Grab it! – The Art of Invention Capture

Protect your innovationsOK… unless your invention is self-propelled or attached to something else that is, it’s unlikely that things are going to get that dramatic… but invention capture can still have a major impact on your business.

What is invention capture?

Invention capture is the process by which an organisation uses a structured approach to identify and collate the innovations generated by their staff.

The majority of patented inventions are for small improvements to existing technologies or processes.  With Intellectual Property increasingly being recognised as a vital part of business strategy, identifying and protecting innovations that may give a commercial advantage is essential.

The invention capture process is a collaboration between the inventors, managers and patent practitioners.  Larger organisations may have an in-house patent department who will facilitate the process.

For organisations without in-house patent practitioners, regular meetings with their patent attorneys can help them to identify new innovations which could be patentable.  The patent attorneys can then also work with the organisation’s management team to decide which of these patentable inventions should proceed to patent applications.

What is the process?

  1. Educate

The initial stage of the process will be to educate the inventors and their managers about what they should be aware of and be looking for while doing research and development.

  1. Brainstorm

The patent practitioner will organise and moderate a brainstorm session with the inventors and managers to talk about recent research and development work to identify new improvements and discoveries.  You may find that you identify a small development which may have enormous significance to the business.

  1. Document

The patent practitioner will create draft invention capture documents for each invention based on notes and discussions at the brainstorming session.  The invention capture document will contain details of the invention as well as indications of the level of importance the company.  Once the content of the invention capture document is agreed, the document is signed and dated.

The contents of the invention capture document can then form the basis of a patent application.  A patent application can be prosecuted straight away or the management team may decide to defer an application, or decide that they do not wish to proceed with a patent application.

As always, it is essential to ensure that the invention is not publicly disclosed prior to submitting a patent application as this would prevent the invention being patentable.

  1. Monitor

In addition to identifying the inventions generated by your own business it is advisable to stay informed about the patenting activities of your competitors and others in the fields of technology relevant to your business.  Your patent practitioner can set up alerts with the US Patent Office, WIPO or EUIPO which will flag up new patent applications which may be of interest to you.

 

If you would like to discuss setting up robust invention capture procedures please contact us for more information.

 

A (very) rough guide to patenting your invention in the UK

What is a patent?

A patent is an exclusive right that is granted by a country’s patent office to work an invention in that country for a period of up to 20 years.

A UK patent can be obtained by filing an application directly at the UK patent office or by filing a European patent application.

What can be patented?

In the UK and Europe, an invention (either product or process) that is technical in nature can be patented.

Discoveries, scientific theories and mathematic methods are not considered to be inventions per se, but a practical application of these may be patentable.

Presented information, aesthetic creations, methods for performing mental acts, playing games or doing business, and computer programs, are also not considered to be inventions per se, but they may still have technical elements to them that may be patented.

Can I patent my product/process?

Products/processes can be patented if they are new and inventive.

To be new a product/process cannot have been publically described prior to the filing date of the patent application either by you or by anyone else.

To be inventive the product/process must have new features that would not have been obvious to use to someone in the relevant technical field of the invention.

How do I get patent rights?

Talk to us about your invention. We can advise on patentability, prepare and file a patent application, and prosecute the patent application through to grant.

Alternatively you may acquire or exclusively licence someone else’s patent. We can assist with due diligence in connection with this.

What is involved in the patent application process?

We can write a patent application and send it to you for approval. Once approved, the application can initially be filed at the UK patent office. On request, the UK patent office will search databases for existing documents that describe your invention. Then, on request, the UK patent office will examine your application to see if it meets the requirements for patentability. If the requirements are met, a patent will be granted for your invention.

How long does it take?

It typically takes around 3-4 years to obtain a direct UK patent.

Download a copy of our UK Patent Application Timeline

UK-Patent-flow-chart-thmb

Click to download a copy of our UK Patent Application Timeline

What does it cost?

It depends on the complexity of the invention and the nature of any objections that may be raised by the patent office.  It typically costs £4000-£6000 + VAT to obtain a UK patent. Annual renewal fees of a few hundred pounds each are then payable after grant.

Want to find out more?

If you would like to discuss your options in more details please contact us.

BREXIT – what happens to UK and EU Intellectual Property Rights…?

IP rights and BREXITWell in reality, it will be business as usual for at least the next 2 years.  During that period the Chartered Institute of Patent Attorneys (CIPA) and the Institute of Trade Mark Attorneys (ITMA) will work with the UK Government to negotiate for the best outcome for intellectual property rights holders.

