Limits to the patent box – or, at least, to patents

Prompted by Forbes’ article about Steve Jobs shooting Apple in the foot, I thought I’d add a quick post about what seems to be a common misconception: whether you can patent an existing invention. I’ve certainly heard a few advisers (who shall not be named to spare their blushes) suggesting that companies should start to get patents over the inventions underlying their current products in order to get the benefit of the patent box.

That’s fine – as long as we’re talking about new, unmarketed, products (or new, unmarketed, improvements to products). If the proposal is for Company A to patent the invention underlying product B, which has been on the market for a couple of years, or about which there has been an article in a trade journal, or been described to a potential customer (unless under a non-disclosure agreement) or basically brought into the public domain in any way, then it’s not possible to patent the invention. Pace all patent attorneys, I know I’ve simplified somewhat, but I’m trying to get a general message across!

The UK Patent Office quite clearly states that “You must not have made your invention public in any way, anywhere in the world, before you apply for a patent for it. Conversations with patent agents, solicitors or our staff are confidential, so will not make your invention public.” Other European patent offices have a similar rule. So you can tell your patent attorney, and you can tell the Patent Office, but you can’t tell anyone else in general. That said, telling someone else under the terms of a non-disclosure agreement should also not count as making something public (depending on the terms, and depending on the appropriate terms not having been breached!)

In effect, in order to be able to patent something, there must be no prior art in respect of that invention. Prior art is the information made available to the public in any form before the application for the patent that might be relevant to a patent’s claims of originality – such as information which describes the invention in any way. The information doesn’t actually have to be read by any particular person, it just has to be made available to the public. A company can create prior art in its own invention in various ways – including by publicising that invention, or selling products based on it. All the originality in the world won’t help get a patent then; originality can’t get you a patent when there’s prior art in the invention.

By way of example, during a break in a seminar I was giving on the patent box, I overheard a patent attorney very firmly telling his client by phone that no, they couldn’t put out a press release about a product on the following Monday because the patent application would not have gone in by then. The client was told to wait on the press release until the application had been filed – and that was just a press release about a new invention, not even an actual sale of the invention. Or, as per Steve Jobs, cheerfully showing off the invention to an audience of millions.

Leave a Reply

Your email address will not be published. Required fields are marked *