Global innovation in green technologies shows marked increase via patent activity – new report

Business and research institution investment in green technology innovation – shown by the latest global patent filing activity – indicates increasing advances in some vital sectors, a new report says.

The inaugural Inside Green Innovation: Progress Report 2021, from leading intellectual property firm Appleyard Lees, analyses patent filings across several key areas of green innovation, including plastics, energy storage, and agriculture.

Common themes arising from the technologies being patented across these key industry sectors include:

  • Intense activity in green technologies that offer transformational solutions, such as agricultural drones used in precision farming, in vitro meat production and plastics recycling.
  • Improving mature technologies to help achieve net zero emissions via newer, renewable methods – such as innovation in long-term energy storage.
  • Producing new eco-friendly materials – such as biopolymers for plastics – to enhance environmental performance of the products they’re used in, for example in single-use plastic packaging.
  • Re-purposing fossil fuel facilities for greener applications – such as converting former mineworks to pumped hydro-storage plants.
  • Innovation responding to legislative pressures and consumer demands in certain countries.

David Walsh, Partner at Appleyard Lees, said: “Overall, our inaugural Inside Green Innovation: Progress Report 2021 aims to by-pass the environmental rhetoric and highlight the true state of progress in developing new, sustainable technologies.

“The patent system requires public disclosure of new innovations, providing a valuable resource to identify which innovations could bring new advantages to the world.”

Highlights of environmental innovation and associated patent filings across the technology spectrum of Appleyard Lees’ report include:

Bioplastics/plastics recycling

  • An upsurge in bioplastics – and acceleration in plastics recycling – innovation.
  • Finding affordable eco-friendly alternatives to existing plastics while maintaining functionality.
  • A focus on biopolymer composition and structure for greater strength and flexibility, as well as biodegradability.
  • Improving processes for breaking down and recycling polymers.

Battery storage

  • Solid-state battery technology challenging lithium-ion for future dominance in electric vehicles, offering advantages such as higher capacity, longer lifespan and lower greenhouse gas emissions in production.
  • Lithium-ion attracting ongoing investment in countries such as China and Germany, plus applications in non-vehicle industries including mining and chemical treatment.

Long-term energy storage

  • Continued investment in long-established technologies, such as compressed air energy storage (CAES) and pumped hydro-storage.
  • Dominant players emerging in particular industries and countries for CAES, such as Kobe Steel in Japan.
  • Patent filings in China to support conversion of former coal mines to pumped hydro-storage plants.

Conventional farming

  • Significant increase in agricultural drone patent applications – aimed at improving crop fertilisation, irrigation and pesticide application as well as sowing seeds and using sensors.
  • Rapid growth in CRISPR gene modifying technology to help crops become more tolerant to weather conditions, herbicides and bacteria.

Non-animal and soilless food production

  • Increasing patent activity in cultured meat production, including better recycling and removal of all animal elements.
  • Improvements in vertical farming including nutrient control, LED lighting and sensors for data collection.

The Inside Green Innovation: Progress Report 2021’s focus on plastics, energy and agriculture was chosen because the prominence of these topics in the global green innovation conversation, as referenced in the OECD’s and United Nations’ 17 Sustainable Development Goals and the World Intellectual Property Organization (WIPO) Green Innovation Database, a global innovation catalogue that connects needs for solving environmental or climate change problems with sustainable solutions.

*Appleyard Lees’ inaugural Inside Green Innovation: Progress Report 2021 is available to read here.

Intellectual property for start-ups in a post-COVID world: part five – managing know-how and trade secrets

This series of articles explores the effect of COVID-19-related disruption on start-ups’ management and monetisation of intellectual property (IP), giving practical guidance to start-ups to improve and preserve their position for the future.

In recent years, start-ups in the UK have made headlines for being acquired by tech giants for multi-million-pound sums. UK software and AI start-ups working in computer vision, natural language processing and deep learning in particular have grabbed attention for being bought, even at a very early stage, by Facebook, Microsoft, Apple, Amazon, and Google/Alphabet, while UK biotech start-ups have successfully won millions in series A investment rounds. In some cases, the start-ups have started to build a patent portfolio which piques interest and demonstrates the start-up has property and ideas that might be worth buying or funding. However, in most cases, it is likely that the value of the deal is based on more than just the patent portfolio and includes important but often overlooked intellectual property: know-how and trade secrets.

