WIsH - Welsh Innovations in Healthcare
Patents
A patent is a legal right that grants a monopoly to the owner of the invention for up to 20 years. A patent allows the owner of the patented invention to prevent unauthorised persons from using or exploiting the invention for commercial gain.
The following criteria must be met in order to obtain a patent for an invention:
- Novelty
The invention must be new. It must not have been disclosed to the public, anywhere in the world prior to the patent filing date (unless disclosed under a confidentiality agreement). Disclosure of the invention includes publications, presentations, demonstrations and even informal chats. Information in the public domain that may challenge the novelty of a patent is called ‘prior art’.
- Inventive Step
The invention must not be obvious compared to what is already known to a person skilled in the field.
- Industrial Application
The invention must have some practical use i.e. be capable of being made or used in industry (in its broadest sense).
- Exclusions
Certain types of inventions are specifically excluded from patent protection. These include discoveries, artistic works, mathematical algorithms and scientific theories. Methods of treatment or diagnosis are also not patentable (except in the US) although pharmaceuticals and diagnostic kits can have patent protection.
If an invention is thought to satisfy the criteria above then an application for grant of a UK patent can be filed with the UK Patent Office. This application is then subjected to a number of searches and examinations by the UK Patent Office to determine whether the invention fulfils the requirements for grant of a patent. This process can take up to 4½ years from the date of application but if the patent is granted it will prevent others from manufacturing or exploiting the patented invention in the UK.
Once an initial application has been filed with the UK Patent Office, international patent protection can also be sought by filing patent applications abroad. There are several options for obtaining international patent protection. Individual patent applications can be filed for each country required, but this requires separate patent applications to be prepared for each country and can incur significant upfront costs. Alternatively, it is possible to file a single European patent application under the terms of the European Patent Convention (EPC), which covers around 23 European countries including the UK. If wider protection is sought, applications can be filed under the Patent Co-operation Treaty (PCT) which covers the UK and around 190 other countries worldwide. Both the EPC and PCT routes offer the advantage of delaying a decision regarding which countries to file for protection in and can assist in keeping initial costs low, but will ultimately require individual national patents to be filed in each country. It is important to note that if a UK national application is not made, then permission from the UK Patent Office must first be sought before filing abroad.
Obtaining and maintaining patent protection is a detailed, on-going process which can be very complicated and expensive, particularly when protection is sought in several countries. However, a patent can be a valuable asset which can be exploited to recoup these fees and to generate further income.
Frequently asked questions
Why are patents important?
Developing new technologies and therapies involves significant investment of time, skill, resource and money, particularly in the pharmaceutical business where the costs of developing and testing a new drug can run into tens, or even hundreds of millions of pounds! Patents can protect these investments and enable patent owners and product developers to recoup their development costs and generate a source of income.
How can patents be used to generate income?
Patents are valuable pieces of property that can be bought, sold or even leased, just like any other property. Often, companies are interested in licensing (leasing) or buying the rights to manufacture and sell an invention and will pay the owner of the patent for this privilege. Licensing is a common route of exploitation as it enables the owner to retain some rights in the invention whilst receiving income from the company’s use and sale of the invention.
How do I know if my invention is original?
It is very difficult to definitively determine whether your invention is original or is already in the public domain. A good starting point is the internet where search engines such as ‘GoogleTM’ can be useful for searching with key words. Patent databases such as Esp@cenet can help to find out whether your idea has already been patented by others and searching literature databases such as PubMed® or MEDLINE® can also be useful.
I would like to publish my work. Will this jeopardise a patent application?
Published or publicly presented work will not be eligible for patent protection. If you think your work may be patentable it is advisable to delay publication and presentation until the work has been assessed and, if necessary, a patent application has been prepared and filed. If urgent publication is required, it is possible to prepare and file a patent application relatively quickly, however, this could have important implications for the future of your patent, particularly if further development of the invention is required.
Do the rules and criteria for patent protection differ in different countries?
Rules and criteria for patent protection can differ throughout the world. For example, unlike most other countries, in the US priority is given to the first to invent rather than the first to file a patent application.
What should I do if I think I have invented something which may be patentable?
Keep detailed records of where and when you made the invention and keep details of the invention confidential. Discuss the work with the Research and Development Manager and/or WIsH representative who may ask you to complete an invention record to help assess your invention and assist in developing your ideas further.