Patents

  • NO CHANGE
  • The European patent system is independent of the EU, and so Brexit will have no effect on European patents or applications. The UK’s membership of the World International Property Organisation (WIPO) will also be unaffected.
  • UK patent attorneys will still be able to prosecute European patent applications for all UK and overseas clients.
  • European patent applicants will not lose any rights and patents already obtained via the European patent office are unaffected.
  • UK patent attorneys can still prosecute Patent Cooperation Treaty (PCT) patent applications – which provide protection in the applicant’s chosen countries – for all UK and overseas clients.
  • PCT patent applicants will not lose any rights.

 

Trade Marks & Registered EU Designs

  • NO IMMEDIATE CHANGES… There will be a negotiation period of at least two years before the UK leaves the EU – and that period will only start once the UK officially notifies the EU of its intention to leave, which may not happen straight away.
  • European Union Trade Marks (EUTMs) and Registered Community Designs (RCDs) will therefore still give protection in the UK until at least June 2018.
  • The Institute of Trade Mark Attorneys (ITMA), the UK’s Intellectual Property Office and the Minister for Intellectual Property will work to ensure the best possible outcome for owners of intellectual property rights and for practitioners in the UK.
  • They will also work to ensure the transition of all EU-based trade mark and design rights to UK-based protection to be simple and cost effective.

For further information, or to discuss the implications of Brexit on your UK and European Intellectual Property Rights, please contact James Sanderson or Jerry Walder on 01206 571187.

Fast-track your patent application with a quick(er) trip through the Green Channel

With a UK patent application typically taking 4 – 5 years to reach grant, the patent process can seem like a very slow beast indeed.

If your invention has green credentials there is an option that may allow you to speed the process along a little.

UK IPO Green Channel

Use the UK IPO Green Channel for faster processing of your patent application

If your invention has some environmental benefit, applicants can make a written submission to the IPO requesting accelerated processing of their application.

The Green Channel option is not only available to the more obvious green inventions, such as solar panels or wind turbines – any invention that can reasonably be claimed to have an environmental benefit may be eligible.

What does it cost?

Nothing! There is no fee for using the Green Channel.

How do I it do it?

Requests must be made in writing by the applicant with details of:

  1. How their application is environmentally-friendly.
  2. Which actions they wish to accelerate:-search, examination, combined search and examination, and/or publication.

If you think your invention might qualify and would like advice on how to write the application letter please contact us at sandco@sandersons.co.uk.

For more information go to https://www.gov.uk/patents-accelerated-processing.

Protecting your Intellectual Property when trading overseas

Protect your IP when you trade overseasWhen you are considering trading internationally you need to make sure that you are protected against your invention being copied or your name, logo or brand being used inappropriately.

Protecting your intellectual property through the use of patents, trade marks and registered design rights defends you against other companies or individuals who may try to copy your goods or pass themselves off as your company.

Do your homework

It is important when looking to move into foreign markets to ensure that you will not be inadvertently infringing the existing rights of other companies within those markets. It is essential to do your research with robust intellectual property searches before embarking on costly and time consuming sales and marketing programmes.

Do I have rights in other countries?

Intellectual property rights are generally territorial. A granted patent or trade mark / design registration in the UK does not give you automatic rights for protection in another country.  You must have applied for and been granted a patent, trade mark or design registration in a particular country in order to have those rights in that country.

Protection within the EU

Having a UK patent, trade mark or registered design does not give you automatic protection within other EU countries. You can file individual applications in each country you would like to seek protection.  Alternatively, you can apply for a European patent or European Community trade mark or design registration.

A European patent application is a single application which if successful will result in a single European patent. To have effect, the granted European patent must then be validated in each European country where protection is required.  This incurs separate fees for each country.

A European Community trade mark or design registration covers all 29 countries of the EU.

Protecting your inventions outside the EU:

Separate patent applications can be filed in each country where you would like to seek protection. Alternatively you can file an International patent application.

There is no such thing as an International patent – only an International application. At a particular point in the process an International application must be converted into separate national applications in the countries of interest and the cost at this stage is comparable to filing separate national patent applications.  Each separate national application then proceeds in the same way as a standard national application.

An International application is ultimately more expensive than filing separate national applications but it gives you more time to decide on the particular countries where you wish to seek protection and also delays expenditure.

Protecting your trade marks outside the EU:

There is no such thing as a single worldwide trade mark registration.  There is an International trade mark application procedure known as the Madrid Protocol which allows a single application to cover a large number of different countries.

Under the Madrid Protocol there must be a ‘home’ trade mark registration or application, for example in the UK or the EU.  As such, you must first file a UK or EU application before you can use the Madrid Protocol system to cover other states.

