EMIN Enterprise Solutions

East Midlands Incubation Network

EMIN – ProspectIP and EMIN work together to provide training and events on intellectual property and co-refer businesses and individuals requiring support/advice for businesses across the East Midlands

Patents

  • Patents are about functional and technical aspects of products and processes.
  • Most patents are for incremental improvements in known technology - evolution rather than revolution.
  • The technology within a patent does not have to be complex.
  • A patent gives an inventor the right, for a limited period, to stop others from making, using or selling an invention without their permission.
  • The inventor is allowed a short term monopoly in return for allowing the invention to be made public.
  • Patent rights are territorial; a UK patent does not give rights outside the UK. If you want rights to extend outside the UK you must apply for those rights.
  • If the invention is made in a foreign country, the entitlement laws of that country apply.
  • A patent usually lasts 20 years and is kept active by paying annual fees.
  • The patent holder can prevent anyone else from using the technology but it doesn’t give automatic right to use oneself.
  • Some patents, such as those for medicinal products, may be eligible for a further 5 years protection with a Supplementary Protection Certificate.

To be patented, the item:

  • Needs to be novel.
  • Needs to contain an "inventive step".
  • Needs to be non-obvious to "one practised in the art".
  • Needs to be capable of industrial application.
  • Must not be "excluded".
  • For everywhere except the USA, needs to be secret at the time of filing i.e. "not in the public domain"

 

Patents - Ownership

  • The principles surrounding entitlement (the right to apply for and own a patent) are not straightforward.
  • Starting presumption is that the right to apply for and own a patent for an invention belongs to the inventor or inventors.
  • This right can be over-ridden if inventor gives or sells his rights to someone else, or by virtue of law in the country in which the invention is made.
  • If the invention is made in the course of an employee’s duties, the invention belongs to the employer if:
    • it was reasonable to expect an invention to result from the employees duties (for example, if they are employed to carry out research and development), or
    • the employee had a special obligation to further the employer's interests (for example, as a company director).

Disputes can arise over who is really the inventor, or whether the inventor was an employee when the invention was made.

Patent - Uses

  • A patent provides owner with means of stopping others - doesn’t have intrinsic value, still need to license the technology.
  • The patent can be the foundation of a spin-out company or  licenced to other companies. The inventors can share in the royalties from the patents.