Patents - Practice And Procedure
Patents provide protection for inventions, and in particular
provide a right to prevent third parties making, using, selling, or
otherwise commercially exploiting the invention which is defined by
the claims of the patent. New products, and articles which function
in a new way are patentable, as are machines, methods, processes,
compounds and compositions. However, the item to be patented has to
be new and unobvious at the date of the application for the
patent.
First Steps
An initial patent application is filed with a specification,
which is intended as a document of record, to establish a priority
date for the invention for which a patent is sought. The
specification must, essentially, include a description of the
invention and be accompanied by drawings. It is our recommendation
to include claims, which define the scope of protection being
sought by way of the patent, at the outset.
Any patent granted, in due course, in pursuance of the
application will not be invalidated by a subsequent disclosure of
the subject matter disclosed in the specification. Therefore, once
the first application is on file, the applicant is free to take
steps to commercialise the invention. This may involve
manufacturing and selling goods, or otherwise making details of the
invention public. In contrast, such steps taken before the
application has been filed can result in the application being
invalid.
The country in which the first application is filed is generally
chosen in accordance with cost and convenience. A first application
filed at the United Kingdom Intellectual Property Office (UKIPO)
requires the payment only of low official fees and will also
provide an early search from a UKIPO Examiner. Where it is
particularly important for clients to obtain patent protection in
the United States of America, it can be advantageous to make the
first filing in the US.
It is a skilled job to draft a patent specification. It has to
describe an invention in sufficient detail to enable someone
skilled in the art to perform the invention. The claims, which have
to be supported by the description, define the scope of the
protection, and therefore need to be as broad as possible without
covering prior art. As inventions are frequently protected in more
than one country, it is also necessary to ensure that the final
documents do not offend against the differing requirements of
various countries.
We are skilled and experienced at drafting. In consultation with
inventors, we will produce a patent specification for filing in the
chosen jurisdiction which is sufficiently robust to withstand the
citation of relevant prior art and is generally in accordance with
requirements worldwide, despite regional differences.
The Priority Year
Within one year of making the initial application, a decision
must be made as to the future of the first application, and as to
where protection might be required.
Under various international agreements, a first...
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