A patent can be granted for processes, products and devices, and can sometimes be vital to commercialising your invention. You cannot be granted a patent for an idea without describing or showing how the solution works in practice.
Patenting is often a costly and time-consuming process, and it might not necessarily be the right or most expedient strategy to protect your invention. We always review the potential closely prior to investing in the patent process. If we decide to file a patent, the patent application is developed in collaboration between the researcher and BTO. To achieve the best patenting strategy, we often involve professional international patent agencies that specialise in the field.
There are three main criteria that your invention must meet in order to be granted a patent.
The proposed technical solution must be completely new in order to be granted a patent. This means that the solution, on the day the application is submitted, cannot be known in any forum. The inventor must therefore avoid publishing anything concerning the invention prior to applying. Publication, in this context, refers to any form of communication (written, oral, articles, internet, etc.) that makes the invention available to a third party.
In addition to being new, the invention must clearly differ from known technology, meaning it cannot only be an academic change of a known technology. The invention must involve an element of surprise. If it solves a new problem, or solves a known problem in a new and better way than existing solutions, these are good arguments for its inventive merit.
The invention must also be industrially applicable, meaning that it must solve a technical problem and be usable. Most products or processes will meet these criteria.
Source: patent brochure from Acapo AS
Publishing and patenting
To be granted a patent, the invention must be novel; it cannot have been disclosed in any way. According to the Employee Invention Act, publishing includes all kinds of disclosure; presentations, lectures, articles, online publications and other types of communication that make your invention known to a third party. However, we know that publication is an important objective for researchers and their institutions, and as a researcher you are free to publish your results at any time.
We believe that patenting your invention does not need to hinder your publications. Nevertheless, it is crucial that everything is done in the right order; all disclosures must take place after the patent application is filed. We aim to always complete the patent filing process without delaying your academic publication.
It can take years from the patent is filed until the patent is granted. During this period the content can be published according to certain rules:
- Publication must take place after the patent application is sent.
- New developments and updates regarding your invention should always be discussed and analysed for IP protection, even after the patent is filed. The same rules then apply for this new information; it cannot be published before it´s protected by the patent application.
The patenting process
BTO considers whether to protect the intellectual property associated with the invention in question by filing a national or international patent application.
The first step in the patenting process is to discuss the research idea with BTO to identify the inventive concept. If a patent is needed immediately to protect intellectual property, BTO files a first patent application. The filing date for this first application is called a priority date and the application itself is known as a priority patent application. This application enables you to wait up to 12 months should you wish to patent internationally. This means that you can submit patent applications elsewhere or submit an international application within those 12 months and still have it treated as if it were handed at the time of the priority application (according to the Paris convention). During this period, the researcher may improve the application or add further documentation.
The patent application is drafted in close collaboration between the researcher, BTO and a patent attorney. At this stage the researcher should:
- be available for discussion with BTO and the patent lawyer to provide information and documentation required to draft the patent application.
- take active part in discussions regarding new perspectives and further development of the invention for the rest of the priority year and later. BTO will consider potential investors and commercial partners.
There is no “worldwide patent”, and patent applications must therefore be submitted to all countries where a patent is needed. The European Patent office can, however, issue a patent valid in 38 countries. An international central authority can handle the examination of the application under the Patent Cooperation Treaty (PCT) system. PCT is a simplified application system for its member countries. It is administered by the World Intellectual Property Organisation (WIPO), and carried out by the International Bureau in Geneva. Approved investigation bureaus investigate the patentability of the international patent application.
Over one hundred countries are included in the PCT agreement, and the PCT system enables filing only one international patent application for all signatory countries. The application must be filed no later than 12 months after the first patent application. The application is published 18 months after the first patent application (priority date).
The PCT phase ends 30 months after the priority date. Within that time, an International Preliminary Report on Patentability is issued, describing the invention’s patentability. After the PCT period, the PCT application should be filed to all countries where a patent is desired. The application should be translated into the language of the country in question, making this process quite expensive. After the PCT phase, a patent is usually granted in 2 to 8 years.