A Basic Guide to Patents

The introduction a number of years ago of business method patents (also referred to as business model patents) caused many people who formerly had relatively little reason to take an interest in the patent industry to sit up and take an active interest in patents and all they entail. The following is intended as a (very brief) introduction to patents for such newcomers to the patent field. Detailed descriptions of the fields covered can then be found using the links below. The following is provided only as a reference and should by no means be interpreted as legal advice (the only advice we would offer is that you consult a qualified patent attorney before applying for a patent). In particular, laws regarding deadlines and filing requirements change constantly, so please always check with relevant authorities and attorneys for up-to-the minute information in this regard.

What is a patent? / What kind of patents exist? / What is patentable? / What isn't patentable? / Does my idea for a patent already exist? / What is a business method/model patent (BMP), and why all the fuss? / How long does a patent last? / International Applications / The Japanese Patent System / Kokai? Kokoku? What are they talking about? / How much does it cost to apply for a patent? / How do I find an attorney?

What is a patent?

A patent provides an inventor with an exclusive right to use an invention for a limited period (usually 20 years). In exchange for this right, the inventor allows the patent to be put on view to the public, so other people can see how the invention was made in the interests of furthering technological advancement. The inventor may then simply keep the patent, sell the patent as a whole for a lump sum to a person or company, or may rent-out (referred to as "license") the patent to a number of different people for a lump sum or regular fee (referred to as "royalty").

What kind of patents exist?

Generally speaking, patents are classified into three types, utility patents, design patents, and plant patents. The most common type is the Utility Patent. Typical examples of utility patents would be patents for semiconductors or pharmaceutical products. Design patents cover, for example, unique shapes, such as icons on a computer. Plant patents refer to reproducible plants, such as flowers.

What is Patentable

What is patentable and what is not varies depending on the patent law in the country in which an application is made. Attempts have been made to standardize such law through countries enrolling to the jurisdiction of patent treaties such as the Paris Convention treaty, EPC (for the European Patent organization), PCT (patent co-operation treaty), PCT (Ch. II) and the Pan-American Convention. However, as a general guide, proving "novelty" and "non-obviousness" can be considered to be reasonably universal concepts. Proving "novelty" means proving that your invention is genuinely "new" (i.e. different from what is already in existence). Proving "non-obviousness" means proving that somebody with a working knowledge of the field of your invention (referred to in legal jargon as "one skilled in the art") would not consider your invention to be an obvious use of existing technology, and is generally more difficult to prove than "novelty". A utility patent also has to belong to a statutory class.

What isn't patentable?

This is actually quite a complex and constantly changing question and we would again suggest consultation with an attorney with regards to such matters. However, as a rough guide, any act that can be performed with your brain is not patentable. Any item that occurs naturally is not patentable. This is to avoid somebody attempting to patent, for example, a rock, simply because they found it first. Abstract ideas that cannot be implemented using hardware are also generally not permitted. Inventions seen to defy "natural laws" such as "an invention for floating by defying gravity" are also not acceptable, with the illusive "perpetual motion machine" often being cited as an example of this case. Any invention that doesn't appear to do anything will also probably be rejected (it would be very difficult, for example, to patent "a politician").

Does my idea for a patent already exist?

To determine this, an inventor usually makes a request to a patent attorney or agent to make a detailed search of "prior art" (a legal term for technology that already exists). Many countries and patent authorities also provide databases that can be searched for free, such as in the US, Japan, and Europe. A detailed list of such databases is provided by the WIPO.

What is a business method/model patent (BMP)

A business method patent (sometimes referred to as "business model patent") is, as it says, a patent related to a method of doing business. This refers to methods such as, for example, the "One-click ordering method" of amazon.com which employs cookies to enable a customer to make an order with "one click", or the "reverse auction" method of priceline.com where a customer names a price they are prepared to pay for a product, and a vendor then decides whether or not they are prepared to part with the product for that price. In the past, such applications had generally been considered unpatentable due to a law known as the "business model exception". The exception was considered to have been effectively laid to rest by the landmark "State Street Bank V. Signature Financial Group" case. This is discussed in detail in Christopher J. Lewis's article "Back-off State Street".

Why All the Fuss?

The reason this has caused relative uproar by patent-world standards is because this now means that there is a possibility that certain innovative business methods can be patented, which is particularly relevant to many companies such as companies whose business revolves around the internet or, for example, financial institutions. The explosion in internet usage and various types of internet-based transactions means that a barrage of business method patent applications is anticipated (with many having already been received). It has therefore become important for companies such as financial companies who previously owned relatively few patents to ensure that their methods of doing business are appropriately protected. This is similar to the situation in the software industry approximately ten years ago, when companies such as Microsoft held relatively few patents, compared to the enormous numbers of patents they now possess.

How long does a patent last?

Generally speaking, 20 years from the date of filing (as laid out in GATT).

International Applications

If an inventor wishes to make an application in a number of different countries there are a number of deadlines to be taken into consideration, depending on which countries applications are to be made in, and which approach is taken to making such international applications. For example, if an application for a utility patent is made in the US, which is under the jurisdiction of the "Paris Convention", then if a further application is made in another country (for example, Japan) which is also under the jurisdiction of the "Paris Convention" within one year of filing the US application, the Japanese application will be valid from the date of filing the original US application. Also, according to the Patent Cooperation Treaty, a single international (PCT) filing can be made within one year of making an application in a participating country which will then cover all PCT jurisdictions. Further filings then have to be made in the countries in which you wish the application to apply within certain specified time-periods. Details regarding PCT applications can be found here.

The Japanese Patent System

The Japanese patent system is similar in nature to the European patent system. One quirk of the Japanese system, however, is that applications are not examined automatically. Rather, an applicant is allowed to request an examination within seven years from the date of filing, with a typical time between filing and examination being five years. Laid-open, Japanese Language unexamined patent applications are published on CD-ROM eighteen months after the earliest priority date of the applications. Should you wish to receive an estimate for translation of a Japanese patent, simply send the publication number of the patent you wish to have translated to us at info@brophy-phillips.com and you will receive an estimate within one working day.

Kokai? Kokoku? What are they talking about?

Newcomers to the Japanese patent system are often confused by the liberal use of the words "kokai" and "kokoku" by people who may be more familiar with the Japanese patent system (or just wish to appear so!). These words refer to numbers assigned to applications at various stages of the patent application process. A "kokai" number is a number assigned upon publication of an unexamined patent. A "kokoku" number is a number which was assigned in the Japanese patent system prior to January 1st, 1996 at the stage of publication for opposition. This can be understood more clearly from the following diagrams describing the Japanese patent system.


How much does it cost?

The cost of applying for a patent usually consists of fees payable to the patent authority in the country in which the application is being made, and fees payable to an attorney or agent whose services are employed to make the application (an attorney will usually make the payments to the authority on the inventor's behalf).

How do I find an attorney?

Our "useful and informative links" page contains links to some sites that may aid you in locating an attorney to represent you in the filing of a patent, or any other intellectual property related issue.