Is your invention patentable?
The patent process can cost thousands of pounds and take years. If an application is granted, the business value it adds makes it all worthwhile. But a patent won’t help to protect all inventions.
So before you start the process, it’s worth understanding if your invention fits the patent criteria. Otherwise, you could use up time and money on an unsuccessful application. To help, we’ve set out everything you need to know in this article.
What is the definition of an invention?
Under UK patent law, an invention is defined as something completely new which can be made or used. It can be a new technical solution to an existing problem. It can also be a new process or method for completing a task.
Specifically (and unsurprisingly) an invention needs to be ‘inventive’. Meaning it needs to ‘result from a degree of ingenuity’. In short, it can’t be an existing product or process that’s been changed slightly in an obvious way.
An invention that falls under the above definition is considered ‘patentable subject matter’ in the UK. This means you can apply for a patent to protect them,
The Intellectual Property Office (IPO) highlights specific items you can’t patent (aren’t patentable subject matter):
Literary, dramatic, musical or artistic works
A way of doing business, playing a game or thinking
A method of medical treatment or diagnosis
A discovery, scientific theory or mathematical method
The way information is presented
‘Essentially biological’ processes like cross-breeding animals or varieties of plants
Software that has a ‘non-technical’ purpose
If you’re applying for a patent outside the UK, what is and isn’t classed as an ‘invention’ may change. So make sure you check if your product or process fits the definition of an ‘invention’ set by the patent authorities you’re filing with. This is the first step to knowing whether it’s patentable or not.
What are the patentability criteria?
The next step is to check your invention against the legal criteria it will be measured against.
For a patent to be granted, an invention must:
Be completely ‘novel’
Show an ‘inventive step’
Be ‘useful’
Novelty
First, your invention must prove its ‘newness’. This means it has to be provably different to anything previously available to the public. Any existing knowledge is called ‘prior art’ and can include:
Information on websites (even if it no longer exists)
Publications such as magazines, newspapers or scientific studies
Marketing or sales materials such as adverts or presentations
Previously published patents and patent applications
Before you start the patent application process, an attorney may advise you to run a patentability search. This checks for any ‘prior art’ similar to your invention. It’s a good indication of whether your invention can be proven as truly ‘new’ or not.
As an applicant, make sure no public disclosures of your invention are made before the patent filing date. Even if you offer to test or display an invention with a potential client, this may count as prior art. So don’t make any non-confidential disclosures before you file your application.
Inventiveness
This is the proof point most disputed during patent applications. To prove something is ‘inventive’, applicants need to show it’s not an ‘obvious’ modification of an existing product or process.
The specific test is that the invention or inventive step wouldn’t be obvious to a skilled person who knows all the existing ‘prior art’ (referred to as state of the art). A skilled person is classed as an ‘unimaginative’ individual or group of experts in their field.
For example, if an individual had prior knowledge of all the components that make up a new product, would its properties or function be obvious to them? These questions are what makes inventiveness so difficult to prove.
Getting an experienced attorney to judge this before you start an application is worthwhile.
Usefulness
This is the straightforward bit! The inventive product, process or method has to have a specific function or application. Usually, this means it solves a common problem in a genuinely helpful and efficient way. Most inventions are created for a specific purpose. As such, this is usually the lowest hurdle for most patent applications.
Applying for patents outside the UK
The terms above are defined under UK law. Each of these definitions will change under the laws of the country where you’re applying for a patent.
It’s important to check the invention classifications and criteria of the patent office in the country you’re filing. Getting the advice of a patent attorney who has experience in filing with the patent office you’re applying to can be useful for this. Choosing a legal expert in the field most relevant to your invention is also recommended.
For example, Grey Wolf IP’s expertise lies in engineering. However, we are open to all inventions and, if we cannot help you, we can guide you to a qualified legal professional who can.
What if my invention isn’t patentable?
If your invention doesn’t fit the criteria set out above, there are other options to protect it under the law.
Copyright will help you protect your literary and artistic works. Registering your design will keep your product’s aesthetic (rather than its function) safe from the competition. Plus, to give your trade secrets extra security, there are strategies such as NDAs which can be used.
Our team’s priority is to maximise an invention’s value for our clients’ businesses. We help inventors figure out if their new products or processes are patentable and, even if they’re not, will recommend the best legal solution for their needs.
