27 May 2010
A patent is a 20-year monopoly of a new invention. The monopoly is granted in exchange for disclosing the invention to the public (see Jane Lambert “The Inventor’s Bargain” JD Supra, 21 Dec 2008).
An invention can be a product or a process. In the Patents Act 1977 the following are excluded from the statutory definition of invention:
“(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
(d) the presentation of information.”
However, the Act continues “the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.” The words in italics have given rise to considerable litigation over the patentability of software implemented and business method inventions.
Extent of the Monopoly
If the invention is a product, the monopoly is infringed by making, disposing of, using, importing or keeping the product without the consent of the proprietor (“the patentee“). If the invention is a process it is infringed by offering it for use in the UK with the knowledge or in circumstances where it should be obvious that such use without the patentee’s consent would infringe the patent. A patent for a process is also infringed by disposing of, offer to dispose of, use, importing or keeping any product obtained directly by means of that process.
European Patent Convention
HM government is party to the European Patent Convention (“EPC”). This Convention establishes a European Patent Office (“EPO”) as part of a European Patent Organization with the task of granting European patents. A European patent may be granted for any one or more of the contracting states. The European Patent Organization is not an EU institution and the EPC is not EU law though all EU member states are party to the EPC. The European Commission has proposed an EU patent within the framework of the EPC.
The EPC did not abolish or supersede national patents. There continue to exist national patent offices in each of the contracting states which continue to grant patents (known as “national patents”) for their respective territories. National patent law does not conflict with the EPC but complements it. For instance, art. 64 (1) EPC provides that in each contracting state a European patent confers on the patentee the same rights as would be conferred by a national patent in that state.
Applying for a Patent
An inventor (or someone who derives the right to apply for a patent inventions through employing or some other arrangement with the inventor) who desires patent protection in the UK for his or her invention may apply to the Intellectual Property Office (“IPO”) for a UK patent or to the EPO for a European patent designating the UK as one of the countries for the grant (“European patent (UK)“). A considerable volume of practical information about to apply for a UK patent is available on the IPO and EPO websites. It is stressed that an application for a patent is not an easy matter and that a lot can go wrong at various stages. It is prudent to consult a chartered patent agent whose professional body, the Chartered Institute of Patent Attorneys (“CIPA“), has an online searchable database of members on its website.
In addition to the EPC, HMG is party to the Paris Convention for the Protection of Industrial Property (“Paris Convention”), which provides for protection on a reciprocal basis of the inventions, trade marks, industrial designs and other intellectual property of the nationals of contracting countries, and the Patent Co-operation Treaty (“PCT”), which facilitates simultaneous patent applications to more than one patent office (“international applications“). HMG is also party to the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”), which requires among other things members of the World Trade Organization to harmonize their national patent laws.
The monopolies granted by European as well as national patents are enforced by civil proceedings before national courts and tribunals. In England and Wales there is a special court for patents and registered designs disputes within the Chancery Division with specialist judges and practices known as the Patents Court. S. 287 of the Copyright Designs and Patents Act 1988 enables the Lord Chancellor to confer special patents and designs jurisdiction on any county court thereby designating it as “patents county court”. So far, he has conferred that jurisdiction on the Central London County Court which is known as the “Patents County Court”. The Patents Court and Patents County Court are the only courts in England and Wales in which patent proceedings may be brought. Certain proceedings (including infringement claims with the parties’ consent provided no injunction is sought) may also be brought in the Patent Office.
It is not always easy to obtain a patent. An application is subject to examination by the European or UK Patent Office which may uncover a prior invention or other indication that the invention is not new, that it is obvious or otherwise not patentable. If the application survives examination, it is published which gives everybody in the world an opportunity to show why a patent should not be granted. Even if a patent is granted it may be subject to revocation. The monopoly granted by the patent is subject to national and EC competition law. Compulsory licences may be granted in some circumstances. A patent monopoly is defined by what are known as “the claims” which are not always easy to draft. If drawn too wide they may be invalid. If too narrow, they fail to protect the invention. A patent may be infringed even in the absence of any intention to do so or even knowledge of the patent’s existence. A patentee on the other hand has to be careful how he alerts infringers or the public to his rights to avoid liability for groundless threats. If he brings proceedings for infringement he almost invariable provokes a counterclaim for revocation. Patent proceedings are expensive and in the EPO they can take a long time to resolve.