O'Connor Intellectual Property

In order for an invention to be patentable, it must be novel, or in other words new, and inventive, or in other words non-obvious. There are other requirements, but these are essentially the two most important features. A common misunderstanding is that something must be very complex in order to be granted a patent. This is simply not the case. Patents are granted for technical solutions to technical problems. Once the technical solution is both new and non-obvious, it is a patentable invention. We often find that people believe that once something has been done, it was a relatively trivial improvement and they simply forget the difficulties posed before they provided a particular solution to that problem. It is therefore important to look at those processes or products that you have devised before disclosing them to the public with a critical eye to determine whether there were features or steps implemented by you that overcame certain technical problems that could indeed lead to patentable inventions.

A patent is a monopoly

First of all, a patent grants you a monopoly for the invention. Therefore you have the ability to prevent all other competitors from making, offering, using or importing the patented technology. This monopoly can help you gain a valuable foothold in the marketplace. A classic example of the use of patents in such a manner involved Dyson® and Hoover® in the United Kingdom. Before Dyson entered the market, Hoover was reported to have 25% of the UK vacuum cleaner market. Hoover was kept out of the market of bagless vacuum cleaners for many years due to the Dyson patents relating to bagless vacuum cleaners. Within ten years, Hoover had less than 10% of the total market and Dyson had built up a market share of over 50% of the UK market from nothing in the same period of time.

A patent is a threat of litigation

Secondly, a Patent can often be seen as a “Beware of the Dog notice” and the threat of patent litigation is often sufficient to ward off competitors. This is due in part to the expense and in some jurisdictions the vast awards given out in patent infringement suits. Although it is impossible to calculate the number of parties that have not entered into a particular market due to the presence of patents in that space, it is clear to see how patents can be an effective barrier into a marketplace.

A patent can open up licensing opportunities

Thirdly, patents can provide licensing opportunities that can create new revenue streams and open up otherwise closed markets. For example, it may be possible to license a third party to use your technology in a market in which you do not have a presence. Furthermore, patents can prompt opportune cross-licensing agreements between parties. If two parties have patents in a particular field it may be to their advantage to license the other party their patents in that field thereby allowing both parties to exploit the technology to its fullest extent. Indeed, in order to ensure uptake of a new technology, it may be preferable to license the technologies to other parties, even competitors, so that it is introduced as a standard in the field. This is often cited as one of the reasons of the success of the VHS® format over Betamax®.

It is interesting to note that litigating and licensing your patents are not mutually exclusive activities. Many companies have been able to use both strategies to their advantage. For example, in 2006, InterDigital Communications, owner of an extensive worldwide patent portfolio numbering over 3,000 patents, won awards totalling $387 million against Nokia and Samsung while at the same time they entered into a $285 million licensing deal with LG Electronics.

Patents are an asset

Fourth, patents have a value as an asset to the company. In some cases, for example a technology start up, a company’s most valuable asset may be its patent portfolio. This asset can help attract investment and provide the basis for a valuation of the company.

Patent royalties are tax free

Fifth, it has been well publicised that there are various taxation benefits for Irish residents holding patents. Under the current legislation, payments for the use of patents where the R&D took place in the EEA are free of all income, corporation or other taxes. The incentive is a reward for commercialising research where the results of the research are patented.

Patents can be used to avoid litigation

Finally, patents can be used to avoid litigation. This is particularly the case when two parties with extensive patent portfolios are involved. Very often, litigation can be avoided with a threat of a parallel action by a defendant for infringement by the plaintiff of one or more of the defendant’s patents.

No. If you disclose your invention to the public prior to filing a patent application, you will render the invention unpatentable in most jurisdictions around the world. If absolutely necessary, it is possible to disclose aspects of the invention to a limited number of parties under the strict conditions of a written confidentiality agreement. However, for the avoidance of any doubt, it is always preferable to file a patent application prior to making any disclosures.

No. Once you have the application filed, you are free to disclose the material contained in the patent application. Care however should be taken if the application that you filed was the first application for the invention and you intend to carry out further development of the product/process over the following 12 months prior to filing further applications for the invention.

Usually, it is possible to draft a patent application and file it within four to six weeks. Much however will depend on you, the quality of the information that you provide us with and how quickly you provide us with your comments/corrections to the draft patent application. (For more information on the patent filing process, see the section entitled “Guide to the Patent Process”)

No. This is a very common misconception. Many people believe that they need to get patent protection in every country around the world in order to protect their invention. This is simply not the case. You only need a patent in a particular country if you want to stop people using the invention in that country. Remember, your patent prevents importation of an infringing product into a country where you have patent protection. Therefore, if you only sell your goods in Ireland and the UK and have no ambition to sell your goods elsewhere, then it will be sufficient for you to have patent protection in Ireland and the UK only. It is not possible for a third party to make the patented product elsewhere (China and India are often used as examples in cases such as this) and then import the patented good into Ireland or the UK as your patents prevent importation into those jurisdictions. True, the third party can make the product in India or China and sell it in France, for example. However, as you do not have a market in France and don’t wish to have one there, this should be of little concern to you.

No, there is no such thing as a worldwide patent. However, it is possible to file a Patent Co-operation Treaty (PCT) patent application that covers over 140 countries around the world. The PCT application is filed in English and remains pending in each of the 140+ countries for at least 30 months. At the end of the 30 months, you can pick and choose which if any of the 140+ countries that you wish to pursue patent protection in.

Likewise, there are various other conventions that allow you to file a single patent application that covers a large number of jurisdictions. For example, it is possible to file a European Patent Application covering (as of 1st August 2010) 40 jurisdictions across Europe including all 27 EU member states. The application can be filed in English and is searched and examined by the European Patent Office. If granted by the European Patent Office, each of the 40 jurisdictions will accept the patent as a granted patent in their jurisdiction subject in most cases to minor formality requirements being completed in the jurisdiction.

No. The requirement that the invention is new applies worldwide and not simply in this jurisdiction. Therefore, if the product has been on sale in another country, it is no longer new.

In many cases, this is incorrect. There is a common misconception that all software is not patentable however this is simply not true. Essentially, if the software invention provides a technical solution to a technical problem, then it may still be a patentable invention.

This is also incorrect. The European Patent Office has been granting patents for software inventions since the mid-1980s. Again, if the invention provides a new and inventive technical solution to a technical problem, it is a patentable invention regardless of the fact that it is implemented in software.

Not necessarily so. The cost of obtaining patent protection depends predominantly on where you wish to obtain patent protection and the route you take to get that protection. In most cases, it is possible to get the first application filed for a few thousand Euro. We suggest that you contact us to discuss a patent filing programme that suits your needs and budget. We believe that you will be pleasantly surprised.

Contact us for a free initial consultation in our offices in Blackrock, County Dublin. It is of significant benefit if you complete the Invention Disclosure Form and provide it to us in advance of the meeting so that we can prepare for the meeting. For an Invention Disclosure Form, please click here.