Securing a patent

besty

As I have no experience in Intellectual Property law whatsoever, my knowledge of this area is purely limited to background knowledge. A relative of mine has a very sound business idea and I wish to find out the processes involved in securing a patent for what is only an idea for a prototype at the moment.

Could someone please outline the process involved. Thanks for any help.

P.S. I realise that this information is available online but I'm really looking for anecdotal and practical information.

maidhc

I presume you have read all this first:
http://www.patentsoffice.ie/

hullaballoo

padser should be along shortly with his wisdom in this area! I know that you have to go into the patents office and fill out a form with your idea, they check to see if it's original and then sell you an expensive patent that gives you very little protection. They do seem to be necessary though. That's just my experience!

robfitz

I don't believe that business methods can be patented in Europe, the US is another story.

EUROPEAN PATENT CONVENTION - Article 52 - Patentable inventions
...
(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
...
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
...

But what would I know I'm just a software developer who hates the idea of software and buisness patents.

besty

maidhc wrote:

I presume you have read all this first:
http://www.patentsoffice.ie/

Yes, I looked through the site. Thanks for the responses. I was just testing the water.

ambro25

Anything you want to know about that can be publicly disclosed, I'll happy to help, by pm or through the thread - such as background info about patents generally, relevant portions of the Act, Irish peculiarities, Europe, the US, etc.

Anything else - keep to yourself (and I mean yourself - do not disclose to anyone, unless and until the patent application is filed or you make intensive use of NDAs beforehand).

Some points to begin with, simply and succintly:

(i) you mentioned a protoype, so presumably the patent would be for a 'widget', not an 'idea about a widget' - that's good. Do not listen to uninformed/biased sources as to what an invention is and isn't/what can and cannot be patented - see a specialist (aka a Patent Attorney) if needed.

(ii) patents can only be obtained for inventions (see Art.52 EPC above re. what inventions are, same provisions under Irish Law) that are new (that means never disclosed, not 'oh wow, how original!'), inventive (that means it wouldn't be obvious to someone who regularly makes widgets to come up with whatever yours is like) and capable of industrial application (i.e. it can be sold, put bluntly)

(iii) patents can only be obtained in (and apply to-) the jurisdicition in which they exist by law: so, you get an Irish patent under the Irish Patent Act and it protects your invention in Ireland only. If you have commercial plans for the US, get a US patent, etc.

You can apply for a patent yourself, and save yourself professional fees of qualified professionals, but that is not advisable - pennies saved today may well be millions lost tomorrow. Think of it as suing someone/a business: do you do it yourself, or do you consult a sollicitor?

You start by deciding whether you want:
a short-term Irish patent
or a 'normal' term Irish patent
or an international patent application (aka PCT)
or a European patent application
or...

or a combination of these. That depends on your business plan/needs.

Let's KISS and say IE only for now - apply for a normal Irish patent and file your application with specification, claims, drawings, then you can expect the Patent Examiner at the Irish Patent Office to get back to you and tell you if you can have it or not (99.9% of the time, you can't).

You (or your Attorney) then perform advocacy: why you deserve a patent and why the Examiner's objections are unfounded etc., until such time as the Patent Examiner is satisifed that your invention (and more importantly the claims of the application) deserves a patent, 2 years or so down the line (note that this timescle varies considerably depending upon what type you went for and where your are trying to get a patent).

At which point it becomes granted and that's it - you now have a granted patent (which is different from a pending patent = what the patent is until it becomes granted). Note that you can't sue for patent infringement until it is granted.

Something useful - go take a look at espacenet and see if you can find your widget or something close to it.

padser

hullaballoo wrote:

padser should be along shortly

I guess it was inevitable I would jump into this one, and just after iv spent the last week trying to unlearn all this stuff through copious amounts of alcohol.

Yeah pretty much what Ambro said Id agree with.

There are two main requirements for a patent. Novelty and Inventiveness. (at least these are where the majority of items will fail in their application AFAIK).

Novelty; Main points to watch out for here are
~ Dont disclose/show/describe the invention to anyone prior to filing patent application.
~IF you do, make sure you do it in circumstances implying a duty of confidence
~Dont sell a prototype to someone to 'check if it works'.
~If the invention or concept has been substantially 'anticipated' in journals, magasines etc then this may also prevent it from being novel.

