Protecting your idea

At some point you must legally protect your intellectual property (IP) or you will not be able to:

• Disclose it safely.
• Be recognised in law as its owner.
• Profit from its commercial exploitation.
• Prevent or discourage its unauthorised use by others.

There are several forms of protection known as intellectual property rights (IPR). Usually, the best way to protect an invention as it evolves is to use a strategic combination of IPR. 

Many inventors assume that the only way to protect their idea is to patent it. While patents tend to be of primary importance (see The patenting process later), other forms of IPR should also be considered. One or more of these may have an important role to play in protecting your idea.

Patent attorneys

Another important role will be played by your patent attorney. IPR is a complex area of law that holds many dangers for inexperienced inventors. A patent attorney's advice will be helpful when you are planning an effective IP protection strategy, and essential if you decide to patent your idea.

Despite their name, patent attorneys are usually experts in all forms of IPR. They can improve your chances of obtaining worthwhile protection for your idea, and can act for you when problems arise.

Your patent attorney should be able to advise you fully on IP matters in your own country and all of Europe. For IP matters outside Europe, most patent attorney firms in your own country will be able to act for you, or arrange representation, in any country.

However, it is important to understand that no patent attorney can ensure that your IPR will bring you any financial reward. The expertise of patent attorneys is restricted to IP law. You or your team of other experts must take responsibility for the commercial success of your invention.

Forms of IPR

Confidential information and non-disclosure agreements (NDAs)

Although not covered by any statutory IPRs, confidential information is closely related to, and often regarded as, intellectual property. 

The most common form of protection for confidential information is a non-disclosure agreement (NDA). An NDA can protect you by documenting someone's promise not to use or pass on information about your idea. Anyone who breaks the terms of an NDA risks legal action.

NDAs can help to protect you at every stage of the development of your idea - no matter what other forms of IPR you have, and even long after your invention is on the market.

You can find many free examples of NDAs on the internet. It may however be wise to seek the advice of a patent attorney when constructing your own version.

Your main problem is likely to be persuading other people to sign your NDA. Many large companies take the view that NDAs only have a use when they are seriously interested in an idea. That can only be after they know what it is! (To overcome this problem, train yourself to communicate the business benefits of your idea without disclosing its novel aspects.)

NDAs are widely used in all forms of business, so you should certainly consider using them yourself. But remember that they are binding legal agreements, and use them only when both parties accept that significant disclosure is necessary.

In addition, NDAs can only restrain others from disclosing or exploiting specific and unique secrets which they get only from you. Any information that is already general knowledge is free for anyone to continue using, regardless of the NDA. Similarly, if the confidential information covered by the NDA later becomes public knowledge by some other means, then the original parties to the NDA will no longer be bound by it.

Know-how

Know-how is undocumented information known only to you. It is similar to trade secrets. Without your know-how, others may find it difficult or unrewarding to exploit your idea. For example, you may know how to reduce production costs significantly by using conventional equipment in an unconventional way.

Know-how can be commercially valuable, and can be included in licensing agreements. However, genuinely valuable know-how is rare. There is also no way of registering it and its theft - usually by employees or associates - can be hard to establish.

Furthermore, if your know-how is information that ought to be included in a patent, you may risk invalidating the patent by leaving it out. You should always seek the advice of a patent attorney when considering what to treat as know-how.

Copyright

Copyright protects for many years against the unauthorised copying or adapting of drawn, written or photographic descriptions of your idea.  It does not protect the idea itself, but in some cases - for example computer code - may be the only effective way of protecting your IP.

Copyright arises automatically and is free. It is important because it can easily establish dates of origin of an idea, or of changes to an idea. However, it gives you no protection against someone who independently comes up with the same or a similar idea. A competitor may say that their idea is similar to yours by coincidence, or that your idea is a copy of theirs. How can your prove that your idea was the original?

The following steps may help you to prove that you are the copyright owner in a later dispute:

• Make written descriptions, drawings, photos etc of your idea and print them out or perhaps burn them to a CD or DVD.
• Place your documents or disc in a securely sealed envelope bearing a signed and dated statement from an independent witness, certifying that the envelope was sealed on the date when he or she examined it.
• Send the envelope by registered mail to yourself or a place of safe keeping, and keep the clearly dated postage receipt.
• The envelope must remain unopened until required by a court of law. (It may be advisable to have more than one envelope, in case your copyright claim is tested more than once. An opened envelope is no longer valid as proof of copyright.)