In this article, we look at what trade secrets and know-how are, and how the management of these IP rights may change while companies are operating under COVID-19 restrictions.

What’s stayed the same?

We understand that start-ups may need to conserve funds and make difficult choices to keep their business going during this difficult time. However, as know-how and trade secrets are unregistered IP rights that do not necessarily require an attorney’s involvement, managing these rights when start-ups are even more cost-constrained than usual is definitely possible.

Not everything has changed in the way start-ups should think about know-how and trade secrets.

Know-how is a type of intellectual property

Know-how is any form of practical knowledge or technical information necessary for accomplishing something. Know-how may include technical data, formulas, standards, technical specifications, raw materials, processes and methods associated with an invention, but which you generally do not want to reveal to the public as keeping it secret gives you a competitive advantage. For this reason, it is not something which is disclosed in a patent. Know-how is an unregistered form of intellectual property because the know-how is retained as confidential or near-confidential information within a company.

Know-how is an economic asset

Often when a start-up decides to license their IP to another party (e.g. to an OEM), the license agreement will include clauses concerning their patents as well as their know-how. This is because licensing the patent rights may not be enough for the licensee to use, exploit or manufacture the patented invention – the unpatented technical information, i.e. know-how, will be needed too. Thus, know-how is something that can be licensed too, which makes it commercially valuable to protect. Know-how is often what adds to the value of an acquisition deal. The tech giants realise that start-ups’ scientists and engineers have information and knowledge that not only enables the start-ups to produce their current product or service, but will likely result in further innovation.

Know-how is cheap to protect but may be costly to lose!

Know-how can be protected by a company fairly easily, as it simply requires the company to keep the know-how secret. Know-how should be documented and kept internal to the company. There are generally no restrictions on who can access the know-how internally. Partly due to the fact that know-how is not very well understood as a type of IP, companies can easily lose this economic asset. One very common way for know-how to be revealed is by its inclusion in a patent application that publishes – the know-how may have been provided to a patent attorney who unwittingly includes it in the patent application because there was nothing to indicate it was know-how. Another very common way to lose know-how is to lose where the know-how is stored, i.e. people! Many companies do not have procedures in place to manage know-how, and often it is employees who have the know-how in their heads. If the people leave the company for whatever reason, the know-how may be lost too if it was not properly documented.

Trade secrets provide protection for much longer than patents

Any confidential business information which provides a company with a competitive edge may be considered a trade secret. Commonly, trade secrets are manufacturing or industrial secrets, or commercial secrets. Trade secrets may encompass sales methods, distribution methods, manufacturing processes, consumer profiles, lists of suppliers and clients, etc. A famous example of a trade secret is the recipe for Coca-Cola – the company could have patented the recipe for the drink but this would have caused the ingredients to be disclosed to the public and their monopoly would only have lasted 20 years – by keeping the ingredients under wraps as a trade secret, the company’s market share has lasted for much longer.

Trade secrets are useful but risky

As mentioned above, trade secrets protect information indefinitely as long as the secret is not revealed to the public, and there because they are a type of unregistered IP, there are no registration costs involved. However, in order for the information to be considered a trade secret, you may be required to put systems and processes in place within your company in order to manage the trade secret, to restrict access to the trade secret to a limited set of people, and to monitor who accesses the trade secret. Trade secret law is less developed than patent law, varies significantly across countries, and some countries do not have trade secret law at all. This means theft of a trade secret is more difficult to enforce than a patent.

What actions can start-ups take now to protect their valuable information?

In many countries, COVID-19 has restricted movement and has resulted in people working from home. The drive to conserve cash and stretch budgets during this time means some companies may need to downsize their staff or place employees on furlough. Managing patents, know-how and trade secrets under these conditions may be a little more difficult, but there are some relatively straightforward actions start-ups can take:

Determine what you want to patent and what you need to keep secret

As the Coca-Cola story demonstrates, it is useful to determine at an early stage whether you want to patent your innovation or keep some or all of it secret.