Basically it must be something new, and no one who is not under a duty of confidence must know about it.

Inventiveness;
~It cant be a blindingly obvious solution to a problem. For example if you had a window wiper. And stuck it on the end of a stick. Its probably not inventive enough to warrent a patent etc.
~the test is basically whether a reasonably skilled man in the field would, on given the problem etc come up with that solution. If not then its probably inventive enough.

Dont forget as well if its not something that fits nicely into a 'patent' there are other forms of intellectual property protection open which might be more suitable such as deisgn and copyright.
Also AFAIK computer programmes are excluded from patents if its an idea in that field.

ambro25

padser wrote:

Also AFAIK computer programmes are excluded from patents if its an idea in that field.

Allow me to correct you: computer programs as such are excluded from claimable subject-matter in most national and regional jurisdictions, data processing devices configured by such computer programs are claimable subject matter and therefore protectable by patents. After that, a sh*tload of variables and caveats apply, but let's not bore the readers.

Not wanting to restart that debate in this thread -because that's not the topic- but I thought the distinction is important enough to make early on (if it's relevant to the OP), in passing.

From the horse's mouth, you could say

padser

Hmmm, interesting. The reason i brought up computer programmes was because so many business ideas do involve computers etc that I thought there was a good chance this one might.

When you say data processing devices do you mean any kind of hardware???

ambro25

padser wrote:

When you say data processing devices do you mean any kind of hardware???

...which processes data, i.e. performs at least basic I/O. So, from a CRAY to a simple gate operator, passing by a TESCO till and your boggo-standardo parking meter

Why, what did you have in mind, if I may ask?

I feel I should add that it's not because a business method makes use of computers that the material implementation of the method is inevitably precluded from patentability (although the EPO, at the moment and in the full face of the law, its interpretation and application, would have you believe differently) and -likewise and paradoxically- it's not because a business method makes use of computers that it will de facto achieve patentability. The truth is somewhere in the middle, turns on the (technical) facts and is now more than ever (thanks to the EPO - I love'em ) a black art.

padser

I just didnt understand the terminology...im not up on my computer terms.

So it seems like what your saying is if you invent a device for say, scanning parking tickets etc, you could patent the device but not the programme running the device??

Mind you the programme would be covered by copyright anyway, so its probably just to avoid double protection etc.

ambro25

padser wrote:

So it seems like what your saying is if you invent a device for say, scanning parking tickets etc, you could patent the device but not the programme running the device??

No. The situation to which I was referring was where you are using a known device and you are configuring it with new software: since you can't patent the software itself, you protect it by patenting the device (in as generic terms as possible) configured by the software for scanning parking tickets.

You can of course patent the device itself (with/without software) if there's never been one like it before, in terms of what elements it comprises and what it does. And you would include claims to how it does what it does (the software that drives the interoperation of the elements), whereby the software that configures it becomes patent-protected.

padser wrote:

Mind you the programme would be covered by copyright anyway, so its probably just to avoid double protection etc.

Copyright attaches to an expression of the software (V1.0 of the code written in -say- C#). The patent is intended to protect the functionality of the software (what it makes the device do) irrepective of the form of expression (v0.1 through to V99.9, and coded in C#, C++, Java, Basic, etc, etc.).

A very simplistic way to see IPRs is:
* design for the way it looks
* patent for the way it works
* trademark for what it is called
* copyright for everything else about it

We (apparently both) know that there are provisions in the Copyright Act in respect of adaptation of copyright acts and the famous matter of 'substantiality' (of what has been taken), so that software rewritten in -say- Basic or Pascal would infringe the copyright in the C# version, to a greater or lesser extent (probably lesser if the second langauge is more difficult to write/code).

But if you needed to modify the original C# code written for device A so that it will configure device B to do the same thing, considering current copyright case law for all things software, I have €10 that says there wouldn't be infringement. Ergo no protection. Likewise if rewriting the original C# code into Cobol requires re-thinking the ordering of the algorithm steps, i.e. the original expression of the software.

besty

Thanks lads. Very informative.