What can I file a patent on?

A patentable invention must be new, inventive, capable of industrial application, and must not fall into an excluded category (eg artistic creations, mathematical methods, some computer programs, and business schemes). Oxford University Innovation and its patent attorneys will help with determining the question of patentability.

Establishing whether an invention meets these criteria is a complicated, time consuming, and expensive process. Although patenting is expensive (eg £45,000 over five years), the rewards may be significant. If inventions are not properly protected, rights may be irretrievably lost.

Think patent before you publish

The opportunity for obtaining a patent can be lost by publication of the underlying research. No information on an invention should be made available to the public, in any way, anywhere in the world, prior to a patent application being filed. This includes:

• publication in grant applications,

• publication in journals either as articles or as letters

• oral presentation at seminars

• information posted on notice boards on the internet

• abstracts

• theses

• e-mails

• poster displays

• exhibitions

• open days

• confidential disclosures to many people

Any ‘enabling’ information about an invention which is published in any way will constitute a disclosure and weaken or destroy its patentability. An enabling disclosure is one which provides the means by which someone skilled in the subject could reproduce the work about to be patented.

Patent provisions in the USA are different (until recently they operated a first to invent system, rather than the first to file system), and if the invention has been disclosed, Oxford University Innovation and its patent attorneys will advise whether it is still possible for valid patent protection to be secured in the USA.

Oxford University Innovation will not prevent you from publishing your work. A patent application can be prepared and filed quite quickly (within days, though more usually weeks) once a patent attorney has been instructed. As soon as the patent application has been filed there is no restriction on subsequent publication of the invention, subject to the points below.

Following filing an initial patent application no information which is new or additional should be published without first checking with the patent attorney involved in the case. It is possible that the new information could be included in the patent application. If the information needs to be included in the patent application the only way this can be done is by way of a new updated application; and the same requirement for novelty as discussed above will apply in so far as the new application is concerned.

If there is a risk that necessary development work or securing necessary investment may take more than one year from the filing of the patent application, the invention should not be published or otherwise made available to the public during that year. Any new patent applications filed in the UK within a year of the filing date of an original patent application for the same invention are entitled to claim the filing date of the original application. After the first year it is no longer possible to claim priority, and any publication of the invention during that year could be used to challenge the validity of any subsequent application filed outside of the first year. This is important in case it becomes necessary for the original application to be abandoned in favour of a new application with a new filing date.

Preparing the patent application

In completing the Invention Record you will be providing to us important information to help the patent attorney draft the application. In preparing a patent application the attorney is required to draft a specification which describes the invention in detail and highlights those features of the invention which are new and inventive over what is already known. At least one way for the invention to be put into effect should be included in the specification. Hence information on experimental examples and/or prototypes, although not essential, may make the difference in successfully securing valid patent protection.

The patent application will aim to describe the work in as broad a way as possible, so as to avoid others easily ‘inventing around’ your work. You will be encouraged to speculate as to the possible uses of your work to a level beyond that in an academic publication. The application itself will be published 18 months after filing.

It is possible to describe more than one related invention in a single patent application. In due course, however, the inventions will need to be divided out into separate applications, as a patent is only granted on a single invention. Oxford University Innovation and its patent attorneys are able to advise.

Inventorship

It is essential to identify accurately the people who made the invention(s) described in the patent application. Inventorship is a matter of fact, not opinion. It is unusual for an invention to be made by more than two or three people. Whilst those associated with research may be included as authors on academic publications, only true inventors may be included on patent applications.

If inventorship is recorded wrongly, this may be enough for the patent authorities to refuse grant of or revoke a patent. Oxford University Innovation and its patent attorneys are able to assist in discussions to establish correct inventorship.

Searching

Patent applications and granted patents are published by patent offices around the world and are publicly available documents. Published patents provide a wealth of information which researchers may wish to access for a number of reasons:

• assessing the likelihood of your own work being patentable over the existing publications

• exploring the way patents are written to clarify the scope of an invention

• part of a ‘literature search’ when embarking on a research programme

• assessing the likelihood of planned commercial activities infringing existing patents

Patent applications are published 18 months after they are filed (this now includes US patent applications). The published patent information can be accessed free on a number of websites including the UK Intellectual Property Office & European Patent Office and Google Patents.

We are able to assist in patent searching.

Keeping a laboratory notebook

It is only in 1996 that it became possible to prove a date of invention for US Patent purposes from evidence produced outside the US. In order to take advantage of this change in US Patent law inventors must follow certain guidelines. Under US Patent law, an inventor must provide evidence of the following in order to prove a date of invention: date of conception of the invention; reduction to practice of the invention; diligence in achieving reduction to practice.

The evidence which an inventor requires may be in a variety of forms but is frequently contained in a laboratory notebook. To provide irrefutable evidence the following procedures are required in keeping a laboratory notebook:

• permanent binding (not loose-leaf or spiral bound)

• numbered pages

• good paper quality

• permanent ink (not pencil)

• legible and factually complete entries

• describe all experimental procedures, giving conditions of experiment and apparatus

• ensure each page is signed off and dated by the author and witnessed as soon as possible (the witness should be someone who understands the area of research but who is not directly involved and cannot be considered to be under the control of the author)

• do not leave any gaps, pages undated unsigned or unwitnessed

Oxford University Innovation and its patent attorneys are able to advise on this issue.

Patent application procedure

Most of our patent applications are filed first in the UK, which establishes an international ‘priority date’. Then, after 12 months, international protection is sought via the Patent Co-operation Treaty (PCT). Watch our explainer video to learn more about the PCT process.

This enables filing of a single patent application to establish protection in a range of countries. It simplifies international patent filing and prosecution, and defers costs. Over one hundred countries have signed the PCT, and these can all be designated in one patent application.

In addition, we may file a separate US patent application to better protect this important market.

The maximum life of a patent in most countries of the world is 20 years from the initial filing date. Further protection can sometimes be achieved for some products in some markets (e.g. Supplementary Protection Certificates).

Timescales and activities

Below is a guide to the timescales involved for steps in the patenting process:

1. 0-12 months – patent application filed in UK. Priority date established. Further exemplification of the invention must be done within the next 12 months, this period being crucial for adding value to the patent. (NOTE the opportunity for obtaining a patent can be lost by publication before filing.)

2. Within 1 year – updated application filed. At this stage more data can be added to the invention. Overseas countries are designated under the PCT system.

3. Within 18 months – patent application is published with search report.

4. Years 2–4 – patent examiner report is received. (The patent attorney works with the technology transfer manager, inventor(s) and the examiner to negotiate and agree the patent claims.)

5. Years 5–7 – patent is granted/refused in each of the designated countries.

6. Years 4–20 – annual renewal fees are payable.

Oxford University Innovation and its patent attorneys are able to assist and advise on all aspects of patenting.