Info
The British Patent Office recently re-named itself the UK Intellectual Property Office, thinking that the term “patent” was restrictive. The office administers other kinds of IP, such as Trade Marks, Designs and copyright. Personally I think it a mistake. The public loosely refers to “patenting” anything which is monopolised, such as the name of a product and “intellectual property” sounds remote if not pretentious.
Essentially, though, it is quite simple. Every person and every business possesses intellectual property, whether or not they ever have occasion to be aware of it. This is the person’s or business’s reputation. A person’s reputation is protected by the laws of libel and slander. As well as slander a business’s reputation is protected by the law of passing-off, which prevents one trader exploiting the reputation of another by deceiving the public as to the origin of its goods or services.
This protection arises automatically, requiring no registration or other formality. Another automatic protection, very important to writers, artists and musicians, is copyright. This immediately attaches to any original work. However to enforce it the copyright owner would have to be able to persuade a court that he or she owned it and when it had been created. This is why authors and the like are sometimes advised to send their original work to themselves by registered post and not open the envelope. Alternatively one can informally “register” a copyright work at Stationers Hall but of course there is a fee for this.
Another automatic right, in the U.K. at least, is the so-called “unregistered design right” which attaches to industrial products of original shape. This protects only the appearance of the article and not its function and, unlike copyright, is of quite limited duration.
A weakness of copyright is that it protects the expression of ideas but not the ideas themselves. Where the court believes that an author or a musician has had his idea stolen it will be ingenious in trying to protect him, but it is limited by the law. The authors of “The Holy Blood and The Holy Grail” may have thought that Dan Browne stole their ideas and research in publishing “The Da Vinci Code” but the courts did not agree. You can be inspired by the plot of another author’s book and take the ideas it contains provided you express yourself differently.
One of the public misconceptions that Patent Attorneys battle with is that there is property in ideas. There is no way of legally monopolising an idea, although ways of putting it into practice can in some cases be restricted.
Another weakness which the unregistered design right and copyright have in common is that they prevent only copying. They do not prevent another person arriving at exactly the same result if they do it independently. Of course in a court case the judge will look at the likelihood that the defendant was inspired by the pursuer’s work and will not simply believe the defendant’s assertion that he was uninfluenced.
In addition to these automatic rights there are three which can be acquired only by registration at a Patent Office.
Patents
The only way to protect how something works is by patent. Some things (medical treatments, business methods, mental acts, games rules, the presentation of information, computer programs) are excluded from patent protection. Otherwise to be patentable an invention must be new at the time when a Patent Application is filed and it must exhibit inventive step. It must be absolutely new and must not have been disclosed (otherwise than in confidence) even by the inventor himself or herself. The saddest phrase every Patent Attorney hears is “We want to patent this because it is selling well”. Sorry! U.S. law is less hard on inventors in this respect but it is true of practically the whole of the rest of the world.
As to inventive step, this requirement exists to prevent the patenting of mere workshop improvements which require no inventive ingenuity. By erecting fences of trivial patents large concerns could effectively block competition.
Patent philosophy is directly at odds with free capitalism, to which any kind of monopoly is anathema. This paradox has led people such as the Dutch for a time to jettison their patent laws, only to re-introduce them. Millions of patent documents are now published annually world-wide and although voices opposed to the system are raised on a regular basis there is very little prospect that it will be abandoned.
The idea behind patent law is that inventors are rewarded with a monopoly of limited duration in return for their contribution to the public weal. A patent specification is published and after the patent has expired everyone is entitled to make use of the invention.
Patents (in Europe anyway) last for up to 20 years subject to the payment of annuities (which begin quite modestly but increase incrementally – the idea being that if you are not making money from the patent you will drop it and let someone-else have a go!). To get one you need a patent specification, which (a) describes the invention in sufficient detail to enable others to carry it out (once the patent has expired) and (b) defines the scope of the monopoly you are seeking.
