How Can I Protect My Idea?

You’ve had an idea for something new – something genuinely different from what everyone else is offering.  Maybe it’s a product that solves a problem nobody has cracked yet, or a service that does something that existing solutions simply can’t.  You’re excited about it, and you’re starting to think about what to do next.

But the same questions keep surfacing: If I tell people about my idea, won’t they just copy it?  Can I protect my idea in some way?

They’re the right questions to be asking – and asking them early matters more than most people realise.  Patents might just be the answer you’re looking for. 

What is a patent?

A patent is a legal right, granted by the state, that gives you, the inventor, a temporary monopoly over your invention.  That is, a patent gives you the exclusive right to prevent others from making, using, selling, or importing your invention for a limited period of time.   In most countries, including the UK, that period is 20 years from the date you file your patent application.

A patent can provide a business with a highly effective moat, preventing others from being able to offer the same solution that you have invented. 

Additionally, patents serve to transform an invention from an ethereal thought into a well-defined item of property.  As an item of property, patents are a business asset that can be valued, sold, lent (i.e. licensed) or used as security for borrowing.  As such, they provide a mechanism for realising the value of your invention separately from your own business activities.  Indeed, even where a business fails, it is not uncommon for its patent portfolio to continue to have value.

In exchange for receiving the benefits of a patent, you are required to fully disclose the details of your invention to the public.  This means that anyone can use your invention after the patent expires.  This is commonly referred to as “the patent bargain” – society gains access to knowledge that might otherwise remain secret; in return, the inventor receives a temporary monopoly.

Is my idea patentable?

Not all ideas can be protected by a patent.  Patents are available for inventions, which is the term used within the patent system to describe ideas that are technical in nature.  More specifically, a patentable idea is one that provides a technical solution to a technical problem.  As a result, it is not possible to get patent protection for non-technical ideas, such as new business models.  However, technical ideas, such as a new encryption system or algorithm, are patentable because they solve technical problems (e.g. that of ensuring the confidentiality of data).

In addition to being technical in nature, your idea must also satisfy the following requirements in order to be patentable:

1. Novelty

Your invention must be new.  That is to say, it must be different in some way from anything that was already publicly known before the date on which a patent application for that invention is filed (which is referred to as the prior art).  This includes all public disclosures, both oral and written, anywhere in the world made by anyone including those that you yourself have made (although some jurisdictions may make an allowance for this, this is not the case for the UK or Europe).  If the same invention has previously been described in a patent, an academic paper, a product manual, or any other publicly available document, your invention will not be considered to meet this requirement of novelty.  Keeping your invention confidential prior to filing a patent application is therefore of critical importance.

2. Inventive Step

Your invention must involve an inventive step over everything that was already publicly known before the date on which a patent application for that invention is filed.  That is to say, it must not be obvious to a “person skilled in the art” from the prior art.  This does not mean that the invention has to be truly ground-breaking to be patentable – patents can and are granted for relatively minor improvements to existing systems. 

As with many things relating to patents, assessing this requirement is one that requires nuanced judgment.  The “person skilled in the art” against which this requirement is assessed is a legal fiction.  It represents a person with all the technical knowledge in the world for a particular technical field, but no capacity to invent – not someone that you are likely to encounter in real life.  The assessment of inventive step is therefore grounded in analysing what the prior art actually teaches and what such a fictional person would do with that teaching.  If they would not have solved the problem that your invention solves in the same way, then the requirement is satisfied.

3. Industrial Applicability

Your invention must be capable of being made or used in any kind of industry, which is treated very broadly.  In practice, this is a low bar that is achieved by virtually all patent applications.  It is very rare for a patent application to be refused owing to a lack of industrial applicability.  This requirement tends to be invoked for inventions that are either impractical or impossible to use – such as where the invention would require a violation of the laws of physics to function (e.g. perpetual motion machines).

4. Exclusions to Patentability

There are certain types of subject-matter that cannot be patented, even if they fulfil the other requirements that have already been discussed.  Although there are a number of such exclusions, the one that is usually of most concern, especially for digital innovators, is the exclusion of computer programs from patentability (in the UK and Europe).  However, it is important to realise that the exclusion is not all-encompassing and is in fact quite a bit narrower than it initially appears.  Indeed, there are many types of computer programs that can be patented.  These are commonly referred to as “computer-implemented inventions” (CII).

To understand the scope of the exclusion of computer programs from patentability, it is necessary to understand the rationale behind their exclusion.  It stems from the observation that all computer programs achieve a technical effect, if only because they result in electrical currents flowing in a particular pattern within a computer as a result of their execution.  Therefore, in order to prevent any arbitrary computer program, such as an accounting program implementing a new accounting formula, from being patented, the Patent Office considers this technical effect to be insufficient to justify the grant of a patent for a CII.  Instead, to meet the requirements for patentability, a CII must achieve an “additional” technical effect above and beyond the mere flow of electrical currents resulting from its execution. 