Consider the patent route if the innovation or potential secret is patentable, and if a 20-year period of protection would be sufficient. In fast-moving fields, technology can be superseded quickly and the patent term may provide protection for the lifetime of the technology. If the potential secret could be reverse engineered when your product is on the market, patents may be more appropriate.

If you want to keep information secret, consider the level of secrecy required. For example, if the majority of engineers or scientists in your company need to know the information to do their jobs (and similarly, your competitors or commercial partners), then the information may be know-how. If the information has value to the business but does not need to be known widely within the company (or by your competitors or commercial partners), then the information may be a trade secret.

Document your know-how now

As mentioned above, know-how is often accidentally disclosed to the public within patent applications or may be lost when an employee leaves. The latter is particularly relevant at the moment – if company know-how is currently stored in your employees’ heads, then you are at risk of losing that information if an employee leaves or is on furlough. Documenting your know-how means you can easily check before a patent application is filed whether it contains any know-how. It also means you know what information you might need to provide to a licensee or commercial partner as part of a license agreement.

Review employment contracts

Take a look at the employment contracts of all your staff to ensure that they contain clauses on IP and in particular, know-how and trade secrets. If you determine you have or will have trade secrets, the contracts may need to include clauses that set out the disciplinary consequences of misuse. It may be a useful time to educate and train your employees about the importance of keeping information secret so that it can be properly protected (as patents, know-how or trade secrets) and commercially exploited by the company.

Start keeping records

Develop processes to mark documents as “confidential”, “confidential know-how”, and so on, and to track what information or document has been shared with third parties. Ideally, you should only share information with third parties if they have signed a confidentiality agreement. Keep a record of whether the third parties have signed a Non-Disclosure Agreement (NDA), what information can be shared under the NDA, and whether the agreement is indefinite or has an expiration date, and then consult this before you share any information with a third party.

Author: Parminder Lally, Senior Associate at Appleyard Lees IP LLP.

Intellectual property for start-ups in a post-COVID world: part two – trade marks

This series of articles explores the effect of COVID-19-related disruption on start-ups’ management and monetisation of intellectual property (IP), giving practical guidance to start-ups to improve their position in the market in the future.

Managing start-ups’ trade marks in a post-COVID-19 world

For IP-heavy companies, trade marks can be an incredibly important commercial asset. For start-ups in particular, whose value is often largely based on their product’s commercial potential but also their brand equity, protecting those assets through a trade mark filing programme is essential.

Even under normal circumstances, there can be uncertainty around what trade marks protect, how they can secure and add value to a start-up and how they are best managed. Now, in the wake of COVID-19, start-ups also need to understand how ‘normal’ management of trade marks needs to change, given the transformation their companies, and their markets, are experiencing during this unprecedented time.

What’s stayed the same?

Before the COVID-19 disruption, strategic management of trade marks would have been based on certain assumptions, for example, that funding was reasonably accessible, that brands’ priorities were largely based on their commercial circumstances alone and that markets were relatively predictable. Now, none of this can be taken for granted.

However, start-ups which need to conserve cash, reprioritise and make choices to keep their business going, can still achieve a level of trade mark protection by pivoting their strategy.

Not everything has changed in the way start-ups should think about trade marks.

Trade marks are still badges of origin

A trade mark distinguishes the goods or services of one business from another. Trade marks include (but are not limited to) single words, a string of words, logos, colours, smells and sounds. Trade marks play a fundamental role in consumers’ recognition of goods and association of those goods with a particular business. Organisations can own an unlimited number of trade marks, including primary brands, secondary brands and multiple logo(s). Unlike most IP rights, if trade marks are used and renewed, they can last indefinitely.

Trade marks must still satisfy certain requirements to be registrable

A trade mark must be distinctive and cannot be descriptive in respect of the goods/services covered.

