Inventors Questions & Answers
answered by Laurence Shaw
Patent, Trade Mark and European Patent Attorney
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Q I have an idea for a device which seems too simple to be patented. It consists of nothing more than a wooden stick, although it does have to be a certain shape and it does have a specific purpose. Can something this simple be patented?
Julyan Ilet, Middlesex.
A The simple answer is that articles of a simple shape can be patented if they pass the test of novelty and Non-obviousness. There are patents on hockey sticks which are a simple shape of wood and wood substitute, and wall-ties which are just bent metal wire. Go ahead.
Q I am thinking of designing and marketing a new style of hat. Is it possible to protect the design, and if so, what is the best method?
P S Mallinson, Somerset.
A Yes, if by style you mean a new attractive shape then a design registration is what you want. If you mean a technically more efficient hat, e.g. new ventilation system, better ear flaps for skiers, then you could have a patent too. Consult your patent attorney after you have written-up a description and done a set of sketches.
Q Can I copyright an idea for a television or radio programme? If not, is there any way to protect my position?
M. Shillett, London.
A Your implied thought is that there is no copyright in an idea and that is probably true in law. However, if you write out the plot, and submit it to a TV or radio company with a copyright notice at the foot - © (Your Name) 2014 – you will have made the recipient aware of your claim to protection. You could add that a detailed script can only be written by you, or with your collaboration or approval. Also post a second copy of the write-up to yourself, but do not open the sealed stamped envelope but keep it under lock and key.
Q I think I have a good invention and want to create the desire for it. How do I go about it?
R Heavens, Avon.
A There are 101 ways and you need to try them. As a first step try to interest a relevant trade magazine to do a write-up, which should stimulate some serious interest.
Q Someone has just shown me a European patent document. The alleged invention is laughable, and I would resent anyone having a patent for this old idea. What should I do?
Michael Townes, Surrey.
A You need to check whether the patent is an application (in which case the document will have the suffix A, or is a granted patent (in which case the number will have a suffix B). If it is still a pending application you can write to the European Patent Office to complain, explaining why you object; if the patent was granted less than nine months ago and has not been opposed you will have to take action in the country where the patent has been registered. Either step will cost you money and you need to think carefully whether the benefit is worth the cost.
Q There must be a new energy for the generations to come but, as it cannot be patented, how do you suggest anyone experimenting with a perpetual motion machine protect their interests or find any support? Would a search be worthwhile?
A Magnus, Lancs.
A I recommend that you lodge a patent application avoiding the provocative phrase “perpetual motion machine” and then discuss the subject with a reputable academic. If he will endorse your idea his name should be sufficient to persuade a grant awarding agency to help you. I would not spend money on a search yet because if you are right, and the idea is that revolutionary, there is no point.
Q I approached a manufacturer who will not sign a confidentiality agreement. What should I do?
G Barber, Cardiff.
A You are being squeezed. If this manufacturer is the best one then let him have the information – sometimes a video of the gadget in use is more efficient than sending a copy of the patent text, so you might like to try that.
Q (1)n The dictionary definition of a ‘pole’ – as in a motor – is “one of two points of a body in which the attractive or repulsive energy is concentrated”. This is not entirely correct as the magnetic flux is substantially uniform across the entire face of a magnetic pole, not emanating from a point source. Can I write my own definition of a word in a claim, and if I do, would it stand up in court? (2) If you won a Limited Company whose name is not a proper word (say Splinge Ltd) does the Company have automatic and exclusive right to use the name ‘Splinge’ as a trade mark – e.g. Splinge Face Powder, Splinge Lipstick, etc.?
N Clarke, Hampshire
A (1) You are free to choose to define the meanings of words you use in a patent specification, and in Court proceedings the Judge will be grateful that you have made your meaning crystal clear.
A (2) Unfortunately getting a company registered under a name gives no guarantee that the name is free for use. Only a Trade Mark Registration will give you security so chat to a trade mark agent and apply to register SPLINGE for all goods in class 3 (You may be wise to choose something more elegant than SPLINGE!).
Q At last someone is interested in my invention and wants to buy a licence. What should I ask for?
S Butterworth, Manchester.
A Offer a licence limited to a country, e.g. the UK, in return for a down-payment and a running royalty on sales. The amount of the down-payment depends on how much you have spent on the project and the patent; the royalty rate will vary from industry to industry and whether the licence is to be exclusive or non-exclusive. For a mechanical invention aim for 8%, for a chemical invention say 10% - halve these figures if the patent is only pending.
Q I told a journalist about my prototype gadget and he wants to write an article about it for a newspaper. My patent application is only three months old. Should I let him?
A Sayles, Lincoln
A Yes, because the sooner you know whether there is a market for the gadget the better. Please double-check that you patent application mentions all the features of the gadget and everything else that the journalist will publish.
Q A bewildering range of firms offer patent services: patent agents; solicitors; business agencies; etc. How do I choose which to use?
M Stiles, London
A Always deal with an individual who is a chartered patent attorney. He/she will be properly qualified in intellectual property law, have proper insurance cover and should understand your invention. Make sure that you know the name of the person acting for you, and have a face to face meeting if possible.
Q I have a pending European patent application and I think the invention is being copied in Italy. Can I sue the Italian copyists or must I wait until the patent is granted?
A You cannot make the copyists aware of your patent rights in Italy until you supply the Italian Patent Office the European Claims translated into the local language, Italian. Once you have sent a copy of the Italian language Claims, plus the full text of the patent application, to the copyist he becomes fully aware of the risks he is running. He may want to buy a licence from you or he may decide to interfere with your negotiations at the European Patent Office so you need to handle the matter with care. Consult your patent attorney.
Q I have a wonderful idea but the search done by the Patent Office shows that there is no chance of patent protection. What should I do as I want to go ahead?
F Collins, Birmingham
A You must distinguish your product from its rivals by giving it a unique name, i.e. select and register a trade mark (which is also searchable). Also, you could design a particularly eye-catching shape, if it is an article, and protect that as a design registration.
Q My PCT (Patent Co-operation Treaty) patent application has reached the end of its life and I need to select the countries in which to proceed. Everything is so expensive; how do I choose which countries to go for?
N Leakey, Sevenoaks
A Choose countries where the invention will sell, and where there is expertise to make, and where the local courts are reliable. Bully your patent attorney for firm recommendations.
Q My patent application seems to be going forward at a snails pace but my invention is unique. Surely I should be granted the patent quickly?
R Peters, Dundee
A Ask your patent attorney to phone the examiner for news or do so yourself (quoting the patent application number). If you need the patent quickly you can ask for it to be processed by a fast track procedure.
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