IP Basics: An introduction to patents

Nick: Hello and welcome to this first episode of Gowling WLG's intellectual property podcast where we discuss a range of topics to help you protect your brands, creations and inventions.

I am Nick Cunningham, of counsel in our team here at Gowling and with me today is Megan Wiggin, a colleague in our team.

Today's podcast is an introduction to what patents are, and what they do. Some of the episodes that follow will go into more detail about how patents can be used, and about patent enforcement, but for this episode we are sticking to the basics, including the background to why we have patents in the first place.

So Megan, can you explain what a patent is?

Megan: Yes, so to put it simply, a patent is a public document issued by a patent office, that protects an invention. You can see what one looks like online if you search "patent" at www.gov.uk.

There are patent offices, granting and publishing patents, in around 200 countries worldwide, so that's most countries you can think of. To get a patent you have to apply for it, usually with the help of a patent attorney. Whether your application will be successful depends on requirements that we will discuss in a later episode. In the UK there are about 20,000 applicants for patents each year, about half of which are successful and result in a patent being granted.

A patent describes and protects a technical invention of some kind, in other words how something works. There are other legal rights that protect other creative efforts or investments, for instance copyright (which protects artistic expression), design rights (which protect the shape and appearance of products) and trade marks (which protect a brand name). We call all these rights intellectual property because although they are abstract you can own them and buy them and sell them.

There are patents for clever but small ideas right through to major ground-breaking inventions. The patent protects the invention it describes from being used by anybody except the patent owner, who is usually the inventor. So it's a form of monopoly. If someone else does use the invention, which is usually by making something that includes the invention, then the patent owner can start a legal claim at court to stop them, and to get damages for the unauthorised use.

Alternatively, if a patent owner wants to let someone use their invention then they can give that person a licence. This is a formal agreement that the patent owner will not bring a claim if the other person uses the invention, usually in return for payment, which is called a royalty. In this way the invention can be made available to other people.

Nick: so is this a global system, because I think you mentioned 200 countries?

Megan: yes and no. The patent system is national, so each patent only works in the country where it was issued. So to protect one invention in the UK, China, and the United States you would need a patent in each of those countries. That is called a patent family. But someone in another country, say France or Italy, could still use the invention described in your patent for free.

However since 2023 there is a new form of multi-country patent, called the Unitary Patent. This covers 18 countries within Europe, but not the UK. It makes it easier to get a patent protection across Europe rather than just in a few countries. There is also a new court system to enforce these patents, but we will talk about that in a later episode.

And although most patents are national there are international treaties which help to centralise the way that you apply for patents. So, for instance, in Europe you can make a single application to the European Patent Office for a patent in a whole range of European countries, including the UK.

But let's go back to the beginning, why do we have patents?

Nick: OK well, patents have been around for a very long time. The first one to be granted in the UK was hundreds of years ago, literally in 1449.

The idea of a patent is that if someone protects their invention by publishing details about it in a patent then everyone else will know what the invention is, and after a maximum of 20 years which is how long they last for everyone will be free to use it. This is better for business, and so it's better for society, than if the inventor just kept their invention secret.

It also means that inventors have an opportunity to make money from their inventions during a period of exclusivity, which can encourage inventiveness and encourage investment in research and innovation. So the patent system is really a tool of industrial and economic policy. Some people think that patents are a bad idea, because they restrict what others can do, but just about every country that has any industrial or technological activity uses patents to encourage innovation.

Not all patents are equal, because some inventions are much more valuable than others. For instance, a patent could be for a new cancer drug which would be amazing and very valuable, or it could be just for a new kind of door lock but that would still be inventive so it would still be a patent.

Sometimes a patent is for an invention that seemed like a good idea at the time but that ended up not being commercialised so you see patents for inventions that have never reached the market. In the UK, once a patent has been granted the owner has to pay a fee every 5 years to keep it alive, and the fee goes up each time. And that is meant to encourage owners to abandon patents for inventions that they are not using, so that other people can use the invention if they wish.

Because patents are an economic tool they reflect trends in technological development. For instance, in the 19th century there were lots of patents for new agricultural equipment. Now for instance there are lots of new patents every year for developments in communications, such as the technology that makes mobile phones work, or the technology that compresses and broadcasts video files. And that is because there are huge global markets for the products and services that use these technologies and so the technologies are under constant development to increase their functionality and make better products.

Another area where there is a lot of patenting is in new medicines and medical devices. Medical research goes on globally and there is constant effort and investment to find new treatments for illnesses of all kinds and especially the ones that affect many people. The patent system helps to ensure that if a researcher comes up with a good idea it can be protected in order to make money from it. And then this economic return can be invested in further research to develop further medicines.

So that's some of the background to patents. But Megan, you mentioned that only about half of patent applications in the UK are granted. So why is that?

Megan: That's right. Your application has to meet certain requirements. For a start, the patent has to describe the invention sufficiently clearly that a reader who has normal familiarity with the science involved could use the invention. The patent also has to be for something that is really inventive, and not just an obvious thing to do given what is already known. To test this aspect, the level of knowledge that is assumed is described as being that of the person skilled in the art.

As well as considering those aspects of the application the patent office also has to try to find out whether anyone else has had the same idea before and has put it into the public domain. To check that, the patent office will search its database of other patents and patent applications, and may search other documents it holds too.

These tests are very strict. For instance if the inventor has published their idea themselves before applying for the patent, for instance by presenting a paper at an academic conference, then the application will not be granted.

These tests still apply even after the patent has been granted, and anyone can attack the patent on this basis and argue before a court that the patent should not have been granted in the first place, or in other words that the patent is invalid.

Nick: OK, so let's dig into this and talk a little about infringement and patent validity.