Trade marks can still be registered or unregistered IP rights

Whilst it is not compulsory to register a trade mark, it is advisable to do so where possible, as there are many commercial and legal benefits, including:

  • Giving notice of the trade mark holders’ rights to third parties, thereby deterring competitors from using identical or similar words, logos, slogans and colours
  • Reducing the cost of enforcement
  • Adding value to the business’s asset register
  • Providing leverage in disputes and commercial negotiations
  • Licensing to third parties to generate royalties or to use as security to raise finance

Before adopting a trade mark, it is still prudent to check it is available for use

Trade mark searches help evaluate the infringement risk as well as the likelihood of successful registration of a trade mark. Difficulties may arise should a trade mark conflict with one registered earlier, and potentially spark an expensive and commercially embarrassing dispute, which might prove fatal to a fledgling brand. Searches can be brief and narrow in scope or more comprehensive, to identify similar marks covering similar goods and services.

What’s changing?

Post-COVID-19, there continues to be a strong incentive to register trade marks. However, different commercial drivers, changing markets and alternative access to funding mean that start-ups may have to conserve cash and make strategic choices. Start-ups can prioritise the following actions now:

Proceed to a trade mark filing without arranging searches

In some jurisdictions, the trade mark offices will issue a report highlighting any existing trade marks the examiner feels may be confusingly similar. Relying solely on this report will save on cost but increases risk.

Register key trade marks only

Lots of brand assets can be protected by trade marks, for example, a company name, a product name or a logo. To help reduce costs in the short term, one option is to identify all of the assets and protect just one or two immediately, with the remainder in the next 12 months.

It is worth bearing in mind that unregistered trade mark rights can be acquired in the UK. Simply using a trade mark will generate goodwill in that mark. However, unregistered trade mark rights are more difficult and expensive to enforce. As such, a trade mark registration should be obtained as soon as practical.

Limit the goods and services associated with a trade mark

A trade mark application must designate specific goods and services for which protection is sought. Ordinarily, businesses will list the goods and services they currently offer as well as goods and services they may offer in future, and finally, the goods and services they want to prevent others from using or registering.

A trade mark application that covers fewer classes goods and services will reduce costs in the short term but with a lower level of protection. Further applications can be filed later, covering additional goods and services. This strategy may not reduce the costs overall as multiple applications are required but it will assist with cashflow.

Delay obtaining trade marks abroad

Trade marks are territorial rights. As such, it is advisable file trade mark applications in the countries where they are going to be used, and where it is prudent to stop others from using them. However, the first trade mark application begins a six-month priority period, wherein trade marks filed elsewhere during this time are back-dated to the original filing date. This will help to spread the costs of trade mark filings over six months, and will ensure your rights are effective in all territories from the date of your original application.

Please note that the above information is not intended to be comprehensive and should be discussed with a qualified trade mark attorney.

Author: Rachel Garrod, associate trade mark attorney at Appleyard Lees IP LLP.

Intellectual property for start-ups in a post-COVID world: part one – patents

Intellectual property for start-ups in a post-COVID world is a series of articles exploring the effect of COVID-related disruption on start-ups’ management and monetisation of intellectual property (IP), an essential consideration for start-ups in the growth and development phase.

These articles focus on specific challenges start-ups are facing right now. Changes in the way start-ups could secure and manage patents and trade marks, address other relevant legal matters, attract investment, and protect IP on a budget, are being driven by these challenges. We provide practical guidance on how to manage your IP now in order to improve the position of your start-up in the market in the future, whatever that may look like.

Managing start-ups’ patents in a post-COVID world

Patents are one of the most well-known types of intellectual property (IP). However, what can be patented is often less understood by new entrepreneurs and innovators.

What’s stayed the same?

Not everything with respect to patents for start-ups is changing. Some things remain unchanged:

Patents are used to protect inventions: This includes new products, product manufacturing methods/processes, and methods for controlling a process or analysing data.  A new logo, product or company name is not patentable, as it is not an invention. Instead, these are protected by trade mark, which will be discussed in a later article in this series.

Inventions must be new: Patents are a type of registered right. An invention must fulfil specific criteria to be patented.  Importantly, the invention must be new; this is assessed with respect to everything that is already in the public domain, in any format, in any language, in any country, at the time a patent is sought.

Secrecy is important: Publicly disclosing the invention in any way, such as via a press release, an academic paper, a conference or trade show presentation, or even just talking about your idea casually, may mean a patent cannot be obtained. Start-ups often need to talk to investors or funding bodies about their work in order to raise money for the business, including money which might be spent obtaining a patent.  These discussions should be confidential as well, through confidentiality agreements or non-disclosure agreements (NDAs).

