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Patently obvious - why patents are important. 30/6/2004
ITS companies spend millions in R&D. They must if they are to increase or even maintain market share in the fast moving world they inhabit. Whether developing X-by-wire, co-operative vehicle/highway systems, off-board navigation or advanced communications systems for telematics, the costs are substantial and the potential rewards huge. But who would be willing to undertake such a venture without some guarantee of commercial success? What insurance is there that predatory companies will not immediately make use of the new technology so laboriously and expensively developed?

Patents have been around for a while now. In the formal sense in which Letters Patent are known, about 150 years but very much longer than that in an informal guise. Their purpose is precisely to protect the investment of individuals and companies who have developed new and inventive technology (or any other idea) and to encourage the publication of technical data that can be built on in the future. In a sense, patents are a bargain between an inventor and the state. The ITS company is granted a monopoly on the product, usually for 20 years, in return for which the state insists that the company provides all the details of their development invention for others to see and build on in the future.

Of course things can and do go wrong. Disputes arise, usually about either entitlement to the patent or its alleged infringement. Employees, former business partners and others may all claim to have been involved in the development of an idea and be entitled to the patent or at least a share in it. Patent holders who see their product being built and marketed by others will, naturally enough, want to put a stop to such activity and will allege infringement. Sometimes the disputes will go to litigation but not often.

"It is rare for the matter to go that far," said Rupert Cross, a Partner with the London-based patent attorneys, Boult Wade Tennant. "Of the 300,000 patents registered over the years and in force in the UK, less than 20 are contested each year in the High Court, of which about half fail. Far more frequent is the exchange of correspondence that settles the matter well before a bruising and expensive court appearance is ever started."

Avoiding litigation is a question of good preparation of the initial application and in following to the letter, the rules of the game. This can be a hugely expensive and time-consuming process taking between two and four years to complete. And while the cost - between €3,000 and €7,000 in legal fees to get started in the UK (much higher in complicated cases) plus around €45,000 for patent protection in the main industrial countries over 3 to 5 years - may seem high, the work involved in progressing the application is substantial and will probably need the services of a specialist patent attorney.

"The language involved in describing a new product in a patent application is complex," said Cross. "You have to remember that what the applicant is effectively doing is placing into the public domain all the technical details of his or her invention. It will, from day one, be available for anyone to read and copy. It is the attorney's job to make sure that what the inventor is seeking to protect is protected. Successful applications will ensure a monopoly on the technology for, typically, 20 years."

Well before that stage is reached, an idea must be established as both novel and inventive. It has to be novel in the sense that it must not, on the date of the application, have previously been in the public domain; what the Patent Office insists on calling 'prior art'. "You'd be surprised at how often somebody's bright idea has been thought of before," said Dr Jeremy Philpot of the UK Patent Office in Newport. "We ask people to conduct a search for prior art before incurring the expense of the application but many continue to submit their ideas only to have them rejected on the basis that they are not novel. It's not unusual for our own search of the relevant literature to turn up previous and undisclosed applications by the same individual or company for ideas which are only marginally different from their earlier ones."

And the definition of novelty must be taken literally, at least in Europe(1). If your own idea has been allowed to creep out into the public domain before the date of your application, whether you intended it to or not, you'll be in for a nasty surprise. In Lux Traffic Control Systems v. Pike, the plaintiffs developed an 'intelligent' traffic light and, before the date of their application for a patent, arranged for a demonstration for potential customers. At about the same time they sent the product to another potential customer at the customer's premises. In a subsequent court action the defendants raised the defence that there had been no infringement of the patent since the idea was not novel on the date of the application.

The court held that the public demonstration of the product prior to the application for the patent did not put it into the public domain since what had been demonstrated was its function and not its patented technology. Yet on the second point the court agreed that whether or not the customer who had received the product had actually examined the technology, was immaterial. He had been given the opportunity to do so and the product had therefore been placed in the public domain.

"The important point to note," said Dr Philpot, "is that if an inventor shows his idea to a potential customer without a condition of confidentiality, the patent is likely to be struck down at some future date. It's important for applicants to be totally honest with us regarding prior art including demonstrations to potential customers. Otherwise they are simply throwing good money away."

The second criteria for the grant of a patent is that the idea must be inventive and not simply a logical next step in the development of an existing idea, an obvious modification.

"The crucial test is whether a skilled person lacking any inventive ingenuity would find the new alternative obvious or simply a routine variation," said Dr Philpot.

The test for infringement of a patent usually depends very much on the precise wording of the Claims at the end of the patent specification. But the Courts will sometimes stretch the literal meaning to cover a close equivalent. In Dyson v. Hoover, the defendants argued that the patent should cover only the exact shape of the frusto-cone at the heart of the Dyson vacuum cleaner and suggested that the curved nature of their own cone meant there was no infringement. The court held that since the curved cone had the same effect as a frusto-cone, the defence must fail.

The decision illustrated the detail required to be covered in any application and how close Dyson came to losing the case. Most applications will run to many pages of carefully chosen text. One, by the British company Diamond Consulting Services (DCS) based in Aylesbury, Buckinghamshire, ran to around 50 pages of description for its Idris® inductive loop technology.

"Our patent application for an inductive loop technology that improved accuracy levels in vehicle counting and classification by a factor of 100, has been enhanced by on-going R&D," said Bob Lees of DCS. "It was an expensive exercise particularly when further applications were needed to cover foreign jurisdictions but absolutely essential to protect the huge investment programme involved in producing Idris. The description in the applications we made world-wide is written so that there is absolutely no room for argument about what is protected."

It is now possible to make a single international application which will be recognised across defined national boundaries to delay the high cost of protection outside the home country for up to 30 months after the initial application. After this individual applications in different jurisdictions are still required though protection in most of Europe can be obtained in a single application(2).

And after all that, what happens if someone infringes your patent? Companies like Dyson and DCS will always take vigorous action to defend their years of hard work. In most cases it is, according to Bob Lees of DCS, sufficient to wave a 'keep off the grass' notice in the face of the infringer but the ultimate sanction of litigation is always there in the background.

"The decision about whether or not to launch an action for damages has to be a commercial one," said Lees. "Provided you have done the job properly, the legal issue should never be in doubt."

Note:
(1) The rules on novelty are, in the USA, slightly different in that an application for a patent can be lodged up to 12 months after publication of the original concept.
(2) See the European Patent Office in Munich formed under the European Patent Convention and the World Intellectual Property Organisation in Geneva formed under the Patent Co-operation Treaty (PCT).

For further information, contact:
1. Rupert Cross, Patent Attorney of Boult Wade Tennant, London, Tel: #44 (0)20 7430 7500, E-mail: RCross@boult.com
2. Teri England of Diamond Consulting Services (DCS) based in Aylesbury, Buckinghamshire, Tel: #44 (0) 1296 747667, E-mail: teri@diamond.demon.co.uk
3. Dr Jeremy Philpot of the UK Patent Office, Newport, England, Tel: #44 (0)1633 814 981, E-mail: jeremy.philpot@patent.co.uk
4. Guy Lambert of Dyson, UK, Tel: #44 (0)20 7833 8244, E-mail: guy.lambert@dyson.com
 
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