Students
PATENTS FREQUENTLY ASKED QUESTIONS
Download 'What's an idea?' - provided by the Irish Patents Office
Why patent at all?
You don’t need a patent to commercialise. Filing a patent application is however the only way to secure legal ownership rights in an invention and thus the only effective legal barrier to competition from a third party prepared to copy your invention.
What kind of invention qualifies for patent protection?
There are two main criteria for patentability. The first is that the idea is novel and the second is that it must possess a quantum of inventiveness or inventive step. In general the level of inventiveness required is not as large as many people may believe.
I have been told to keep my idea confidential – why?
The main reason is to protect validity of a patent application. If an idea is in the public domain it is considered “prior art” and no longer patentable.
What is “prior art”?
Prior art is defined in patent law but it is basically everything that has been done anywhere on a date prior to the date of your patent application and which is the public domain by virtue of not being retained under confidentiality. It includes speaking about, showing, selling, providing product information and every other method of disclosing the invention.
So am I too late to patent if I have already sold or told others about my invention?
You possibly are – there are some circumstances when there is an implied confidentiality and there are some countries in the world which allow a valid patent application to be filed within a limited period from the date of first disclosure.
How do I know if my invention is new or not – can I research it?
Yes there are many search engines – patent search engines include Google Patents and Espacenet. Bear in mind that the definition of what is prior art is very wide and no one database can find all relevant prior art. Patent Offices tend to search patent databases for prior art and it is useful to do such a search before filing a patent application.
Do patent databases cover all patents from all countries?
No. Each database is limited to specific countries, for example Google Patents is limited to US patents only. Bear in mind also that most patent applications are published only 18 months after they are filed, so as you search you are working with an 18 month blind window.
What if I file in Ireland and the UK only?
If there is no patent then the principle of freedom to use applies. In other words no patent means no protection against competition. So in this case the invention is free to use for others everywhere else except Ireland and the UK.
Is there regional patents such as a European or World-wide patent?
There is a European patent application which is processed centrally but when granted is treated as a national patent in each country requiring separate action in each country. It is cost effective if you want protection in more than about three countries.
There is no world-wide patent. There is an International (PCT) application which covers more than 130 countries but it has a life of only 30 months. It must be converted into national or regional patents such a European patent within that period. If nothing is done at the end of 30 months all patent rights will be lost.
Can I tell people about my invention after I file my patent application?
Yes you can and any such disclosure will not be prior art for the invention defined in the filed patent application. However there are circumstances, for example where the invention is being developed where it may be prudent to keep the original invention and any developments of it confidential.
When I am protected against infringement?
A patent must be granted before it can be enforced in court but protection against infringing acts accrues from the date of publication.
How long does it take to get a granted patent?
It can take anything from about a year to about 10 years depending on the jurisdiction, how quickly steps are taken and on the degree to which objections arise.
What is the process?
Once a patent application is filed it is searched and examined by a government appointed official. That person will have a technical qualification and will take a view, based on prior art turned by an official search, whether the invention is patentable or not. The applicant for the patent can interact with the Examiner to achieve allowance of the application. There are official fees and costs throughout the process, at filing, for search and examination and at grant. There are also renewal fees payable to keep the patent application or patent alive right up to the end of the 20 year term.
Once the patent is granted I am free to commercialise it?
You do not have to wait until a patent is granted to commercialise the invention. On the other hand a granted patent does not confer any right to practice the invention. A patented invention when commercialised can still infringe an earlier patent. A clearance search, often called a freedom to operate search, should be considered.
Once the patent is granted third parties can no longer challenge the patent?
Not true – an action to revoke a patent can be taken at any time up to the last day of the term of the patent. An application for revocation is made on the basis that a patent is invalid. This means showing the invention protected by the patent was not novel or was not inventive on the date of filing the patent application typically by producing prejudicial prior art.
Can I use a Confidentiality Agreement to protect me while I try to commercialise?
Yes you can. Such agreements, also called non-disclosure agreements (“NDAs”) are often used.
Can I sell or license once I file a patent application?
Yes you can.
Any tips?
Keep your idea confidential.
Do some searching to see if your idea is new.
If you decide to file a patent application use a patent attorney – it is not a DIY job.
Set your budget for patent filing in advance and stick to it.
Drop the patent protection if there is no commercial success.
For event more information on patents click here to download a helpful booklet.
Information kindly provided by Cathal Lane, Tomkins www.tomkins.com