Patent holders can stop competitors from making or selling their invention: Patents do not confer a right to start making or selling a new product, or to use a new method. Rather, a patent holder has the right to stop another company exploiting his or her invention without permission.

Patents are national IP rights, meaning that a patent issued in a particular country is enforceable against a company that is infringing the patent in that country.  Patents therefore should be sought in the countries where the invention will be commercialised. This does not necessarily mean an invention must be patented all over the world. Often it is sufficient to seek patents in the company’s largest markets only, such as Europe, the USA and China.

Ownership of inventions varies around the world: In some countries, including the UK, if an employee invents something as part of their normal duties, the company owns the invention and the right to apply for a patent.  However, if someone in your marketing team invents something, they may own the invention themselves. This needs to be considered carefully, particularly if a company hires contractors or academics to undertake research and development.

What’s changing? 

Pre-COVID and post-COVID, the reasons for patenting your invention are largely the same. Patenting an invention can be relatively expensive for start-ups, who sometimes, understandably, question the value of IP. However, patenting an invention is still wise, because patents can help start-ups to:

  • Secure market position and financial return on commercially successful innovations, by preventing third parties from using their patented inventions,
  • Obtain greater negotiating power when collaborating with other companies, and
  • Attract investment partners and support business expansion, as they demonstrate that a company has a high level of technical expertise.

However, as we begin to experience the effects of COVID-related disruption, start-ups in particular may need to make difficult decisions. With limited resources, what should a start-up prioritise now, with respect to their inventions and approach to patents?

Some start-ups may find it more difficult to begin commercialising their inventions at this time, because commercial partners may be more difficult to find, it’s not the right time to launch a product on the market, or because manufacturing has stopped. In the meantime, it would be wise to:

  • Delay the patent process – this can buy valuable time, to allow manufacturing to re-start, funding channels to open up once more, or lab-based development to begin again. More information on slowing down the patent process can be found here.
  • Keep ideas secret– if a start-up has not started the patent process yet, the most cost-effective way to protect their inventions during this time may be to simply keep their inventions secret. As long as the inventions are kept secret, a patent application can be filed for the inventions at a later date.

During lockdown on the movement of people, inventors may have more time for IP-related admin, which is often overlooked in busier times.  For example, start-ups could use this period to:

  • Develop processes for invention capture and protection within the company – implementing these processes will help the company to grow its patent portfolio when the business expands, and employees become busier.
  • Brainstorm around their existing inventions in order to identify work-arounds or other ways their inventions could be implemented – this could help to broaden the scope of any patent applications they file, and to strengthen their patent portfolio.
  • Writing-up existing ideas using invention disclosure forms – this, in conjunction with the brainstorming, can ensure an invention (and all its variants) has been fully thought through. Patent attorneys want as much technical information as possible when drafting a patent application, so spending time writing-up ideas now means the patent drafting process could be smoother and quicker.
  • Identify their competitors or potential partners – keeping an eye on what other players in a field are doing is important as it could spark innovation or suggest a different avenue to explore. It could also help companies to identify potential R&D or commercialisation partners, potential licensees (which is a revenue-stream that is often overlooked), or potential problems.
  • Identify their primary and secondary markets – companies need to think carefully about where they are likely to make and sell their inventions, as well as where their competitors might be located. Patents last for twenty years, so companies need to look ahead and think about which markets might become important and where manufacturing hubs may be located in the future. This can help to determine companies’ patent filing strategies.  Spending the time on this now means start-ups have a strategy they can refer to when they start or restart the patent process.

Author: Parminder Lally, Senior Associate at Appleyard Lees IP LLP.

IP audits and the UKIPO’s ‘IP Audit Plus’ scheme

Johannes Biniok is a European patent attorney. Johannes advises clients seeking to protect their technology, particularly by means of patents, utility models and industrial designs. Johannes works closely with a diverse range of clients, from individuals to FTSE 250 companies. His work is equally diverse, ranging from gas turbine engines to subsea electrical couplings and he has recently been working on public safety measures.

