Patent Applications: Before you file

21 December 2009

Corinne Day

Before you apply for a patent application in the UK you should consider the following:

1. Is there another type of protection that is more appropriate to protect your invention?

You may also wish to consider these alternatives in addition to patent protection.

Confidential Disclosure Agreements and non-disclosure agreements

You must not tell anyone about your invention before you apply for it as this will make the patent invalid. Therefore, if you intend to discuss your invention with third parties prior to applying for a patent, you should consider entering into a confidential disclosure agreements or a non-disclosure agreement with that party.

Plant breeders' rights

Plant breeders' rights are a form of intellectual property designed specifically to protect new varieties of plants.

Trade Secrets

A trade secret is a formula, practice, process, design etc which is not generally known or reasonably ascertainable, by which a business can obtain an economic advantage over competitors or customers.

Trade secrets can be kept secret beyond the term of a patent.

The law of confidentiality protects trade secrets. To keep trade secrets protected, you must establish that the information is confidential, and ensure that anyone you tell about it signs a confidentiality agreement. If they then tell anyone about it, this is a breach of confidence and you can take legal action against them.

2. You must also ensure that your invention is capable of being protected by a patent, i.e. your invention must be new, inventive and must not be of an excluded type.

3. Is the invention yours?

Usually as the inventor, you would be the owner of the patent. However, if you are an employee, and you invented the invention 'during the course of business', your invention will belong to your employer.

4. You may also wish to consider patent protection elsewhere to protect your invention in other countries than the UK.

You should ensure that you have received advice from a patent attorney or solicitor before you apply for a patent. A patent attorney or solicitor will be able to advise you on the issue of how suitable your invention is for patent protection, and if so, will guide you through the process of obtaining a patent for your invention.

Corinne Day is a trainee solicitor who specialises intellectual property law. She can be contacted via e-mail on corinne.day@lawdit.co.uk