October 15, 2015
This article sets out practical advice for addressing problems with ‘novelty’ and ‘freedom to operate’, two very important aspects of patent law than can trip up businesses large and small.
This article on intellectual property (IP) law regarding patents promotes awareness of ‘novelty’ and ‘freedom to operate’, two very important aspects of patent law that can trip up businesses large and small, even those which have not registered their own intellectual property. This article sets out practical advice for addressing problems associated with each.
Novelty of an idea
A little background - if an invention is novel (new) and has an inventive step (isn’t obvious), then it may be patentable. In the UK, and most other countries, the ‘novelty’ of an application for a patent is examined relative to everything made available to the public by means of a written or oral description, by use or in any other way, before the date of filing a patent application.
The novelty of an idea forms an important part of the overall commercial decision of whether it is worth filing a patent application. However, as anything that has ever been published can prevent your idea from being novel, it is difficult to establish whether an idea is novel with a good degree of certainty.
Another problem is that unfortunately some organisations or businesses might accidentally disclose their idea to the public before they first file a patent application. The disclosure, especially if it includes technical details, may lead to novelty-based rejection or invalidation of a patent application filed subsequently. Ideas are often accidentally disclosed in marketing literature, meetings with suppliers, exhibitions and academic conferences.
Another problem is that even after a patent application has been filed, the disclosure of improvements and modifications to the original idea may harm the ability to protect the improvement or modification with a subsequent patent application.
Fortunately some simple steps can be taken to reduce these risks:
Regarding the decision of whether to apply for a patent, a ‘pre-filing novelty search’ can be performed to test the novelty of the idea, before it is taken any further. Often an initial cursory search using search engines freely available can provide an indication of chances of success of a patent application. More detailed information could be searched using a professional searcher. Searching is a skilled job and it is important not to under-estimate or over-estimate the relevance of what is found. Good search results are also very important for the patent drafting process.
Regarding accidental self-disclosures before filing, it is advisable to establish lines of communication between your inventors, marketing staff and other staff to understand and agree on patent filing deadlines before new technology is revealed. The patent drafting process takes a few weeks and should be taken into account. However, long delays in filing a patent application could lead to somebody else independently filing first or disclosing the idea to the public.
Regarding accidental self-disclosures before filing, it is advisable to bring a ‘non-disclosure agreement’ when meeting a specific third party, e.g. a manufacturer. If they do not sign it, we recommend not disclosing the IP to them at this stage. They may instead require you to have a pending patent application. A pro-forma non-disclosure agreement can be downloaded free from the UK Intellectual Property Office website, found here.
Regarding accidentally disclosing sensitive information after filing, the safest solution for patentability is to keep the invention a secret for the first 18 months after first filing. However if you need to disclose, best practice is to limit the disclosure to information that is also present in the patent application. If new information is not mentioned in the patent application and it is worth protecting, speak urgently to the drafter who may be able to prepare a new application, or perhaps modify the existing application without filing a new one.
Overall, selecting a skilled person, such as a chartered patent attorney, to draft a patent application and process it to grant can make a great difference to the value of a patent, due to the legal hurdles which must be overcome to obtain commercially useful protection.
Freedom to operate
A little background - if you do not have ‘freedom to operate’, this means you are vulnerable to being sued for infringing somebody else’s IP right. Acts relevant to patent infringement include manufacturing, importing, selling, offering to sell, using or stocking a product. If the acts relate to a process, the use or offering for use of the process count towards infringement.
You do not have to be a manufacturer to infringe a patent; your business could be a shop or warehouse.
An improved product or process incorporating protected elements will infringe those protected elements.
Unfortunately ignorance of the law is not a defence to being sued. The consequence is that businesses may be threatened with unforeseen infringement actions, which is a huge drain on resources, and may delay product releases or operations, and can result in litigation.
Many businesses first encounter this problem when they initially set up overseas operations. They may be unaware of an IP right in that territory and could be infringing someone else’s IP.
Fortunately some simple steps can be taken to reduce the risks:
Some businesses start with a cursory ‘freedom to operate search’ when they have a new idea to determine whether the idea is worth the time and bother to develop it further.
The search must determine whether the patents in the search results are legally in force, in which countries, and whether the product or process infringes the ‘independent claims’ of the patent. This can be difficult to do correctly without training.
A professional freedom to operate search may be commissioned for any number of jurisdictions, for example the UK, US and non-English speaking countries. The search will identify currently active IP. Professional searches are recommended for when an idea is more developed, so that more accurate results can be obtained. However the timing of a search is important because it may result in having to make more modifications to your product or process.
The earlier an infringement is spotted during development of an idea, the more scope there may be to modify your product or process to ‘design around’ the competitor’s IP. For example a modified version of a product could be designed for the UK market to avoid a competitor’s UK patent. However if the competitor’s UK patent is broad and well drafted, it may be difficult to design around the patent, so you may decide to only sell outside the UK where they don’t have a patent, or consider other commercial options such as licensing.
If threatened with infringement or considering a freedom-to-operate search, it is recommended to initiate a discussion with a chartered patent attorney to discuss your options.
If you have any questions about protecting ideas, and freedom to operate, please don’t hesitate to get in touch with your usual contact at Swindell & Pearson or Tim Gilbert at [email protected]. Tim is a patent advisor and is based at our Derby office.