The key benefits of an IP audit under the ‘IP Audit Plus’ scheme:

  • Intellectual property can make a business more attractive to investors, by securing innovation and brands as assets.
  • UK businesses can apply to the UKIPO for funding to cover some of the audit cost.
  • Further funding is now being provided to help businesses take forward the recommendations coming out of the audit.

IP audits – getting started with intellectual property (IP)

Intellectual property (IP) can help attract funding and investors, by securing a business’ innovation and brand.

Unlike other business assets, such as machinery or property, IP is intangible and therefore much more difficult to pinpoint. In addition, there tends to be a lack of awareness of the benefits that secured IP can provide.

The UK Intellectual Property Office’s (UKIPO) ‘IP Audits Plus’ scheme provides a convenient route into the world of IP, as UK businesses can apply for funding under this scheme, to cover the majority of the cost[1] of an IP audit.

Applications for funding can be made through Innovate UK Edge: https://www.innovateukedge.ukri.org/contact-us.

 

What is an IP audit?

An IP audit is a formalised process of tasking an IP professional (and sometimes a whole team of IP professionals) to review the IP of a business with the goal of identifying and cataloguing the business’ potential patents, trade marks or designs, and making recommendations for improving its IP position.

Examples of IP:

Patents

Trade marks

Designs

What are the outcomes of an IP audit?

An IP audit concludes with a final report which summarises all IP that has been discovered and sets out a recommendation for how the business can best protect and utilise its IP.

The value of such a report can be immense, setting out business assets hitherto unnoticed and so providing a better understanding of the business’s assets and, ultimately, value. Thus, the contents of the final report may well inform decisions concerning the future of the business.

In some cases, it may be beneficial to further analyse the findings set out in the final report, such as a valuation of the identified IP assets in order to put a monetary value against each IP asset.

Other further actions that may be taken in view of the final report may involve measures to protect the IP assets set out in the final report.

Funding for actioning the IP audit report

The IPO has recently launched a new IP support scheme for businesses that have completed a part-funded IP audit between April 2020 and March 2022.

The scheme provides businesses with additional funding[2] to take forward some of the recommendations provided within the IP audit report.

Further details can be found here: https://www.citma.org.uk/resources/uk-ipo-launches-new-ip-support-scheme-mb21.html

[1] Total budget capped at 3000GBP (incl. VAT); IPO contribution 2500GBP (incl. VAT); business contribution of 500GBP (incl. VAT).

[2] 5000GBP for professional fees (does not cover any official fees)

Visit our start-up IP insight collection, for more analysis of the IP issues relevant to start-up businesses.

Someone’s copying my invention! What should I do?

About the authors:

Parminder Lally is a senior associate at Appleyard Lees IP LLP. Parminder specialises in drafting and prosecuting patent applications for computer-implemented inventions. She has built a substantial reputation working with high-growth start-ups, spin-outs and SMEs in Cambridge, and has in-house experience.

Simon Ambroz is a trainee patent attorney. He primarily specialises in prosecuting and drafting patent applications for computer-implemented inventions and helping start-ups and SMEs to grow.

Start-ups should consider protecting their technical innovation by filing a patent application. Some reasons for doing so are explained in our earlier article here: https://appleyardleesgreenshoots.com/intellectual-property-for-start-ups-in-a-post-covid-world/.

Once your application for a UK patent is granted, the resulting granted patent gives you the right to prevent others from making, disposing of (e.g. selling or supplying), offering to dispose of, using, importing, or keeping your invention in the UK, where your invention is defined by the claims of your granted patent. It is important to note that it is possible to enforce your patent rights against the others only after the patent has granted. However, the journey to the grant of a patent may take several years, usually around four and a half years in the UK. What do you do if, before you have obtained a granted patent, a third party starts selling a product that looks like your invention?  Is there anything you can do to stop the third party?  Does your patent application provide you with any rights before the patent is granted? This article answers these questions.

Provisional protection in the UK

Many UK-based companies file their patent applications in the UK first, and then a year later, may file patent applications in other jurisdictions. So, we first look at whether you have any pre-grant rights in the UK.

In the UK, you may benefit from provisional protection. In short, where an application has been published, the applicant has the same right to bring infringement proceedings for any acts occurring between publication and grant that would eventually infringe the patent. However, there are certain conditions for obtaining provisional protection.

