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Your intellectual property rights are precious and you need to make sure you have everything in place to protect those rights before you start discussing your idea with anyone. Here, we talk to the UK Intellectual Property Office to clarify the importance of doing things by the book during the innovation process

 

 

IP Law Overview

 

Intellectual property (IP) refers to creations of the mind and the corresponding fields of law. Common types of IP rights include patents, industrial design rights, trade secrets, trademarks and copyrights.

 

Certain forms of legal protection exist for the different types of IP. While there are many commonalities, the laws governing what IP is protected, and the extent of that protection, may vary greatly from country to country. Consequently, it is important to review IP laws in any jurisdiction for which you are seeking protection. 

 

The term ‘patent’ typically refers to a set of exclusionary rights granted for an invention. To be patentable the invention must fulfil certain conditions. Generally an invention must be new, useful, non-obvious and fall within certain subject areas. In exchange for disclosing the full details of an invention to the public, an inventor is granted a monopoly for a limited period of time, in most cases 20 years from filing an application. It is important to note that having a patent does not give you an affirmative right to do anything; it gives you the right to prevent others from certain activities.

 

Some jurisdictions may offer protection for a subset of patents called industrial design rights or design patents. Industrial design or design patents focus on the physical appearance of an item and not any utilitarian aspect.

 

A trade secret is generally information that is not known to the public, confers some sort of economic benefit to the holder and is subject to reasonable efforts to maintain its secrecy. Protection for trade secrets is usually obtained through the use of non-disclosure agreements and non-compete agreements. If secrecy is maintained, a trade secret may be maintained indefinitely (i.e. Coca-cola formula). However, there is no legal protection for a trade secret if the information becomes public without misappropriation of the secret.

 

The purpose of a trademark is to indicate to consumers that a certain good or service comes from a single identifiable source. Consequently, a trademark is a distinctive mark that tends to indicate the source or origin of goods or services. Trademarks are typically a name, word, phrase, logo, symbol, design, image or some combination thereof. Non-traditional trademarks, such as a fragrance or sound, may be granted in some jurisdictions. In most jurisdictions rights to a trademark are granted based on registration, although in some countries you may acquire rights by using a mark. Like patents, trademarks give you the right to prevent others from certain activities. Unlike patents, there is usually a use requirement for a trademark; you must use the mark to identify your goods or services or you may risk losing your rights. Also, trademarks may be renewed forever provided they are in use.

 

Copyrights protect original works of authorship fixed in a tangible medium of expression. The expression of an idea rather than the idea itself is protected under copyright law (For example, many people can paint a tree, what is protected under copyright law is your particular painting of a tree, your expression of the idea.). In many jurisdictions, copyright protection exists immediately upon the creation of a work, no registration is necessary. Works are generally protected for the life of the author plus 70 years. 

 

 

Advice from the UK Intellectual Property Office

 

For a medical device innovator, the patent process is probably the most important. The Intellectual Property Office (IPO), the official government body responsible for IP rights in the UK, has provided some guidance on the big issues surrounding patents*:

 

*Please note that the following answers are specific to UK law and may not be applicable in all jurisdictions. Contact your patent attorney if you have any questions regarding patent law in your jurisdiction.

 

 

To qualify for a patent, your idea must be new. What exactly does that mean? 

Not only must it never have been patented before, it must never even have been disclosed in public before.

 

Of course, this means that if you disclose it in public yourself, you can't apply to patent it anymore. The patent office should therefore be among the first to be told, and other people should be told only if they are bound by an explicit confidentiality agreement.

 

Your friends and family will probably act as if they are bound by such an agreement, but if anyone can prove your public disclosure before your application was filed, you might lose your monopoly.

 

As well as being new, your invention must not be obvious. Furthermore there are certain classes of invention that may not be patented.  

 

In particular, in Britain and in Europe, methods of medical treatment – by surgery or therapy – and methods of diagnosis, practised directly on the patient, cannot be patented.  

 

This is to ensure a doctor is not impeded by a patent when treating a patient; a surgeon should not have to consult his lawyer before performing an operation.  

 

However, devices and tools for medical purposes can be patented, as can drugs. A drug that has already been used to treat one disease can be patented for use in the treatment of a different disease.  

 

The law on exclusions is very complex. It also differs between countries. For example, in the US you can patent methods of treatment, so seek out professional advice.

 

 

What is patent infringement?

A patent monopoly allows the patent owner to decide who can make, use, sell, import or export their invention. Someone who does any of these things without the patentee’s permission infringes that legal monopoly.

 

What can you do about it?

Patent infringement is a civil matter, not a criminal offence, so the patent owner has to take the infringer to court themselves. This can be expensive, but recent developments such as the Patents County Court have made this course of action more affordable.

 

However, parties in an infringement dispute should always consider licensing and arbitration – such as the IPO’s Opinion service – before taking the matter to court.

 

How do you make sure you have patent protection abroad?

Patent applications made in one country only result in a monopoly in that country alone, such that people elsewhere might manufacture and sell (but not import) the invention themselves.

 

You can extend the coverage of the monopoly to the EU, US and the rest of the world by applying there as well. However, translation and other administrative costs can quickly mount up. UK coverage alone can cost as little as £230, but full worldwide coverage can cost more than £50,000.

 

What is most important is to make sure you talk to the patent office relevant to you as soon as possible, to ensure that your intellectual property rights are protected. Your country’s IP office is there to help you and give you objective advice so don’t be afraid to use it. Once you have your patent sorted out, you can proceed with your innovation with confidence.

15/11/2011 | Posted by Medtronic
Tags: intellectual property; IP; medical device innovation; patents; Intellectual Property Office; IP rights; patent infringement; patent protection; monopoly; medical patents