Unregistered design right (UDR)

In the EU, unregistered design right (UDR) protects the outward appearance of a product, including its shape, pattern, texture and decorations. In some national UDR laws (for example, the UK) internal configurations may be protected even if these are invisible to the user.

UDR is similar to copyright in that it is free and gives you a right to prevent unauthorised copying for a number of years. However, there is no official design right register and so it can be difficult for others to know of your design.

UDR may protect those features of the design which are new, have an individual character, and which come from a ‘freedom' of design. It may not protect copied or routine designs; those which are immediately suggestive of other designs; and those parts of a design which are dictated by functional needs to fit or match with other components. For example, a novel wing tea pot can be shaped in many different ways, and so can be protected because the designer has exercised his or her design ‘freedom'. But a vehicle brake pad can only have one shape if it is to fit in the brake callipers. It therefore has no design ‘freedom' and so no protection.

UDR arises automatically when the design is created, but you should follow the same ‘sealed envelope' procedure described above for copyright to provide yourself with evidence of a priority date. This is because you can only take legal action against someone when you can prove that they must have copied your design, rather than made something similar by coincidence.

Though often useful as part of an IPR strategy, UDR on its own will not protect most inventions.

Design registration

More robust protection for designs comes through formal registration, which can last up to 25 years. Applications can be made to most national IP offices, or to the European Union Intellectual Property Office (EUIPO) where a single application can be registered for the whole of the European Community.

The same criteria apply as for UDR: to be validly registered the design must be new, have ‘individual character' and be the result of a ‘freedom' of design. A single registration may protect patterns, ornaments, decorations and logos which are suitable for application across a range of articles (for example, a floral design applied to table linen, bedding, curtains, crockery etc).

You can take action against anyone who makes, sells, uses or imports articles which look like the article registered. Unlike UDR, there is no need to prove that another design was copied from yours - you only need to prove that it looks similar.  Even designs which are similar by accident can be challenged by the owner of a registered design.

The application process is fast and relatively cheap, but design registration usually only makes sense if the outward appearance of your invention is going to be a strong selling feature.

Trade mark

A trade mark can be a word, slogan, logo or combination that distinguishes your product or business from others. Trade marks can be valid indefinitely if correctly used and maintained, so a trade mark associated with a popular brand name can be of enormous value to its owner.

The granting and registration of trade marks is administered by national IP offices, to whom you apply. For multinational cover you can make a single application for either an International Trade Mark under the Madrid system at the World Intellectual Property Organization (WIPO), or a Community Trade Mark (for protection in the EU) at the EUIPO. To avoid problems, you will probably need help from a trade mark attorney. (Many patent attorneys are also trade mark attorneys.)

Trade marks do not protect ideas, or products per se. But if you want to market your own invention, a trade mark could be a very worthwhile long-term investment. It might eventually become your most valuable form of IPR.

Patent

Patent systems exist in most countries and their purpose is to encourage the development of new technologies. A patent is a form of legal monopoly - the right to say: ‘This is mine and you cannot use it without paying me' - which governments grant in return for public disclosure of ideas. And that is all it is.

It is important to understand what a patent can and cannot do. Patenting your idea will not necessarily increase its commercial value. If no one wants your invention, a patent is unlikely to make any difference. But if your invention has commercial potential, a patent may be your only way of ensuring that you can benefit financially from it. Many inventors of commercially successful products acknowledge that they owe their financial rewards almost entirely to strong patent protection.

The cost and complexity of patenting can be a problem for many inventors. Therefore, a decision to apply for a patent should never be taken without careful consideration of several factors (see later). You should ideally seek the advice of a patent attorney before making your decision.

If you decide to go ahead, you should let a patent attorney represent you during the lengthy, complicated and rigorous application process. If you do not use a patent attorney, you run a large risk of making mistakes which could leave you with no effective patent protection. There may then be little prospect of ever benefiting from your invention.

In general, patents last for 20 years but only if annual renewal fees are paid.

The patenting process

An invention is patentable only if it is:

• New and previously undisclosed.
• Distinguished by an inventive step not obvious to someone expert in that technology.
• Capable of industrial application - that is, it is physically possible to make the invention.

Computer software on its own can be protected by copyright but not by patents in Europe. However, an invention that is implemented on computers by means of software - for example, an improved data handling system - is patentable in Europe. You will certainly need the advice of a patent attorney when patenting inventions which are run on computers because practice can differ between Europe and the USA.

Business methods may be patentable in the USA but not easily patentable elsewhere.

Always seek advice from a patent attorney if you have concerns about whether your idea is patentable.

Some issues to consider before deciding to patent

(See also Patenting strategy later.)

