enough information for others to carry it out. The description should
show in detail with reference to the drawings one or more particular examples of
your invention. Whilst not crucial when you are filing a provisional
application, it is a good idea to include as much detail as possible in the
filing because the priority date you get covers what is set out in what you
file. So, although you can add more information in further filings made in the
year following the first application, these new elements will have a priority
date relating to when the further filings were made. For this reason it is best
to explain the full scope of your invention in your first filing. |
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Of course, if you are planning to press ahead and try and obtain a patent
quickly based on what you file, you will not be allowed to add
information later.
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Drafting: do the claims adequately define and delineate the scope of your idea? |
Good claims rely on bringing together three disparate aspects of English
language:
- plain language
- technical language, and
- the law.
Claims are a precise statement of your invention, and what is written here
defines what protection you will get if your patent is granted. You can’t put
anything in your claims which you have not already referred to in your
description, and whatever goes in the claims has to be fully supported by the
description. The first claim must define the invention by setting out its
distinctive technical features, i.e. features which distinguish your invention
from what is already known within the same or similar field. To write good
claims then, ideally you need to have done, or had done, a search.
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