In this two-part glossary, Appleyard Lees partner and patent attorney Parminder Lally, and trainee patent attorneys Debora Dorn and Ryan Newcombe, take you through some of the key terminology you may come across when you’re going through the patent process.
You’ve devised a new invention, read our article about who can help you to patent it and, just when you thought you could relax and forget about patents for a while, your patent attorney sends you emails with lots of mysterious words in them! There’s a lot of legal jargon to wrap your head around. We feel your pain – we have to learn all that jargon too when going through the attorney qualification process!
In this two-part article, we provide a glossary of patent terms, relevant to founders looking at protecting their innovation.
In part 1, we discuss the patent basics, the contents of a patent application, and where you can file patent applications.
The patent basics
Patent = a patent is a type of intellectual property (IP) right, which specifically protects technical or scientific inventions. (We’ll be covering other types of IP rights in another glossary).
Just like any other forms of property, such as a house, a patent has an owner and patents can be bought, sold, ‘rented’ (i.e. licensed to others), and so on.
A patent is a legal document that contains information describing an invention that is protected by the patent. In return for making the information about the invention publicly available, the owner of the patent is given the right to prevent others from copying or using the invention without their permission. This is sometimes referred to as a “monopoly right”.
Patentability = in order to be granted a patent, an invention needs to satisfy some requirements set in patent law. So, when we talk about the “patentability” of an invention, we’re talking about whether it satisfies these requirements.
Your invention must not be excluded from patentability. There are some things which cannot be patented in most countries, including the UK, Europe and the US, and these include business methods, mathematical methods, scientific theories and computer programs as such. The “as such” is very important, because it means that you cannot patent a new equation or code of a computer program, but you may be able to patent uses of that new equation or the functions of the code. A patent attorney will be able to advise you on whether your invention falls into one of the exclusions.
We could talk at length about the requirements(!), but here is a summary of three important ones:
1. Your invention needs to be new / novel. A Patent Office searches through everything that was already known to the public before the priority date (see below) of a patent application to determine whether the invention is new.
2. This is why it’s important to keep your invention secret until after you have filed a patent application. If your invention is already in the public domain, it will form prior art (see below) against your patent application and therefore, it will be difficult – possibly impossible – to obtain patent protection.
You may also be surprised by what’s considered a disclosure of your invention – this includes making the invention available to the public in any way, for example, by telling people in the pub about it, selling a product incorporating the invention, testing the invention in public, or even making YouTubes videos that show how the invention work! If in doubt remember “keep it secret, keep it safe".
There are some exceptions to what counts as a public disclosure. For example, telling people such as investors, about the invention in confidence may not be considered a public disclosure. This is why it’s always best to have a confidentiality agreement, such as an NDA in place when you absolutely have to discuss your invention with others. However, the best way to ensure that disclosing your invention doesn’t impact patentability is to file a patent application before doing so.
3. The invention needs to be non-obvious or involve an inventive step, over what is already in the public domain. This prevents people from patenting straightforward modifications of known inventions. A Patent Office searches through everything that was already known to the public before the priority date of a patent application to determine whether the invention involves an obvious or non-obvious tweak or combination of what is already known.
Patent applicant = This is the entity who applies for, and will eventually own, a patent for an invention. The applicant could be a natural person, i.e. an individual or group of individuals, or could be a legal person, i.e. a company, University, or charity. Multiple entities may be listed as the applicants on a patent application – this usually occurs when an invention arises from an R&D collaboration or joint development agreement. When the applicant is a legal person, such as a company, we need to explain how the applicant obtained the right to file a patent application from the inventor(s) of the invention.
Patent proprietor = This is the entity that owns a patent once a patent has been granted for an invention. Often the patent applicant and patent proprietor are the same. However, similar to other forms of property, patents can also be assigned or sold, and ownership can therefore change.
Inventor = this is the “actual deviser” of the invention, i.e. the person who came up with the inventive concept of the invention. There may be more than one inventor if several people jointly devised the invention. However, someone who only performed some routine experiments to build or test the invention is unlikely to be considered an inventor. Determining who is and isn’t an inventor is important for determining ownership of an invention, as explained in this video.
