The Patent Box: Introduction to Patents

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This was the opening presentation on a workshop on the patents box organized by Liverpool Inventors Club. The "patents box" is a tax concession to encourage R & D in the UK. This presentation discusses what is meant by a patent, why businesses apply for them, how to apply for them and how much they cost.

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The Patent Box: Introduction to Patents

  1. 1. Liverpool Inventors Club29 April 2013, 16:00 – 18:00Jane Lambert
  2. 2. Programme 16:00 Jane Lambert, Introduction 16:15 Vince Walker, The Patent Box 16:45 Jane Lambert, Alternatives to Patents 17:00 Questions and Discussion 17:30 Refreshments
  3. 3. Introduction What is a patent? Why do businesses want a patent? How do they get a patent? How much does a patent cost?
  4. 4. What is a patent? A patent is a monopoly of a new invention. An invention can be a product or a process. If an invention is a product, a patent confers theexclusive right to make, dispose of, offer to disposeof, use, import or keep the product in the territory forwhich the patent is granted. If an invention is a process, a patent confers theexclusive right to use the process including the rightto dispose of, offer to dispose of, use, import or keepany product obtained directly from that process.
  5. 5. What is a patent? The monopoly can last up to 20 years from the dateupon which the patent is applied for. The monopoly can be revoked or amended at anytime if a court or the issuing patent office decidesthat the patent should never have been granted. The monopoly is enforced by legal proceedings inthe civil courts.
  6. 6. What is a patent? A patent is registered with the issuing patent officeand is set out in a document known as a“specification” which is issued to the patent owner or“patentee”. A specification consists of a description and claims. The description describes the technical problem thatthe invention solves and explains how a “personskilled in the art” (someone who understands thetechnology) can make or use the invention. The specification usually contains drawings ordiagrams.
  7. 7. What is a patent? The claims are a set of numbered paragraphs thatset out the features (or “integers”) of the invention. A patent is said to be infringed if a someone makes aproduct or uses a process that has all the features ofat least one of those claims without the patentee’spermission.
  8. 8. Why do businesses want apatent? The monopoly prevents competitors from making orimporting products or using a process having thefeatures of at least one of the claims for up to 20years. Such competitive advantage allows the patentee torecoup his or her R & D costs and maybe make atidy sum on the side. If a patentee cannot work the invention, he or shecan sell the patent to someone else (as“assignment”) or allow a third party to work it (a“licence”).
  9. 9. Why do businesses want apatent? Many lenders or investors (venture capitalists andangels) will not fund a new business unless newinventions are patented. Some grants are conditional upon patent protectionfor new invention. Since 1 April 2013 there has been the patent box taxincentive.
  10. 10. How to get a patent? Patents are granted by nations or groups of nationsfor defined territories. There is no such thing as a “world” or “EU patent”though there is a Patent Co-operation Treaty (“PCT”)that helps inventors get patent protection in manycountries from a single application and there is aEuropean Patent Convention (“EPC”) that allows theEuropean Patent Office (“EPO”) in Munich to grantpatents known as “European patents” for one ormore European countries simultaneously.
  11. 11. How to get a patent? Patents for the UK are granted by the IntellectualProperty Office (“IPO”) in Newport or the EPO inMunich. European patents that are granted for the UK areknown as “European Patents (UK)”. The requirements for a British patent from the IPOare very much the same as those for a Europeanpatent from the EPO. The invention is new, inventive, useful and not fallwithin a number of excluded categories.
  12. 12. How to get a patent? The specification has to be drawn up with very greatcare and skill. It must be wide enough to protect the invention fromcompetition but if it claims matter that has alreadybeen invented it will be invalid. The professionals who are best placed to preparethe specification are “patent agents” or “patentattorneys”. Most have scientific or technical qualifications and allhave a training in IP law.
  13. 13. How to get a patent? Patent and trade mark agents are regulated by theIP Regulation Board (“IP Reg”). Some patent agents practise as sole practitioners infirms or companies while others are employed by bigcompanies and other organizations. The Chartered Institute of Patent Attorneys websitehas a searchable databases of patent agencies atwww.cipa.org.uk. Patent Information Units and other organizations runpatent clinics staffed by patent agents.
  14. 14. How to get a patent? Patent and trade mark agents are regulated by theIP Regulation Board (“IP Reg”). Some patent agents practise as sole practitioners infirms or companies while others are employed by bigcompanies and other organizations. The Chartered Institute of Patent Attorneys websitehas a searchable databases of patent agencies atwww.cipa.org.uk. Patent Information Units and other organizations runpatent clinics staffed by patent agents.
  15. 15. How much does a patentcost? Costs vary according to the complexity of thespecification and the number of countries for whichpatent protection is sought. However, it would be prudent to budget for:- Patent office costs for searches, examinations etc;- Patent attorneys’ fees for searches, draftingspecifications, correspondence with the patent office andother attorneys and possibly hearings;- Renewal fees which increase with time in somecountries;- Translation costs; and- Enforcement costs or insurance against such costs.
  16. 16. Further InformationJane Lambert4 – 5 Gray’s Inn SquareLondonWC1R 5AHTel 020 7404 5252Jlambert@4-5.co.uk4-5ip.blogspot.co.uk

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