Specifically,

  • the application must be published in English;
  • the infringement proceedings must begin after the patent is granted; and
  • the infringing act must infringe the claims as originally published as well as the claims in the granted patent.

With respect to the last point, if the patent is granted with claims of a different scope than the published claims of the patent application, the amount of damages awarded is reduced, where it was not reasonable to expect that a patent covering the act of infringement would be granted.

Typically, patent applications are published 18 months from the earliest priority date. However, if you suspect someone is copying your invention without your permission, you can bring publication forward so that you can benefit from the provisional protection provided by the publication of your patent application. It is possible to request early publication of your UK patent application. A reason for this expedition is needed. Possible infringement is a valid reason for early publication.

After early publication is requested, you will most likely want to use every other tool in the toolbox to expedite prosecution of the patent application because as mentioned above, only granted patents may be enforced. For example, in the UK and Europe, it is possible to request the search and examination processes be accelerated. In the UK a reason for the acceleration is required, whereas acceleration can be requested at the EPO without needing to give a reason. There are also other things that you can do to speed-up the process to getting a granted patent. At Appleyard Lees, we have the expertise to help you when you find yourself in this situation.

Provisional protection in other countries

As you may know, patents are jurisdictional. It means that if you have a UK patent, but you want to protect your invention in Germany, you cannot use the UK patent to enforce your rights in Germany. You will need a patent in Germany as well.

As mentioned above, many UK companies start with a UK patent application.  To spread-out some of the costs, UK companies may file a PCT patent application a year later.  A patent application filed under the PCT scheme is sometimes called an “international application”. The main benefit of the PCT scheme is that it allows you to pursue patent protection in multiple countries via a single patent application. Once you file an international application, you have several months (up to 30 or 31 months from the earliest priority date) to decide in which countries you want to obtain patent protection. After you decide in which countries you want to protect your invention, you must ‘convert’ the PCT application into national patent applications in the countries of interest.  In most instances, this means filing some forms at the national patent office of the countries you are interested in, and paying patent office fees, and in some cases, filing a translation of your patent application in the local language. After this ‘conversion’ is performed, each national patent application gives you the same rights as if the patent application was initially filed in that country.

However, how does provisional protection work under the PCT scheme?

The good news for UK companies is that since your PCT publication will be prepared and published in English, you will automatically receive provisional protection in certain countries where English is an official language, such as the USA and Canada, without needing to take any specific action. This is good news because the USA and Canada are important markets for many companies. Of course, you would still need to obtain granted patents in these countries if you wish to enforce your patents and benefit from provisional protection.

The laws of some countries, such as Brazil, Mexico, and Japan do not provide provisional protection. The only way of obtaining enforceable rights in these countries, and many others, is by filing your patent application in these countries (e.g. by ‘converting’ your PCT application into a Japanese patent application), providing a full translation of the entire specification and prosecuting the patent application to the grant.

It is also possible to obtain provisional protection in Europe. There are two methods to do so.  Provisional protection may be obtained by ‘converting’ your PCT patent application into a European patent application (by taking the necessary steps at the European Patent Office). Alternatively, provisional protection may be obtained by ‘converting’ your PCT application into a national patent application in a particular country in Europe (e.g. Germany Which of these two methods you use depends on how many European countries you wish to obtain patents in, but the following steps to obtain provisional protection apply to both methods.  Briefly, you will need to translate the claims of your PCT application into the official language of each country in which you wish to obtain provisional protection, and file the claims at the relevant patent office. For example, if you want to obtain provisional protection in the Czech Republic, you will need to translate your claims into Czech and file them at the Czech patent office.  The translation of the claims will be published, which satisfies one of the above-mentioned conditions to obtain provisional protection.

Conclusion

If you have filed a patent application and are worried that someone may be copying your invention without your permission, get in touch with us.  We can advise you on whether you have, or will be able to get, provisional protection, and what steps you need to take to get a granted patent you could enforce.  There are other actions we can take to help you deal with any potential infringers too.  If you find yourself in this situation, do not hesitate to contact any one of the patent experts at Appleyard Lees for guidance.