Contents of a patent application
As mentioned above, a patent has to be applied for. A patent application must contain a description of the invention, including any drawings or figures which are referred to in the description to help explain the invention, one or more claims, and an abstract.
Description = this is a section of a patent application that does exactly what it says on the tin! This is where the invention is described or explained. The aim of this section is to describe the invention clearly enough, and in enough detail, for someone else to be able to re-create the invention by reading the description. A good analogy for the description is a cake recipe – a cake recipe includes a list of ingredients and their quantities, as well as the instructions to bake the cake, including details such as cake tin size, oven temperature and baking time.
Claims = this is a section of a patent application which defines the legal scope of protection being sought. That is, in a patent application, the claims define the extent of the monopoly that you are trying to obtain, and in a granted patent, the claims define the extent of the monopoly that has been obtained. Because of this, the claims sometimes contain what may seem like an odd mix of legal and technical terminology.
Every patent/ patent application contains at least one “independent claim”. Independent claims define an invention in the broadest possible way. Independent claims should therefore only include the essential features of an invention, i.e. those features or steps which are absolutely necessary in order to make the invention work.
Patents/patent applications may contain one or more “dependent claims”. Dependent claims relate to other important (and non-trivial) features of the invention, which build upon the invention defined in the independent claims. You can most easily spot a dependent claim in a patent/patent application, because dependent claims refer back to another claim.
Where can you file a patent application?
Territory or jurisdiction = this is a fancy way of referring to the country or regions in which you can apply for a patent.
Patents are jurisdictional, meaning that you need to apply for a patent in each jurisdiction in which you want your invention to be protected. Each of these jurisdictions usually has its own Patent Office, patent law and application process. (See also the “key IP offices” section of our IP glossary). A jurisdiction may be a single country, like the United Kingdom or Canada. A jurisdiction may be a group of countries, such as the group of countries that fall within the European Patent Office (EPO) system or those which fall within the African Regional Intellectual Property Organisation (ARIPO) system.
You may have heard of the EPO, the UK IPO or the USPTO. These are the European, UK and US Patent Offices respectively. While the UK IPO and USPTO only let you apply for a patent in the UK and US, the EPO lets you obtain patent protection in a number of member states. These member states include most European countries, including the UK, France and Germany.
PCT = this stands for the Patent Cooperation Treaty, which is the law that allows applicants to file a single application that covers multiple jurisdictions. The PCT system makes it easier and more convenient to obtain patents in lots of different countries or regions. An application for a patent can be made under the PCT system, which is called a PCT or International application.
However, there is no such thing as a granted PCT patent. This is because the PCT system only streamlines the filing of an application that covers multiple jurisdictions, and does not grant patents. The PCT system leaves the granting of patents to the Patent Offices of each jurisdiction that is part of the PCT system.
This means a PCT application must be converted into national or regional patent applications in order to obtain patents in those nations/regions. The conversion is not automatic and actions must be taken by certain points in time in order to start the national/regional patent process. This is called “entering the national/regional phase”.
For example, if patent protection is sought in the US via a PCT application, then the PCT application must enter the US national phase by a certain deadline. The same action must be performed in each country or region where patent protection is desired.
A PCT application is perhaps best understood as a tactic to delay costs associated with obtaining patent protection in several countries. The PCT system buys applicants time to raise investment, find customers, or identify important commercial jurisdictions for their inventions.
First filing requirement = this is a legal requirement set by each jurisdiction’s patent law, which specifies whether a patent application for an invention must be filed in that jurisdiction first, before filing in other jurisdictions.
Where you file patent applications usually depends on your commercial goals. However, sometimes, patent law dictates where you have to file your patent application first. This is usually the case if one of the inventors or applicants is a national or resident of a country that has a “first filing requirement”, or if the invention was devised in a certain country.
For example, any inventions devised by Inventors who are Greek nationals have to be filed in Greece first, while any invention developed on US soil has to be filed in the US first. It’s important to be mindful of this when developing inventions in multinational teams, as the penalty for ignoring this requirement can be invalid patent rights, fines, or even prison! More information can be found here.
See Part 2 of this glossary for explanations of the key stages and terms between filing a patent application and obtaining a granted patent.