When a patent owner brings a legal claim against someone who they think is using their patented invention, that person, the defendant may argue that what they are doing is not the same as the invention in the patent and that would be an argument of non-infringement.

But they may also argue that the patent is invalid, because if it is invalid they cannot be liable for infringing it, even if they are doing what the patent describes. In order to challenge the validity of the patent a defendant may search out earlier publications which describe similar ideas in order to argue that the patent is obvious and so non-inventive. In which case it should not have been granted and if it should not have been granted then it is invalid.

Or they may be able to find an earlier example of the exact same invention which the patent office did not find when it was considering the application.

That example could have been published anywhere in the world, in any language, just so long as it was available to at least some people. Because a defendant has a strong financial incentive to defend themselves they will put more resource into finding these things than the patent office was able to use when considering the application. So when a patent comes to be tested in court proceedings it is quite common for the court to find that it is invalid.

But to explain all this we're using quite a lot of legal terminology, so Megan perhaps you could pick some of that up?

Megan: Yes, sure. So to make an application for a patent you have to write the patent yourself. That is a very technical job, and so it's usually done by a patent attorney (they used to be called patent agents). They will usually have the scientific knowledge about the area of technology in which the invention has been made, as well as legal training in patent law. The use of language, and sometimes drawings, to describe the invention and claim its special features is a particularly skilled task.

Once the application has been filed at the patent office it will be examined by a patent office examiner who will be looking for certain characteristics that we described earlier, which are :

1. whether it is new and inventive, in other words whether the patent has novelty and is non-obvious, and
2. whether the patent describes the invention sufficiently clearly that a skilled reader could use the invention themselves, which is called sufficiency.

The invention has to be capable of industrial application also. And there are some types of invention that are not patentable because they are for what we term excluded subject matter. This includes mathematical methods and algorithms, rules and methods for doing business and, strictly speaking, computer programs (although if a technical invention is put into effect using a computer then that may still be patentable).

Once the patent office examiner has done their searches for similar earlier material they will send the applicant's patent attorney a search report which shows anything they have found that may anticipate the invention or render it obvious. We call this earlier published material prior art. The patent attorney and examiner will correspond about these and the attorney may satisfy the examiner that these prior art publications are sufficiently different from the patent applied for. However the patent attorney may have to make adjustments to the application to distinguish the patent applied for from any prior art. If the examiner is then satisfied that the invention is patentable then the patent will be granted. We will go into that in a little more detail in a later podcast.

But as we've mentioned, that is not necessarily the end of the story, because an attack on validity is often used as a form of defence to an infringement claim.

Nick: Thanks Megan. So we've been talking about patents in fairly general terms, but let's talk a little more about how a patent is structured and how it works.

A patent has three parts: the specification, the claims, and often some drawings. The front cover shows the patent number, and gives a one line description, details of the inventor and the applicant (who might be someone else, for instance the inventor's employer), and relevant dates, such as when the application was made. If the patent is part of a patent family there will be information about the other family members.

In the first part, the specification the applicant describes the technical background to the invention, including the problem that the invention solves, or the need that it meets, and often what other solutions have been used or attempted. After describing the relevant background the specification then describes the invention itself, first in general terms and then more specifically, including any variations or different versions of the invention. For a mechanical invention this more specific description may refer to drawings, in which all the component parts of the invention are shown, with each one numbered so that the specification can refer to them very precisely.

It's important that everything about the invention is included in the specification, because it is not possible to add anything to the patent once the application has been submitted.

The claims follow the specification and are numbered; there may be just a few or there can be tens of claims. Each claim provides a separate legal basis for a claim of infringement. For a product to infringe it must include every element that is in any one claim. So, to give you an example, if the claim was to a vehicle with wheels that was driven by a petrol engine it would not be infringed by a vehicle that was driven by a petrol engine but which had tracks instead of wheels. However it would be infringed by a vehicle driven by a petrol engine which had tracks and also had wheels.

When people talk about a work around they are referring to the technique of changing something in a potentially infringing product so that not all of the elements in a patent claim are present in the product and so it won't infringe, whilst still trying to keep the potentially infringing product competitive.

A claim that is expressed in quite broad and general terms is likely to be infringed more easily than one that is narrower and has narrower more specific elements in it. So that broad claim provides wider protection. However it is also more likely that there will be prior art that could render that broad claim invalid. So, to make the patent as useful as possible, but also as secure as possible, the patent attorney will draft a broad first claim and then increasingly specific and narrower claims to follow. So if a broad claim turns out to be invalid when it is contested, one of the narrower claims may still remain valid and can still be enforced.

So you may have noticed that we keep coming back to this question of enforcement. And that's because a patent is an exclusionary right, and ultimately the owner may need to bring court proceedings against a person or a company that is infringing the patent who argues that they are doing something different, or that the patent is invalid.

All sorts of situations could arise. Someone who infringes a patent may not know about it, which is why patent owners often mark their products to show they have patent protection. However more sophisticated or larger manufacturers will often do a clearance search against the patent register when developing their own product and so they may already be aware of the patent. And in highly specialised areas like medicines manufacturers may be aware of each others' research efforts. If they have decided to go ahead with their product they will probably think that they have worked around the patent or that they have a good basis for arguing that it is invalid.

Well that brings us to the end of this episode. And if you are interested in learning more then a useful next step would be to try reading an actual patent in a technical area you know something about. To do that just go to www. gov.uk, and search against "patent" and then start a patent search using a keyword within your expertise. In the results look for a patent number beginning GB for which the status is "granted" and then open the documents tab. And the granted patent itself will be described as a B Pub Document. Click on that and you will see the patent.

Megan: And don't forget you can also listen to the next episodes in this podcast series. There are episodes on patent infringement and enforcement, on validity, and on patent transactions such as licences and assignments. So that you very much for listening and look out for those further episodes.