1) What exactly is a patent, what is the idea behind them and what is its primary purpose?   

A patent is a contract between the state and the patent applicant where details are revealed of how a new invention works in return for protection.

Protection has to be requested in any foreign countries within 12 months of the initial “priority” filing, otherwise protection is limited to the home country. The fact that it has been patented in that country (or perhaps only revealed in say a trade show, or in a newspaper) means that it cannot be patented elsewhere, as it is already known. It is vital that the idea is kept secret except in confidential discussions until the priority filing has been made.

Each patent office decides whether or not to grant a patent. Most check to see if the idea is new, but some small countries simply register it if fees are paid. The patent specification for the grant contains a description of the invention plus (if relevant) drawings, circuit diagrams etc., enough for the person skilled in the art to understand how to reproduce it. There are also “claims” outlining the actual monopoly allowed.

Strictly speaking a patent does not give the applicant the right to use the invention, but rather to stop others to use it. This is because some inventions will only work if combined with a patented product. Suppose the pencil didn’t exist, and then A patents it. B then patents the idea of a pencil with an eraser on the end. B cannot manufacture it, as the pencil is already patented. Nor can A use the idea of the eraser at the end. What often happens is negotiations follow, so that A buys B out, or perhaps they agree that they will both manufacture pencils with erasers.

Patents last for a maximum of 20 years (there are exceptions for pharmaceuticals and plant protection products in the UK) provided that renewal fees are paid annually (countries vary in this). After that anyone can use it. They already were able to study the invention at 18 months from the priority date, when the details in the application are published on databases such as the free database at http://gb.espacenet.com/ . Some grants are also available on the Web (and may vary from the application, especially in the claims that were allowed).

2) How unique does a business idea/inventions have to be in order to gain this level of protection?

This is a hard question, as it is very subjective. What is new to one person is obvious and therefore not allowable to someone else. Only a small number of inventions are totally new, and most improve in some way an existing idea. It may be cheaper, or more effective, or simply a different way of doing something. It’s back to that person skilled in the art in the last question, who is an (imaginary !) engineer who knows everything in the specific trade, but has no inventive ability, is supposed to judge things. If something is new in that trade then that can be allowed. Hence something used in hairdressing that could be used in say shoemaking could be patented for that specific purpose.

Of course, everyone can argue about what that engineer would agree to. In cases where someone infringes a granted patent, it is normal to try to find any kind of “prior art” showing that the invention wasn’t really new in the first place as a defence.

3) What are the first steps for businesses looking to gain a patent?

A search to see if the idea has been done before is highly advisable. Some companies spend say £40,000 tooling up before thinking of spending a few hundred pounds checking if the invention is actually new.

Using a patent attorney to write the patent specification is also strongly recommended, as it is very easy to write a poor document for a new invention that does not give you much protection. The attorneys know all the tricks, and they also argue your case if objections are encountered from a patent office.

Some companies require finance and therefore need to approach banks or business angels, and this would affect their strategy. They might be open to being bought out for the patent rights, and some companies specialise in devising solutions to problems in specific industrial fields and offering to sell the rights to major companies.

A trade mark is often the main selling tool as it will be used in advertising and when people ask for the product, and should be decided on as part of the sales strategy.

4) Can the layman easily research and discover whether their idea is already protected?

It is effectively impossible to prove a negative. It is impossible to say “the invention is new”. It may be that the wrong words were used (“next to” rather than “adjacent”, “plastic” rather than “polypropylene”) by the searcher, or the database did not cover the country or technology. It is very easy in the English language to get what are called “false drops”. The word light can mean illumination, but it can also mean an absence of weight. It is particularly difficult to look for processes that work in an unusual order as you are simply searching for words, perhaps together with classifications, and not for activities in a specific order. There are 10,000 new inventions published weekly: that is a lot to work through.

There is no harm at all in “having a go” using free sources. This may show that the idea has been done before, or a forerunner may be found which your idea improves on. If the idea is not found, it is best to commission a search from a professional patent searcher. Tell them which were the closest patents you found. They are likely to use priced databases as well as free sources. Your search may also reveal companies working in the field, and you may want to “google” them to find more about them.

5) What types of things can be patented?

It is normally a product, or a process for making a product, and can be mechanical, electrical, chemical or biological (or a mixture).

