Did you know…a patent can do more than protect your innovation?

Did you know…that simply adding something to, or changing an element of, a patented invention does not necessarily result in something that does not infringe a patent owner’s rights?  Even if your changed or improved product is patentable in its own right, and even if you secure your own patent for it, this does not give you an automatic right to commercialise your innovation.  BUT Did you also know that if you do have a patent for your improved product, there is a little-known provision in the law that states that the owner of the patent for the original product can be forced to give you a licence (on fair and reasonable terms) to allow you to commercialise your innovation?  Read on to find out more…

The basics of patent law are reasonably widely known, to a greater or lesser extent.  Patents are intended to protect technical innovation, i.e., and in very general terms,  inventions that have at least one novel feature (relative to what is already known) that provides some technical advantage. That advantage need not be great, just ‘technical’ in nature (rather than, for example, purely aesthetic).  

Again in general terms, a patent, once granted, allows the owner to prevent third parties from commercialising anything that is covered within the scope of protection of the patent.  However, this is not the same as having the right to do it themselves and, in fact, a patent does not give its owner an automatic right to commercialise the technology covered by the patent.  That right is, instead, governed by intellectual property rights held by third parties.  Put simply, if you have a granted patent for a product having features A, B and C in combination (with C being the ‘technical advance’ or improvement), this does not give you an automatic right to make and sell that product if a third party has a live patent covering the product having features A and B; and, in order to commercialise your own innovation, you would need a licence from the third party patent owner.  That would be true whether you had a patent or not.

So what is the point in having a granted patent at all?

In these circumstances, there are two (or even three) distinct advantages to having a granted patent for your improved product.

1. In the UK, if a refusal by a patent owner to grant a licence on fair and reasonable terms prevents another patented invention from being commercialised, then the owner of the later patent can apply to the UK Intellectual Property Office for a Compulsory Licence order and they can set the terms of the licence according to accepted practice.  So, in the above scenario, if you have approached the third party patent owner for a licence to commercialise your improved product, and they have refused (or offered a licence on unreasonable terms), then you can apply to the UK Intellectual Property Office for a Compulsory Licence order.  If you did not have your own granted patent, you would not be able to do that.  Once you have a licence, the third party patent can act to provide further protection for your own product. 
2. In these circumstances, it is usually unavoidable that the third party patent owner would be granted a licence to commercialise your improved product (again, on fair and reasonable terms), but you can still prevent others from commercialising the invention covered by your patent.  And, being able to mark your products with a patent application number (‘patent pending’), can act as a very real and effective deterrent to others who may otherwise consider entering the market with a similar product (and prevention is definitely preferable to the expense and inconvenience of having to take legal action against an infringer).  Furthermore, your patent can remain in force longer than the earlier patent and, once the earlier patent has expired, your patent can continue in force up to a maximum of 20 years from the patent application filing date.  In other words, the protection for your improved product can extend well beyond that which is in place for the original product (A + B), continuing to enable you to prevent third parties from commercialising a product having features A, B and C in combination.
3. The Patent Box tax provisions can be used to reduce corporation tax on profits from your patented product.

So, even if you are simply improving on a known design, there are very real advantages to filing a patent application and, ultimately, securing a granted patent for your innovation.

If you have any questions about this, or any other IP matter, please do contact us: tel: 07714797135; emailvicki.strachan@strachanip.co.uk