01 November 2016

Applying for Patent Protection through the Patent Co-operation Treaty without a Patent Attorney

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Today the Intellectual Property Office has published a 32-page guide entitled Patent Co-operation Treaty for Private Applicants. A private applicant is someone who wants to apply for a patent without using a patent attorney (also known as "a patent agent").

On the third page of the booklet the following warning appears in capital letters:
I endorse that warning. It is not too difficult for a reasonably intelligent and well-educated  business owner to register a design or even a trade mark but obtaining patent prevention is a completely different ball game.

A patent is a monopoly of an invention which is granted only if the invention is new, not obvious, useful and falls outside a number of statutory exceptions and a document known as "the specification" discloses the invention with sufficient clarity and detail for the invention to be made or worked by anyone with the right skills or experience. Drawing up the specification is not easy. If it is too wide it may be invalid and if it is too narrow competitors can often make use of the concept without infringing the patent.  It takes several years of book learning and on the job experience for a graduate in a natural science, engineering or technology to learn how to draft such specifications. If you haven't had that training your chances of getting it right are not good.

Nevertheless, there are folk who have a go at drafting their own patent applications and for them the IPO has published a series of guides starting with Before you apply for a patent and continuing with Patents Step By Step and Patenting your Invention.

Now the IPO can only grant you a patent for the UK which is about as useful as a chocolate fireguard if you want to make or sell your invention anywhere else. There is no such thing as a world patent or even a European Union patent though our government did sign an agreement for a unitary patent which would have covered the territories of most European Union countries including the UK but Brexit has probably put paid to that (see  IP and Brexit: Private Inventors 5 July 2016), If you want patent protection for your invention outside the United Kingdom you have to rely on an international agreement known as the Paris Convention for the Protection of Industrial Property which gives you one year in which to apply for patents everywhere else.

Now it is at this point that I advise you to watch and listen to the above video in which Matthias Reischle outlines your options. Basically, you can apply to the patent office of each country or group of countries in which you require protection or you can apply simultaneously to the patent offices of most countries of the world under another international agreement known as the Patent Cooperation Treaty ("PCT"). It is for applications under the PCT that the IPO has prepared its guide. However, before reading that guide I strongly advise you to work your way through all the videos produced by the World Intellectual Property Organization ("the WIPO"), the UN Agency for Intellectual Property. entitled How to file your International Application.

I would add that it is worth your while to read these materials even if you do intend to instruct a patent attorney because IP is crucial to your business. It is much too important for you to leave to lawyers and patent attorneys. If you want to learn more about this topic or patenting generally, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

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