Understand different types of IP
Patents provide a 20 year monopoly over an invention in return for its public disclosure. Not only can patents be used to prevent others from exploiting your invention during the patent term, they may be licensed to third parties in order to provide a separate income stream.
It is critical not to publicly disclose your invention before you apply for patent protection. Doing so will preclude you from applying for a patent.
Patents can be of crucial importance to life sciences companies, especially for products/processes with a costly and time-consuming development process, e.g. pharmaceuticals and biologics. Investors may also expect robust patent protection in order to protect their investment.
Patents tend to be less important when it comes to protecting fast-moving consumer goods which have a limited shelf-life. Some inventions may be difficult to patent. In the case of software, for instance, special rules apply such that patent protection is not always available. In these situations, alternative IP rights may be more appropriate.
An invention which may be very difficult to reverse engineer, such as a process for manufacturing a complex vaccine, may benefit from an indefinite period of protection (in excess of the 20 year patent term) for as long as it is kept secret. Secret formulas for certain foods and drinks have been protected by the law of trade secrets for decades.
It is important to seek professional advice before seeking patent protection, as the patent application process can be costly and time-consuming. Protecting patents by defending opposition proceedings and enforcing patents through litigation can also be expensive. Allocating adequate resources to determine the best strategy for protecting your IP rights and engaging the right professionals to assist you is therefore critical.
There are also several exclusions to patentability relating specifically to biotechnological inventions which you need to be aware of (please see further below).
When filing a patent application with a national/regional patent office or the World Intellectual Property Office (WIPO), applicants may claim "priority" from an earlier patent application filed within the preceding 12 months, provided the earlier application was filed by the same applicant (or its predecessor) and covers the same subject matter.
The later application is then given a "priority date" which corresponds to the filing date of the earlier application, and is effectively treated as having been filed on that earlier date. This means prior art from between the priority date and filing date (in addition to prior art from the filing date and after) may not be used by potential opponents to invalidate the patent. The later application is effectively "backdated" by a year.
For example, if an international patent application is filed with WIPO on 1 July 2020, it may claim priority from a GB application filed with the UK Intellectual Property Office (UKIPO) on 1 July 2019, provided the GB application was filed by the same applicant (or its predecessor) and covers the same subject matter. If this priority claim is successful, then potential opponents would not be able to use prior art from 1 January 2019 - 1 January 2020 (and thereafter) to invalidate the patent. The international patent application could then be pursued before e.g. the European Patent Office (EPO) while retaining the same priority date of 1 July 2019.
The timelines in the following section give an indication of the patent application process before the UKIPO, WIPO and EPO. Please note that the time taken to complete certain steps can vary greatly depending on the subject matter of the patent being applied for.
How are they obtained?
As patents are registered rights, once you have a potentially patentable invention that you wish to protect, you will need to file a patent application with the relevant patent office. We highly recommend that you engage a patent attorney with specialist expertise in your technical area to assist you with this process as the rules both as to procedure and drafting are complex.
What might be patented?
Products and processes which involve new and inventive technical innovations and which are not specifically excluded from patent protection.
Examples of patentable inventions:
Biopharmaceuticals based on antibodies or other gene sequences
The composition and structure of a bandage which does not adhere to wounds
The method for manufacturing "invisible" removable orthodontics
Patentable biotechnological inventions
Biotechnological inventions consisting of, or containing:
Biological material, or
a process by which biological material is produced, processed or used
may in principle be patented. This is the case even if the biological material occurs in nature, provided it is isolated from its natural environment or produced by means of a technical process.
Non-patentable biotechnological inventions
As a general proposition, the biotechnological inventions listed in this section are not patentable. A skilled patent attorney may nonetheless be able to draft around these exclusions to claim the invention (or some aspect of it) in an form that is patentable. For example, there are ways of drafting claims to overcome exclusions against patenting methods of medical treatment and diagnostic methods. If you are concerned about the patentability of your invention, speak to your patent attorney.
Plant and animal varieties
This is subject to the proviso that inventions which concern plants or animals may be patentable if the technical feasibility of the invention is not confined to a particular plant or animal variety.
In addition, inventions which concern a 'microbiological' or other technical process, or a product obtained by means of such a process, may also be patentable. ‘Microbiological processes’ are processes in which micro-organisms, or their parts, are used to make or to modify products, or in which new micro-organisms are developed for specific uses.
Processes for the production of plants or animals which are 'essentially biological' i.e. consisting entirely of natural phenomena such as crossing or selection.
The human body and the simple discovery of one of its elements, including the sequence or partial sequence of a gene.
However, an element isolated from the human body or otherwise produced by means of a technical process, which is capable of industrial application, may constitute a patentable invention, even if the structure of that element is identical to that of a natural element. This means the sequence or partial sequence of a gene may in some circumstances be patentable.
Inventions contrary to public policy or morality
Examples include processes for cloning human beings or processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to humans or animals.