Protecting your designs outside the EU:

Most countries require separate individual design applications to be filed in that country in order to obtain protection. There is no such thing as a single worldwide or ‘global’ design registration.  There is an International design application procedure known as the Hague Agreement but at present this covers only a limited number of countries.

Do I have to apply straight away in every country?

From the filing date of a first patent application, there begins a 12-month priority period within which further patent applications may be filed in other countries.  These further patent applications may then take the priority of the initial filing date which means that they will be considered as having been filed on the same date as the first application.

Following the filing of a first trade mark or design application there is a 6-month priority period within which design/trade mark applications (for the same design/trade mark) may be filed in other countries.  Those applications can then claim the initial “priority” date of the first application.

The priority period enables you to spread the costs and also allows you to assess the commercial viability of your product before deciding where you wish to seek protection.

Take some advice

Obtaining the most appropriate IP rights for you can be complicated. While much information and application forms are available through the UK Intellectual Property Office and the European registry (OHIM), a qualified patent or trade mark attorney will be able help you to develop an effective strategy for your IP protection and guide you through the process.

Sanderson & Co offer a free half hour consultation at our office in Colchester or London if you would like to discuss your options for international IP protection.

Caroline Ward

Caroline Ward

Contact us to discuss your options.

Caroline Ward
Sanderson & Co
tel: 01206 571187
sandco@sandersons.co.uk
www.sandersons.co.uk

How does IP help small companies grow?

Some companies think that investing in Intellectual Property isn’t right for them…. it’s something that the big boys do…  Wrong!  IP isn’t just for large companies with deep pockets.  UK SME’s file over 10x as many patents and trade mark applications as big companies.   The time and money that you have invested in your innovation and business should be protected by IP rights.

  • IP encourages investment in your company
  • IP protects against unsafe and counterfeit goods
  • Inventions that are protected by patents are valuable business assets
  • Registering your trade mark allows you to safely extend its business use
  • IP protects and supports innovation
  • Innovation promotes business growth
  • Profits from patented inventions attract reduced UK corporation tax through the Patent Box so you get to keep more of your profits to re-invest in business growth

Below is a short film from Ideas Matter – www.ideasmatter.com

IP By Numbers: Video from Ideas Matter on Vimeo

Contact Sanderson & Co to talk about how you can make the best use of IP rights.

What does the Intellectual Property Act 2014 mean for you?

The importance of IP registrationThe Intellectual Property Act 2014 (the Act) will start to come into force on 1st October 2014. The Act seeks to modernise and simplify Intellectual Property law and introduces a number of changes, particularly to UK design law and practice largely as a result of the 2011 Hargreaves Independent Review of IP & Growth.

We have outlined some of the key facts below:

Intentional copying is now a criminal offence

One of the main changes relating to design law is that intentional copying of a UK or European Community registered design will now be a criminal offence. The “infringer” must be aware or have reasonable grounds to suppose that the design in question is registered and so there is an increased importance to indicate the existence of IP rights on products. The maximum penalty for infringement will be 10 years imprisonment or a fine.

The designer owns the rights for commissioned works unless by prior written agreement

Another important change which seeks to bring UK design law into harmony with European Community design law relates to commissioned designs and ownership. The change ensures that, unless there is an agreement to the contrary in place, the actual designer will be the owner of a design created under commission rather than the commissioner. It is therefore important to make sure that written agreements are in place before a design is commissioned to establish clear ownership.

New Design Opinion Service from IPO

Several further design law changes include a new Design Opinion Service operated by the Intellectual Property Office and the implementation of defences to infringement of a UK unregistered design.

Make sure people know your rights exist

In order to recover damages in patent and design infringements it is important that enough information is provided so that an infringing party cannot claim to be unaware that a patent or registered exists. To ensure that an infringing party is aware of existing rights, the patent or registration numbers and the country where the right exists must also be indicated.

In this regard, the Act now stipulates that it is sufficient to provide a web address on the product allowing the relevant information to be accessed online.

Act paves the way for implementation of Unitary Patent Court Agreement

So far as patent law is concerned the Act will enable the UK to implement to Unitary Patent Court Agreement (UPCA) for the introduction of a unitary patent covering all member states of the European Union. The implementation of a unitary patent in due course is likely to have a significant positive impact on the costs and procedural efficiency of obtaining protection throughout the EU.

Further patent law changes include expansion of the IPO Patent Opinion Service to consider a range of validity issues not solely limited to novelty and inventiveness and the power for the Comptroller of patents to revoke a patent on his own initiative if an Opinion finds a patent to lack novelty or inventiveness.

For more information concerning the IP act 2014 and how this could have an impact on your business please contact us.

 

Author: Caroline Ward

Caroline Ward