A patentable invention must be new, inventive, industrially applicable and must not fall into an excluded category (for example in Europe business models, mathematical methods, artistic creations, medical treatments performed on a person and many computer programs are excluded).
The IP Commercialisaion office will be able to determine whether an invention meets the necessary criteria to be patentable.
Although seeking patent protection is an expensive process which takes a number of years , the rewards can be significant. It is important to understand that if inventions are not properly protected, rights can be irretrievably lost.
Information concerning patents and publications, the patent filing process and inventorships is available below. If you would like to further information contact the IP Commercialisation office.
Patents and Publications
The possibility of obtaining patent protection can be lost by publication of the underlying research before an application has been filed. No information on a technology should be made available to the public in any way, anywhere in the world prior to a patent application being filed. This includes journal letters or articles, grant applications, oral presentation or any information provided through electronic media.
Information which would facilitate someone skilled in the subject replicating your technology is termed ‘enabling’. Such a disclosure will usually destroy the possibility of obtaining patent protection.
The USA currently operates a different system to Europe and many other territories (operating a 'first to invent' system, rather than the 'first to file' system). If, following a review, it is established that a technology has been disclosed, the Technology Transfer Office will consider whether it would be possible/appropriate to file an application in the USA.
The IP Commercialisation office understands the importance of publishing research and will not take steps to prevent publication. It is important to understand that if appropriate steps are taken patent protection can be sought without unduly delaying publication. A patent application can be prepared and filed quite quickly once a patent attorney has been provided with all the relevant information.
Once a patent application has been filed we would ideally wait for the patent application to be published before any scientific publications are submitted but we understand that this is not always possible. It is important to keep the IP Commercialisaton office informed of any intended publication so that if necessary action can be taken to try to secure patent rights.
Following the filing of an initial patent application no information which is new or additional should be published without conferring with the IP Commercialisation office. It is possible that the new information could be included in the patent application. If the information needs to be included in the patent application the only way this can be done is by way of a new ‘top-up’ application; and the same requirement for novelty as stated above will apply where the new application is concerned.
The Invention Disclosure Form and Patent Filing Process
In completing the invention Disclosure Form you will be providing the IP Commercialisation office with important information to enable a thorough assessment of the technology to be carried out and for necessary due diligence work to be performed. It is advisable to complete the form in consultation with a member of the IP Commercialisation office.
The majority of the patent application filed by The University of Nottingham are filed initially in the UK which establish an international ‘priority date'. The progress of the technology will be reviewed nine months after the application is filed and if continuation is approved an international Patent Co-operation Treaty (PCT) application will be filed at 12 months. The PCT application secures the option of filing applications in a wide range of countries at a later date without the need to identify the countries of interest at the point of filing. It simplifies international patent filing and prosecution, and defers costs. Over 100 countries have signed the PCT, and these can all be designated in one patent application.
The progress of the technology is reviewed again 15 months after the PCT has been filed and a decision taken on whether the application should proceed to the National Phase. The examination process resulting in grant or rejection of the application occurs at the National Phase and is carried out independently by each national patent office the application has been filed with. The National Phase and subsequent Examination Phase are the most costly steps in the patenting process and progression to this stage is restricted to those inventions which show excellent technical progress, strong commercial potential and are likely to secure robust patent protection.
If approval is given for a new UK patent filing a meeting will be arranged with a patent attorney. At the meeting details of the technology will be discussed and any additional information required for the patent identified. Once the patent attorney has received all the information that is required, it will take approximately two weeks to produce a draft specification for review.
The specification is typically broken into four sections:
- Abstract – a synopsis of the invention.
- Description – a description of the invention akin to a scientific paper.
- Claims – a series of statements which define the invention. It is the claims that define the coverage that the patent provides.
- Figures – illustrations referred to in the description.
In preparing a patent specification the patent attorney will seek to capture the technology in detail and highlight those features of the invention which are new and inventive over and above what is already known.
The patent application will aim to describe the work in as broad a way as possible to avoid others from easily ‘inventing around’ your work. You will be encouraged to speculate as to the possible uses of your work to a level beyond that in an academic publication.
Once the draft specification has been approved the application will be filed at the UK Intellectual Property Office and the filing details will be provided shortly afterwards.
It is essential to identify accurately the people who made the invention(s) described in the patent application. Inventorship is a matter of fact, not opinion. Whilst those associated with research may be included as authors on academic publications, only true inventors may be included on patent applications.
If inventorship is recorded wrongly, this may be enough for the patent authorities to refuse grant of, or revoke a patent. Prior to the filing of a new patent application The Technology Transfer Office will request that those who have been involved in the development of the invention agree between themselves who should be named as an inventor on the application.
The IP Commercialisation office will provide an Assignment and Revenue share agreement for the inventors to complete and return. This agreement formalises the percentage of any revenue resulting from successful commercialisation of the technology each inventor receives. It should be noted that the contribution of non-inventors can be recognised on the same agreement.