Charlotte Teall, Senior Associate, Forresters

1. www.forresters.co.uk
Patent and Trade Mark Attorneys
OneStart Europe - London Bootcamp
Charlotte Teall – Patent Attorney

2. www.forresters.co.uk
How do I protect my business?
• Patents
– Products, processes, uses of products (including medical uses)
• Trademarks
– Company name
– Product name
– Slogans
• Designs
– Device
– Components
• Copyright
– Marketing material
– Software

3. www.forresters.co.uk
Why are patents important?
• Patents give you exclusivity
– allow you to carve out your own piece of the marketplace
– prevent competitors from entering your space
• [
• Patents can be used as a great business tool
– collaborations with established firms
– cross licensing
• A strong patent portfolio is good for investors
– shows a wealth of technology shoring up the company

4. www.forresters.co.uk
Is your invention patentable?
• A patent is directed towards a technical innovation
• A patent can cover a product, a process and/or a use.
• The main requirements of patentability are:
– Novelty i.e. it must be new
– Inventive i.e. arrival must be non-obvious
– Sufficiently disclosed i.e. must be reproducible
Data is important: in return for monopoly it
must be clear that you have made a technical
contribution

5. www.forresters.co.uk
Is it new?
• In short: It must not have been disclosed anywhere in the world
by any means
• Form of disclosure is irrelevant
– Public use of the invention
– Written disclosure e.g. in a patent application, scientific paper,
advertising leaflet or on the internet,
– Oral disclosure e.g. in a presentation, speech or conversation.
– Language is irrelevant

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Is it obvious?
•An invention is a solution to a problem
•An invention will be deemed obvious, if there is something out there
that points you in the direction of the solution
•Step from what was known to the solution cannot be filled by
common general knowledge
•Advantage helps, but could be non-obvious alternative

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Do not publish your work until you have filed a patent application
• Put procedures in place to ensure that you do not make any non-
confidential disclosures of your invention before filing
• It is often a company’s own disclosure that destroys the novelty
or obviousness of their invention
• Do not worry about internal communications; employees are
considered to be under an obligation to keep all information
confidential
• If you need to disclose information to a third party either have a
signed non-disclosure agreement or file a patent application first

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Can it be reproduced?
• The application needs to describe the invention to such an extent
that it can be reproduced without undue experimentation
• You do not need to demonstrate every way of carrying out the
invention
• The scope of protection must be commensurate with your
technical disclosure i.e. do not leave any gaps!

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Is there enough data to support the concept of your invention?
• Remember: a patent gives you a monopoly
• In return for that monopoly you must contribute something useful to society
• The claimed utility must be supported by the specification
•
• Must provide data that backs proof of principle behind the claimed utility
• It must be at least plausible that it could work
• A mere statement about a theory which is not backed up by some technical data
to support the theory is unlikely to be enough.

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Why is this important?
• If there is not sufficient data: Vulnerable to attack
• Claim scope = permissible generalisation of technical data
• There must be enough data for a reasonable prediction to be
made that the invention will work for all of the claimed
compounds/uses.
• If not enough data, then the claim scope will be limited to the
compounds/uses for which you have data

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When to file your patent application?
• First to file system
– Race to secure a filing date
• Don’t file too early
– you need to have sufficient information and data in place to get the
most our of your invention
• Get the balance right

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Drafting a patent specifications
• This is the most important stage!
• Patent is a complex legal and technical document!
• Hire a professional
• Allocate plenty of time to this process
• You need to get it right!

13. www.forresters.co.uk
Proposed filing strategy for a start-up – part 1
• File a UK patent application and request a search
Why?
–UK official fees are fairly inexpensive
–the UK IPO carry out good searches
–Speedy: search should issue within three months of filing
–Aim of search: give you an idea as to scope of protection available to
you
–Can give you an idea as to who is active in your space

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Proposed filing strategy for a start-up – part 2
• Within 12 months of your UK filing date filed a PCT application
and claim priority to your UK application
– by claiming priority, your PCT application will be treated as though it
was filed on the same day as your UK application
– Additional data/improvements can be added into PCT application
File UK File PCT
12 months

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Proposed filing strategy for a start-up – part 3
• Within 30/31 months of your initial UK filing date, you need to
decide where you go ahead
– at this stage you should have more of an idea of the most important
commercial markets for your product
– The PCT route provides more time (1.5 years) to raise the funds to
cover the costs of patent prosecution before you have to fork out for
foreign patent protection
File UK File PCT
12 months
Foreign
entries
18/19 months

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Who owns what?
• Ownership is a minefield!
• Ownership should be determined before filing!
• Generally, inventions made by employees resulting from their
work for a company are owned by the company
• Good practice – refer to the relevant IP statute in the patent act
• In contrast, consultants are usually considered to own the rights
in their contribution to the invention, unless there is a contract to
the contrary
– make sure there is an agreement in place before any work is carried
out

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Who will pay for the patent prosecution costs?
• If the invention is a joint collaboration, you need to agree who will
be responsible for obtaining IP rights and paying the associated
costs
• It is essential that ownership of an invention is clearly established
and documented before any patent application is filed
• A patent can be invalidated if a successful challenge is made to
applicant's entitlement to be granted a patent

18. www.forresters.co.uk
Thank you
cteall@forresters.co.uk
www.forresters.co.uk I @ForrestersIP