• Do you really need a patent? Would some combination of other forms of IPR protect your idea adequately? And be honest with yourself - are you perhaps motivated more by vanity (the prospect of a patent in your name) than by commercial necessity?
• Have you studied the total cost of patenting (which should include annual renewal fees in every country in which you have protection)? Is your invention likely to earn enough income to justify the cost? Normally, you should not apply for a patent until you have thoroughly researched the commercial and financial potential of your idea.
• Is the time right to apply for a patent? Application starts a sequence of events which cannot be delayed. Do you apply for a patent early on, or wait until the invention is market-ready and more capable of quickly recouping its IPR costs? Later may be better than sooner, but circumstances will vary so you should always seek the advice of a patent attorney.
• Does your invention have a short product life cycle? The patenting process typically takes 3-4 years. If your invention is aimed at a highly competitive market in which products are rapidly replaced or improved, your patent may be worth little by the time it is granted.
• Who will pay to enforce your patent? National IP offices do not enforce patents or monitor them for infringement. These are the responsibilities of the patent owner or a licensee. Until funds are potentially available to enforce your patent - from royalties or sales income - it may offer limited practical protection.
• How strongly might your patent resist legal challenge? You will definitely need a patent attorney's advice on the strength of your claims. This is important because the validity of patent claims is often challenged, usually by competitors who want to copy a successful product. If they succeed, you may be left with a valueless patent and an order to pay the victor's legal costs.

Applying for a patent

Applying for a patent is a legal process governed by strict timescales and usually immovable deadlines. It is not something to rush into! To maximise your chances of a worthwhile patent you should:

• Study the application procedure in detail.
• Aim to apply not in haste, but strategically - at a time and for a reason that most benefits your exploitation plans. (See Patenting strategy below.)
• Use a patent attorney! Do not do it all yourself - the risk of making mistakes is too great.

Here is only a very brief guide to the application process for a European Patent according to the European Patent Convention (EPC). 

Applying for a patent at a national IP office is roughly similar to stages 1-6 below, but an application must be made in the local language.

Making an international application through the Patent Co-operation Treaty (PCT) involves a single procedure for stages 1-4, but 30 months after filing the application goes through stages 5 and 6 in every national or regional IP office where you wish to take up protection. For more information on the PCT see www.wipo.int/pct .

Choosing your route for a patent application (EPC, PCT, national and regional, or combinations thereof) will depend on:

• Your invention.
• Your business plan.
• Your available funds.
• Your intended market.
• The likeliest sources of infringing products.

A patent attorney will be able to advise you on the route that is best for you and your invention.

Stage 1  Beginning the process

Your patent attorney must provide documentation consisting of:

• A request for a patent.
• Details of the applicant (you).
• A description of the invention.
• Claims.
• Drawings (if any).
• An abstract.

A fee must also be paid. In order to avoid delay, it is vital that all documentation conforms in every detail to official requirements. Your patent attorney will ensure that it does. At the EPO, applications are accepted in English, French or German.

For your patent attorney to prepare all the information about your invention, he or she will obviously need to work closely with you. Do not assume that you know best because it is your invention. You must trust the skill and judgement of your patent attorney, as patenting involves a complex mix of law and technology. The claims in particular need to be drafted with skill, as they are the most important aspect of a patent.

Stage 2  Filing date and initial examination

If your documentation appears correct, your application is given a filing date - also known as your priority date. After filing there is a formalities examination to ensure that your documentation is correct and complete.

At any time in the next 12 months you can file for patent protection in other countries and have those later filings treated as if they had been filed on your priority date. In practice, this gives you a year to decide how many countries you wish to include in your patent protection.

Stage 3  Search

A search report is sent to you, listing and including copies of all prior art documents found by an experienced examiner and regarded as relevant to your invention. The search is based mainly on your claims for novelty, but your description and any drawings will also be taken into account. The report will often include an initial opinion on the patentability of your invention.

Stage 4  Publication

Your application is published 18 months after the filing date. Your invention will appear in databases accessible to other people around the world. It will act as prior art against any future patent applications from other inventors or companies for similar inventions.

You then have six further months to make two decisions:

• Do you want to continue with your application? You indicate ‘yes' by requesting a more thorough (‘substantive') examination.
• Which countries do you want to include (‘designate') in your patent protection? Designation fees must be paid.

After your patent is granted, you may claim damages for infringements originating as far back as the publication date of your application. However, to enjoy this right in some countries it may be necessary to file a translation of your claims with their national IP office and for them to publish the translated claims.

