When is an Invention Patentable and Entitlement to a Patent

Patentability and Entitlement to Patent


Virtually all machines, products and processes (or parts of processes) may be patented provided they are new, inventive and capable of industrial application. It is a desirable form of protection because it grants a monopoly allowing use of the invention for a period of time to the exclusion of others. However, the requirements for patentability are rigorous.

Patentability

To be patentable, an invention must be novel (it does not form part of the existing state of the art and has not been disclosed anywhere in the world before your application); it must involve an inventive step (the invention would not have been obvious to a relevantly skilled person) and it must be capable of practical commercial production (industrial application).

Certain inventions can never be patentable, including discoveries, theories, computer programs, schemes, the presentation of information and non-manufacturing based methods. However, computer programs may be patentable if they have technical effect when run. Patent protection is also unavailable for purely aesthetic outward appearance - this aspect may, however, benefit from registered design protection.

Entitlement to Patent

The person who can apply for and obtain a patent is normally the owner of the invention. This may be the inventor or anyone to whom he transfers ownership, e.g. by assignment to an employer in his employment contract or to a client or trading partner as part of a commercial arrangement between them.

Where two or more inventors wish jointly to claim ownership, each should be named in the patent application.

Where your employee makes an invention in the normal course of his duties, the invention will generally belong automatically to the employer.

However, where an employee invention results in a patent of outstanding benefit to your business, the employee is entitled to compensation.

Ownership is therefore a critical issue and it is sensible to consider ownership of inventions whenever entering into a relationship either with a new employee or a consultant, contractor or other trading partner where there is even a remote chance of the collaboration or arrangement generating a patentable invention.

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