Protecting the function of new products and processes – 8 August 2011
Patents can be used to stop others copying important functional details of your new products and processes.
A patent is a commercial asset which gives its owner the right to stop others “exploiting” an “invention”. “Exploiting” includes making, selling, using and importing. The invention could be a product and/or a process.
A patent will not stop others producing competing products if its coverage is easily avoided. So the critical question is “What does a patent cover?” Or put another way, “How much of a change avoids infringement?” Rules of thumb such as 10% are not helpful.
The wording is critical
The coverage of a patent or patent application is defined by its “claims”. The wording of the claims is critical. Each claim is a single sentence which can be thought of as a list of features. To infringe a patent claim each and every feature of the claim must be taken.
Example patent claim:
A plumbing fitting including
an inlet conduit;
a first outlet conduit;
a second outlet conduit;
a valve for closing the first outlet conduit; and
a solenoid valve for closing the second outlet conduit.
Plumbing fittings which do not include a solenoid valve for closing the second conduit are not covered by this claim. Infringement could be avoided by substituting another type of valve for the solenoid valve.
On the other hand:
- the claim simply specifies “a valve for closing the first outlet conduit” – a plumbing fitting including any type of valve for closing the first outlet conduit is covered; and
- the claim is silent on the inlet conduit having a valve, so the claim covers plumbing fittings with or without a valve on the inlet conduit.
Claim wording is something to carefully consider with your patent attorney. For example, could a valid claim be written without the word “solenoid”?
Standard patents
Standard patents last for up to 20 years. To qualify for a standard patent, the invention as defined in the claim must be “new” and “inventive”. “New” means not publicly known. The inventiveness threshold varies from country to country. In Australia it requires a variation over selected publicly known information which is non-obvious from the point of view of the “skilled person”. In our example the skilled person may well be a plumber.
The selected publicly known information includes:
- common general knowledge;
- information that the skilled person could be reasonably expected to have ascertained, understood and regarded as relevant; and
- combinations of this information that the skilled person could be reasonably expected to put together.
Innovation patents
An innovation patent is another option available in Australia. Innovation patents last for up to eight years. They are intended to cover “workshop improvements”. Inventiveness is not required. Obvious combinations of well known features can be validly covered.
To qualify for an innovation patent, the invention as defined in the claim must be “innovative”. This requires a variation over publicly known products and processes which “makes a substantial contribution to the working of the [product or process]”. This is a very low threshold. “Substantial” simply means “real or of substance”.
Strategic considerations
A broader patent claim is less likely to be valid because it is more likely to cover something that was publicly known.
When preparing a patent application it is usual to include multiple claims of differing scope. Typically the first claim is the broadest claim, followed by progressively narrower claims. By way of example, a narrower version of the above claim might specify “a solenoid valve for closing the first outlet conduit”. To successfully enforce a patent only one claim need be valid and infringed.
Keep it secret
If patent protection is of interest, it is important to keep the invention secret and not sell or commercially use it until an initial patent application is filed. Otherwise, generally speaking, it is not possible to pursue patent protection.
Australia, the US, Canada and a few other countries have 12 month grace periods which may allow you to pursue patent protection if your invention is no longer secret.