It’s rather more complicated than that, and some countries are more generous than others in what they will allow. The USA, for example, allows the rules of a board game to be patented, while the UK does not. The USA allows software for business methods, while the UK only allows software that involves industrial applications, such as improving image compression within a computer. It is best if in any doubt to ask patent attorneys (see yell.com) who will often give enquirers a free half hour initial consultation.

6) How long does the process typically take?

It varies from country to country. It is rare for the process from filing in an office to take less than 2 years, and 4 or 5 is often more typical, especially for cutting edge technologies. The UK office undertakes to keep to a maximum of 4.5 years. The UK has the option of an accelerated examination and search, where all fees are paid up front. 21 months is about the quickest that can be expected under this scheme and assumes no one objects to it.

7) How much does it cost?

UK fees amount to £200 which covers the search to see if the idea has been done before and the examination to see if the Intellectual Property Office will allow it. Fees are then charged annually which amount to a few thousand pounds. The patent attorney will charge thousands too. That is for UK protection.

For foreign countries, there are again fees (often in the thousands) from patent offices, fees from patent attorneys, and perhaps translation costs. Dyson reckon on a minimum of £40,000, which they do not like paying, but the last time I checked they were winning their court cases against infringers.

8) How much protection does a British patent provide? Is it an effective system?

A British patent only protects in the UK. Any infringement is a civil and not criminal matter and it is up to the owners to be aware of problems. I have heard companies say that it is expensive to fight cases, and that patent insurance is only enough to pay for a few meetings with counsel. Costs vary, of course, but most court cases are in the £200,000 to £500,000 cost range to each litigant.

To cut costs, many companies use the Patent Cooperation Treaty or PCT to ask for foreign protection. A single application is made, which means lower, and delayed costs. Each country then decides whether or not to grant a patent, but will expect the text to be in their language.

There is also the European Patent Convention or EPC, where a single application is made which covers all EU countries plus a few others. Technically it is not a single patent, as each country charges separate renewal fees, and there may be attacks on the patent in one country only (to cut costs) after a time limit for opposing the grant of the patent. This also saves money.

9) Do you still need to get cover in other countries and how far overseas does the UK system stretch?

A UK patent only protects you in the UK (Jersey and Guernsey have separate systems, by the way). A dwindling number of former colonies allow reregistration of a British patent for a fee.

The decision on where to patent depends on knowing the market, or the potential market, in major countries: what is the size, is it likely to grow or contract, is it worth the effort. For example, suppose you had invented the Mousetrap® game, where the players construct the apparatus which traps a mouse. Half of all sales of board games are in the USA, and you might decide to only patent there and in Britain.

France, Germany and Japan are more minor markets and you would have to translate a lot of material (such as the patent document, explanations of how the game works, advertising) as well as the packaging, and you might not consider it worth the effort. Pharmaceuticals, on the other hand, are usually patented in numerous countries to ensure a monopoly as they are so valuable.

10) Are there some things which just aren’t worth patenting?

This is highly subjective – some people would feel it isn’t worth it for a particular product, others would disagree. For a product with a short “shelf life” like a novelty product, a sales campaign using a good trade mark is often enough. A few years ago Dragons’ Den saw a sales pitch for the Banana Guard by three Canadian doctors. It is a plastic holder which stops bananas from getting bruised. I would have not considered patenting such a simple device, but they applied for, and got, an American patent. It sells for £4.99 in this country and so far 700,000 have been sold across the world.

If the novel aspect is a process so that the improvement is not obvious, then a trade secret may be a better idea. For example, a lamp holder is made of cheaper materials. Getting a patent means revealing your ideas to the world, and you may prefer to get your staff to sign a confidentiality agreement. An Italian company has apparently been making a luxury product since 1650 or so using a trade secret. Coca Cola does the same, as the exact recipe is secret.

11) Realistically can small businesses really expect to be able to protect their IP from bigger companies with deep pockets? (answer if able)

Many private inventors and small companies say that they suffer from just this problem. A patent attorney said to me recently that a weak patent in strong hands is better than a strong patent in weak hands, so he agreed. I’m not sure that there is really a solution to this.

Many inventors come to me and boast that they will have a business worth hundreds of millions of pounds in a few years. Such claims are usually unrealistic (the product often does not work that well, or the market is too small, or the retail price will be too high, and so on), but quite apart from the cost of trying to ensure this, fierce competition can be expected if it really sells well. There may be imitations, or the patent may be avoided by using different technology.

N.B. These answers should be taken as advice only, outlining the major principles in the UK – there are nearly always exceptions. It is not legal advice.