It is mainly because of (b) that you need (or would be well advised to obtain) the services of a Patent Attorney. The definition is given in one or more “claims” and the drafting of claims is not a matter for a non-expert. On your behalf the job of the Patent Attorney is to get for you as much as you are entitled to. The job of the Patent Office, when it examines your Application, is to make sure, in the public interest, that you are not claiming too much. At the outset an inventor may be daunted by the fees of a Patent Attorney, but later on, when he can better afford them, it may be impossible to rectify the deficiences of a “home made” Specification. I know of at least one tragic case of the inventor of a highly ingenious lawnmower who, through inexperience, claimed his invention so narrowly that others were able to take it without infringement of his Patent. The judge sympathised but nothing could be done.
Once you have filed a British Patent Application you are free to make the invention public and you have 12 months in which to decide whether you want patent protection beyond the United Kingdom, because in nearly every other jurisdiction in the world you can claim your British filing date if you file there within a year. The options for seeking overseas patent protection are very wide and, of course, expensive but for 12 months you do not have to be concerned about them.
Trade Marks
A Registered Trade Mark is a sign used in commerce to distinguish the goods or services of one organisation from those of another. It may be one or more words, a logo or image, a combination of the two, a musical jingle – even a smell!
Because its function is to distinguish it should be distinctive. One of the mistakes of the advertising industry is to think that a directly descriptive Mark is a good one. It isn’t. If your Mark is descriptive it may be impossible to prevent another trader from using it. Of course you cannot register “Leather” for shoes or “Good” for anything at all!
Latterly the Trade Marks Registry has been allowing Marks which it would once have refused. However achieving registration of a “weak” Mark should not provide a sense of security as it might not be upheld in court.
As a guiding principle, you cannot use the Register of Trade Marks to monopolise the English language. The best Marks are “invented words” which no-one else could legitimately want to use. Kodak for example. Perhaps the best are invented words which nevertheless manage to convey the character or quality of the goods – what one judge called “a covert but skilful allusion”. A friend of mine invented a combined tray and table and called it a “TRABLE”®.
Registered Designs
Subject to a few exceptions the original shape of any industrial product can be registered, thus providing a true monopoly in that shape for up to 25 years (subject to the payment of renewal fees at intervals of 5 years). However only the appearance of the article will be protected. Others will be perfectly entitled to make products which function in the same way provided they look different. To protect how something works you need a Patent (if you can get one).
Trade Mark and Design Registrations can now be obtained which extend to the whole of the European Union (making a U.K. Registration redundant). The granting authority is OHIM located in Alicante, Spain. There is also a European Patent Office (headquarters in Munich, Germany) but the European Patent which it grants is not unitary but effectively a bundle of national Patents which have to be maintained individually. All countries of the European Union can be designated in a European Patent Application but also additional ones such as Switzerland and Turkey.
It is not advisable to file a first Patent Application at the European Patent Office not merely because it is much more expensive than a British one but because British law requires British residents to file first in Britain in case the invention has national security implications. Alternatively a British resident can obtain permission to file first abroad but why bother? When deciding whether to incur the cost of a European Patent Application you may have the benefit of the official novelty search of the British Patent Office (sorry – UK IPO) which is one of the best and certainly the cheapest available.
People experienced in a given field often believe that they know everything about the history of that industry and therefore whether a given proposal is novel or not. The sad fact is that many good ideas never get off the ground. An invention may fail for any number of reasons after a Patent Specification has been published. The inventor may run out of money or the invention may be before its time. Nevertheless that Patent Specification remains in the public domain to invalidate any attempt to re-patent the same invention, or even a similar one if the earlier publication makes it “obvious”. The hovercraft was invented by a Swedish engineer before the invention of the internal combustion engine made it a practical proposition. The Swede’s publication made it very difficult to obtain worthwhile patent protection for the hovercraft. Similarly the patents for the “Workmate”® were very nearly invalidated by the previous publication of a book-binding press although the originator of the latter had no idea of using it as a general purpose work-bench.
Given the necessary “scintilla” of inventive step whether or not you will be granted a British Patent (and whether or not it will be worthwhile applying abroad) will almost entirely be determined by the result of the official novelty search so that it is very important to obtain this as early as possible (and certainly within the 12 months “Convention period”). The chief job of your Patent Attorney at this stage is to evaluate the search result and advise whether or not it is worthwhile to proceed. The claims you have originally filed will not take into account prior publications of which you were unaware and the Patent Attorney will advise whether amendment is possible which will result in a Patent of commercial value to you.
