The Liverpool Inventors Club held a meeting on April 29, 2013, focusing on patents, their importance for businesses, and the process of obtaining them. Key topics included the nature of patents, their duration and enforcement, as well as the costs associated and the necessity for professional assistance in drafting specifications. The session concluded with a discussion on patent strategies and available tax incentives post-April 2013.

1. Liverpool Inventors Club
29 April 2013, 16:00 – 18:00
Jane Lambert

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. Introduction
 What is a patent?
 Why do businesses want a patent?
 How do they get a patent?
 How much does a patent cost?

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 the
exclusive right to make, dispose of, offer to dispose
of, use, import or keep the product in the territory for
which the patent is granted.
 If an invention is a process, a patent confers the
exclusive right to use the process including the right
to dispose of, offer to dispose of, use, import or keep
any product obtained directly from that process.

5. What is a patent?
 The monopoly can last up to 20 years from the date
upon which the patent is applied for.
 The monopoly can be revoked or amended at any
time if a court or the issuing patent office decides
that the patent should never have been granted.
 The monopoly is enforced by legal proceedings in
the civil courts.

6. What is a patent?
 A patent is registered with the issuing patent office
and 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 that
the invention solves and explains how a “person
skilled in the art” (someone who understands the
technology) can make or use the invention.
 The specification usually contains drawings or
diagrams.

7. What is a patent?
 The claims are a set of numbered paragraphs that
set out the features (or “integers”) of the invention.
 A patent is said to be infringed if a someone makes a
product or uses a process that has all the features of
at least one of those claims without the patentee’s
permission.

8. Why do businesses want a
patent?
 The monopoly prevents competitors from making or
importing products or using a process having the
features of at least one of the claims for up to 20
years.
 Such competitive advantage allows the patentee to
recoup his or her R & D costs and maybe make a
tidy sum on the side.
 If a patentee cannot work the invention, he or she
can sell the patent to someone else (as
“assignment”) or allow a third party to work it (a
“licence”).

9. Why do businesses want a
patent?
 Many lenders or investors (venture capitalists and
angels) will not fund a new business unless new
inventions are patented.
 Some grants are conditional upon patent protection
for new invention.
 Since 1 April 2013 there has been the patent box tax
incentive.

10. How to get a patent?
 Patents are granted by nations or groups of nations
for 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 many
countries from a single application and there is a
European Patent Convention (“EPC”) that allows the
European Patent Office (“EPO”) in Munich to grant
patents known as “European patents” for one or
more European countries simultaneously.

11. How to get a patent?
 Patents for the UK are granted by the Intellectual
Property Office (“IPO”) in Newport or the EPO in
Munich.
 European patents that are granted for the UK are
known as “European Patents (UK)”.
 The requirements for a British patent from the IPO
are very much the same as those for a European
patent from the EPO.
 The invention is new, inventive, useful and not fall
within a number of excluded categories.

12. How to get a patent?
 The specification has to be drawn up with very great
care and skill.
 It must be wide enough to protect the invention from
competition but if it claims matter that has already
been invented it will be invalid.
 The professionals who are best placed to prepare
the specification are “patent agents” or “patent
attorneys”.
 Most have scientific or technical qualifications and all
have a training in IP law.

13. How to get a patent?
 Patent and trade mark agents are regulated by the
IP Regulation Board (“IP Reg”).
 Some patent agents practise as sole practitioners in
firms or companies while others are employed by big
companies and other organizations.
 The Chartered Institute of Patent Attorneys website
has a searchable databases of patent agencies at
www.cipa.org.uk.
 Patent Information Units and other organizations run
patent clinics staffed by patent agents.

14. How to get a patent?
 Patent and trade mark agents are regulated by the
IP Regulation Board (“IP Reg”).
 Some patent agents practise as sole practitioners in
firms or companies while others are employed by big
companies and other organizations.
 The Chartered Institute of Patent Attorneys website
has a searchable databases of patent agencies at
www.cipa.org.uk.
 Patent Information Units and other organizations run
patent clinics staffed by patent agents.

15. How much does a patent
cost?
 Costs vary according to the complexity of the
specification and the number of countries for which
patent protection is sought.
 However, it would be prudent to budget for:
- Patent office costs for searches, examinations etc;
- Patent attorneys’ fees for searches, drafting
specifications, correspondence with the patent office and
other attorneys and possibly hearings;
- Renewal fees which increase with time in some
countries;
- Translation costs; and
- Enforcement costs or insurance against such costs.

16. Further Information
Jane Lambert
4 – 5 Gray’s Inn Square
London
WC1R 5AH
Tel 020 7404 5252
Jlambert@4-5.co.uk
4-5ip.blogspot.co.uk