In practice, there are many examples of computer programs that achieve such an additional technical effect.  Some such programs achieve an additional technical effect within the computer itself.  For example, encryption or compression algorithms, or communication protocols, can affect the technical properties of the data flowing within and between computer systems.   Other such programs might be run as part of a control system that is configured to run a physical system or environment.  Such programs will result in the physical system or environment being controlled differently, resulting in an additional technical effect beyond the mere execution of the program.  Yet other programs might deduce the physical properties or state of a real-world system, thereby achieving an additional technical effect.  Whether your invention is deemed to fall foul of these exclusions can depend heavily on how the invention is characterised and claimed in your patent application.

What should I know before taking the next step?

Before you do anything else with your idea, such as carrying out market research, pitching it to investors, discussing it with potential partners, or even developing a prototype with outside help, you should be aware of the following key points:

1. Keep your Idea Confidential

If you think your idea relates to a patentable invention that you might want to obtain a patent for, it is essential that you keep it confidential.  Any non-confidential disclosure that you make, whether verbally to a friend, in writing in an academic paper or blog post, or in a prompt to a computer system (such as an AI system), may prevent you from successfully obtaining a patent (or potentially worse, may mean that any patent you do obtain may later be found to be invalid and unenforceable).  It is generally best to file a patent application before sharing your idea with others, however, if this is not possible, care should be taken to ensure that the idea remains confidential, such as through the use of Non-Disclosure Agreements (NDA).  If you think you may have already disclosed your idea, don’t assume all is lost – but do seek advice urgently.  The options available will depend on the nature and timing of the disclosure, and in some jurisdictions there may be more flexibility than others, but time is of the essence.

2. File First

Patents are granted on a “first-to-file” basis.  That means that the patent will be awarded to the first person to file a patent application for an invention.  The timing of when the invention was actually conceived is irrelevant.  Under this system, if another person independently invents the same invention and files a patent application for it before you, you will not be able to obtain a patent for that invention.  Worse still, if a patent is granted to the other party, they may be able to stop you from using the invention.  This means it is beneficial to file a patent application at the earliest opportunity – although this needs to be balanced against ensuring that the invention is sufficiently well developed and thought through. 

3. Consider Other Options for Protecting your Idea

Although a patent will usually provide the strongest protection for an invention, they are not always the right tool or the only tool worth considering.  Other intellectual property rights such as copyright, design rights, and trade marks may also apply to your business, and in some cases keeping your idea as a trade secret may be more appropriate.  Where your primary concern is preventing someone else from patenting your idea and restricting your ability to use it commercially, defensive publication is also worth considering.  The right approach depends heavily on your specific situation.  It is recommended that you seek professional advice to help you weigh up the available options. 

How do I obtain a patent?

To obtain a patent you will need to file a patent application with a patent office that is authorised to issue patents for the jurisdiction in which you desire patent protection.  If you want patent protection in more than one jurisdiction, you will ultimately need to file multiple patent applications.  However, a mechanism referred to as “priority” means that once you have filed a patent application in one jurisdiction, you can file further patent applications in other jurisdictions within a 12-month period following the filing of the first patent application.  For this reason, I generally recommend filing a UK patent application as a first step. 

Before a patent application is filed, a specification will need to be drafted which describes the invention, explains in detail how the invention can be performed or recreated, and sets out the scope of protection for which patent protection is being requested.  Arguably, the drafting of the specification for a patent application is the most important part of a patent application’s life as, once it is filed, it is not possible to add further content into the specification.  This limitation is a lot more restrictive than is generally appreciated. 

The specification includes a number of “claims”, which are numbered statements at the end of the specification that define the legal scope of protection.  It is these claims that are the Patent Office’s main focus when deciding whether to grant a patent.  Similarly, they are a court’s main focus when assessing whether a third party infringes a patent.  Identifying and defining an optimal scope of protection is therefore a key consideration when drafting a patent specification - too broad and a patent application may fail to pass the key patentability requirements for novelty and inventive step - too narrow and the patent application may be easy for a third party to avoid infringing any resulting patent.   

It should be appreciated that the drafting and filing of a patent application is just the first step in a longer process before a patent is granted.  Once it has been filed, the Patent Office will perform a search for prior art and carry out an examination of the patent application based on the prior art that is found before reaching a decision as to whether a patent should be granted.  Where professional assistance is sought, additional costs will therefore be incurred throughout the life of a patent application.  Most patent applications will encounter some form of objection from the Patent Office that needs to be overcome before a patent will be granted.  Indeed, even once a patent is granted, there are further costs associated with maintaining the patent.  Having an appreciation of these lifetime costs of a patent is critical when deciding whether to file a patent application. 

Furthermore, it is also important to note that the filing of a patent application does not guarantee that you will receive a granted patent – patent offices can and do refuse patent applications for failing to meet the criteria for granting a patent.  Additionally, even where a patent is granted it may later turn out to be invalid.  This is due to the limitations in searching for prior art making it impossible to guarantee that all relevant prior art has been found.  Accordingly, the subsequent discovery of relevant prior art can invalidate a granted patent.

In drafting a specification for a patent application, a skilled patent attorney will draw on their legal, technical and commercial knowledge and experience, to draft a specification that balances considerations arising from each of those domains, anticipates potential issues that may arise and includes appropriate contingency positions to maximise the chances of successfully obtaining a patent and the value and resilience of that patent.

One of the best ways forward, if you have an idea that you are interested in obtaining patent protection for, is to contact a Chartered UK & European Patent Attorney at as early a stage as possible.