In last week’s blog, I talked about some of the benefits of having a UK patent. So, now that you know why you should consider patenting your innovation, let’s look at what can be patented in the UK.
In general (and with a few exceptions I don’t plan to go into in this blog), a patent can be obtained for a product or process that is ‘novel’ and involves a so-called ‘inventive step’. In real terms, this means that your product or process must have at least one novel feature that results in some technical advantage. And, when I say technical, I mean in what it does or how it does it, rather than how it looks.
Novelty
Novelty is assessed against everything that has ever been published or made available to the public (anywhere in the world) before the filing date of your patent application. The UK Intellectual Property Office performs a worldwide patentability search shortly after your UK patent application has been filed, and issues a search report listing any relevant publications they have found. At that point in the process, you (and your patent attorney if you’re using one) can assess your invention against these documents to a) identify the difference(s) between your invention and those described in the listed documents, b) identify the advantage(s) associated with that/those difference(s), and c) decide which of those advantages is most commercially valuable to you (i.e. the one most closely linked with the business USP of the product or process. It is these elements that will guide the rest of the patent process and give you a better idea of whether or not you are likely to get a patent granted, and how broad or narrow the patent protection will be.
You can, if you wish, test the novelty of your invention before you file a patent application by having a pre-filing patentability search performed. Whilst not infallible, this type of search can be hugely beneficial as it can help you to decide, early on, whether or not it is worth trying to pursue patent protection at all and, if so, the elements of your invention it will focus on.
Inventive Step
This can be slightly more difficult to assess because it can be a bit subjective, even though it isn’t supposed to be. The colloquial term is “obviousness”, but I don’t like this term because it can not only be rather derogatory to dismiss something as “obvious”, but it is also misleading because its meaning in the legal world is different to that of its every day usage.
It is all too easy to dismiss something as “obvious” after it has been invented, but inventive step is not assessed with the benefit of hindsight: the Examiner at the UK Intellectual Property Office has to look at the invention from the perspective before it was invented to decide if there has been an inventive step made, and a good question to ask from this viewpoint is “given the advantage(s) of the innovation, if it is ‘obvious’, why hasn’t it been done before?”
A scintilla of inventiveness…
Another common mistake is to think that because your invention only has relatively small difference(s) in relation to what is already known, that, it isn’t inventive enough. If a difference is just a simple workshop modification of something that is already known, that doesn’t change the way it works or offer any real advantages, then it may not be patentable. However, beyond that, the limitation ends. A judge (during a long-ago court case) put it very eloquently when he said “a scintilla of inventiveness” can be sufficient, and that is worth bearing in mind.
Suffice it to say that if your invention is somehow better than what is already known, in terms of what it does and/or how it does it, or it solves a problem that nobody else has solved before, then it might very well be patentable. And, if it would be commercially valuable to your business to stop others from being able to make, sell or import your product or use your process, then it is certainly worth discussing it with a patent attorney before dismissing your innovation as unpatentable.
But remember…
You must not disclose your invention to anyone, except in confidence (under NDA), unless or until your UK patent application has been filed.
Need Help?
If you have any questions about this, or any other, IP matter, please do book a free initial consultation by emailing vicki.strachan@strachanip.co.uk or visit our website at https://strachanip.co.uk/contact/
