PATENTS & PUBLISHING

To ensure that the invention is patentable, the following checklist is a minimum that must be considered:

• Be of patentable subject matter, i.e. a kind of subject-matter that is eligible for patent protection
• Be novel (i.e. at least some aspect of it must be new)
• Be non-obvious (in United States patent law) or involve aninventive step (in European patent law)
• Be useful (in United States patent law) or be susceptible ofindustrial application (in European patent law)

This novelty requirement, to ensure patentability of any invention generated in a research laboratory, makes that the opportunity for obtaining a patent can be lost by publication of the underlying research. No disclosure of an invention should be made available to the public in any way anywhere in the world prior to a patent application being filed. This includes publication in grant applications, journals either as articles or as letters, oral presentation at seminars, or information posted on notice boards on the Internet, abstracts, theses, e-mails, poster displays, exhibitions, open days, or confidential disclosures to many people. Any "enabling" information about an invention which is published in any way will constitute a disclosure and weaken or destroy its patentability. An enabling disclosure is one which provides the means by which someone skilled in the subject could reproduce the work about to be patented.

Patent provisions in the USA are different (they operate a first to invent system, rather than the first to file system), and if the invention has been disclosed, TTO and its patent attorneys will advise if necessary as to whether it is still possible for valid patent protection to be secured in the USA.

Patenting will not prevent you from publishing your work. A patent application can be prepared and filed quite quickly (days, more normally weeks) once a patent attorney has been instructed. As soon as the patent application has been filed there is no restriction on subsequent publication of the invention, subject to the points below.

Following the filing of an initial patent application, no information which is new or additional should be published without first checking with the patent attorney involved in the case. It is possible that the new information could be included in the patent application. If the information needs to be included in the patent application the only way this can be done is by way of a new updated application; and the same requirement for novelty as discussed above will apply in so far as the new application is concerned.

Any new patent applications filed within a year of the filing date of an original patent application for the same invention are entitled to claim the filing date of the original application. After the first year it is no longer possible to claim priority, and any publication of the invention during that year could be used to challenge the validity of any subsequent application filed outside of the first year. This is important in case it becomes necessary for the original application to be abandoned in favor of a new application with a new filing date.

WHAT IS THE PATENTING PROCESS?

Patent applications are drafted by a patent attorney or a patent agent (a non-attorney with a science education licensed to practice). They will ask the inventor(s) to aid them in drafting and review the application before it is filed. Most TTO patent applications are filed first, which establishes an international 'priority date'; this priority date is a critical period to add value to the patent, adding the necessary improvements and claims to the original drafting. In this process it is fundamental the scientist’s implication in all the process. Then, after 12 months, international protection is sought via the Patent Co-operation Treaty (PCT). This enables filing of a single patent application to establish protection in a range of countries. It simplifies international patent filing and prosecution, and defers costs. Over one hundred countries have signed the PCT, and these can all be designated in one patent application. In addition, TTO may file a separate US patent application to protect better this important market. The maximum life of a patent in most countries of the world is 20 years from the initial filing date. Further protection can sometimes be achieved for some products in some markets.

In about one to two years after the PCT filing, the prosecuting patent attorney will receive a written communication, called an Office Action, from the patent office. The Prosecuting Patent Attorney will draft a response to the Office Action. This begins the negotiation process that is at the core of patent prosecution. This process, which can last several years, will end with either the final rejection of the application or its allowance and subsequent issuance of the patent. During this process, input from the inventor(s) is needed to confirm the patent attorney’s understanding of the technical aspects of the invention and/or the prior art cited against the application.

EU Patent Filing Procedure Timescale:

WHAT IS A PATENT?

A patent (ˈpætənt/ or /ˈpeɪtənt/) is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention.

The procedure for granting patents, the requirements placed on the patentee, and the extent of the exclusive rights vary widely between countries according to national laws and international agreements. Typically, however, a patent application must include one or more claims defining the invention which must meet the relevant patent-ability requirements such as novelty and non-obviousness. The exclusive right granted to a patentee in most countries is the right to prevent others from making, using, selling, or distributing the patented invention without permission.

Under the World Trade Organization's (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights, patents should be available in WTO member states for any inventions, in all fields of technology, and the term of protection available should be a minimum of twenty years. In many countries, certain subject areas are excluded from patents, such as business methods and computer programs.

The term patent usually refers to an exclusive right granted to anyone who invents any new, useful, and non-obvious process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof, and claims that right in a formal patent application. The additional qualification utility patent is used in the United States to distinguish it from other types of patents (e.g. design patents) but should not be confused withutility models granted by other countries. Examples of particular species of patents for inventions include biological patents, business method patents,chemical patents and software patents.

Some other types of intellectual property rights are referred to as patents in some jurisdictions: industrial design rights are called design patents in some jurisdictions (they protect the visual design of objects that are not purely utilitarian), plant breeders' rights are sometimes called plant patents, and utility models or Gebrauchsmuster are sometimes called petty patents or innovation patents. This article relates primarily to the patent for an invention, although so-called petty patents and utility models may also be granted for inventions.

Certain grants made by the monarch in pursuance of the royal prerogative were sometimes called letters patent, which was a government notice to the public of a grant of an exclusive right to ownership and possession. These were often grants of a patent-like monopoly and predate the modern origins of the patent system. For other uses of the term patent see notably land patents, which were land grants by early state governments in the USA, and printing patent, a precursor of modern copyright. These meanings reflect the original meaning of letters patent that had a broader scope than current usage.