Stage 5  Substantive examination

If you request substantive examination, the EPO has to decide whether your invention and your application meet the requirements of the European Patent Convention. For maximum objectivity there are usually three EPO examiners, one of whom maintains contact with your patent attorney. This stage will often involve dialogue between the examiners and your patent attorney, which may result in the re-drafting of key parts of your application. Your patent attorney will defend your application, and this is one more reason why it is essential to have professional representation.

Stage 6  Decision to grant a patent

If the examiners decide to grant a patent, and all fees have been paid and any claims translations filed, the decision is reported in the European Patent Bulletin. The decision to grant takes effect on the date of publication.

Stage 7  Validation

What you have now got is a ‘bundle' of individual national patents. After the EPO decision to grant is published, your patent has to be validated in each designated state within a specific time limit. If this is not done, your patent may not be enforceable in that state. In some states, validation may include having to file (and pay for) a translation of the whole patent, or just a translation of the granted claims.

Stage 8  Opposition

A granted patent may be opposed by third parties - usually the applicant's competitors - if they believe it should not have been granted. After the grant is reported in the European Patent Bulletin they have nine months in which to file notice of opposition. The most common charge is that the invention is not novel or lacks an inventive step. The case will be examined by an EPO team, again of three examiners.

Opposition is the last chance to attack a European patent as a single entity in a single forum. Later, the patent can only be challenged in national courts and a ruling in one country has no effect on the patents for the same invention in other countries. This gives competitors a strong incentive to challenge an invention during the opposition period, as challenging patents in separate national courts can be much more expensive.

Stage 9  Appeal

All EPO decisions are open to appeal. Responsibility for decisions on appeals is taken by independent boards of appeal.

Patenting strategy

There is more to patenting than simply meeting the formal requirements of a patent office. You should try to fit your patent application into the broader framework of developing your invention. Points to discuss with your patent attorney may include these:

When to apply

Because of the formality of the patent application process, the timing of your application may make a big difference to the pressures you find yourself under later. Is it better to apply for a patent earlier, or later?

There is no easy answer to this question. Many inventors are keen to apply for a patent as early as possible - yet many successful companies delay filing until products are almost ready for market.

One disadvantage of early filing is that you may incur substantial costs before you know whether your idea is commercially viable. Applicants have up to two years from filing before becoming liable for significant patent fees, but this is rarely long enough to reach a licensing agreement with a company. It may not even be long enough to establish the commercial prospects of an invention.

One disadvantage of late filing is that someone may file a very similar idea before you.

For many private inventors, cost will be a major factor. The later you file, the longer you delay the costs. But how late can you afford to leave it? As long as he or she knows all the facts, your patent attorney may be able to identify an optimum date for filing, and advise on the steps you can take to protect your idea in the meantime.

Pressure to patent

You may be tempted to apply for a patent prematurely because business advisers or potential licensee companies tell you that this is what you should do. Always consider whose interests are best served by this advice. In many cases there will be little benefit in it for you.

Continuing prior art searching

The world does not stand still once you have filed your application. You must keep up your patent and product searching, as something may happen after you have filed which may affect your later decision whether to continue with your application.

Licensing or business start-up?

The period between filing and requesting substantive examination should be used to seek opportunities to exploit the invention. Even if your preference is a licensing agreement, it may be worth setting a date after which you plan instead for business start-up. The reason is that if no company shows interest in your idea, you do not want to reach substantive examination stage with no other option to pursue.

Re-filing

You may be able to gain extra time to seek a licensing agreement by withdrawing your application and re-filing it later. This is a tactic that you must discuss with your patent attorney, or you may lose more than you gain.

Temporary advantage

It is possible to use a patent application for purely temporary advantage, and to decline substantive examination. For example, you might wish to use it to protect your idea for long enough to achieve your exploitation objectives. Again, you must discuss this with your patent attorney as there may be risks that you have not considered. One almost certain outcome of abandoning an application is that you will find it much more difficult - in fact, probably impossible - to license your invention to anyone. 

Just having your patent application published may be enough. Once published, potential customers and business partners can find out about your invention and contact you if they are interested. Your published application will also be prior art, which could prevent competitors from patenting the same or a similar idea in the future. This might leave you free to operate in that market even if your application is not subsequently granted. If this suits your business strategy, you might then choose to go no further with the patenting process, especially if you could not afford the expense of acquiring or subsequently enforcing a patent.

Funding

A granted patent may help persuade investors that your idea is worth backing, and by that means the cost of patenting may be covered. You should therefore think of a patent not just as a means of protecting the idea, but also as an instrument for raising funding.