In order to determine how best to proceed with your invention we will undertake a number of searches and assessments.
For a patent application to be granted the invention must fulfil three criteria. It must be:
- inventive (that is not obvious to someone skilled in the art); and
- capable of industrial application.
We will assess whether your invention contains patentable subject matter. For example, methods of treatment are not patentable in the UK, but apparatus for diagnosis or treatment may be patentable.
Prior Art Searches
In order to qualify for patent protection an invention must be absoluely new. Patent examiners will search the published literature to identify earlier material that describes the invention. This is known as a prior art search and it is why confidentiality is important before a patent application is filed.
A prior art search will involve searching patent databases, scientific literature and other public sources.
Prior art searches can also be useful to a researcher, since they provide valuable information about work that has already been carried out in a field and can help to guide the direction of the research undertaken.
A number of online patent databases are available, three of which are:
- Espacenet by the European Patent Office – www.epo.org/searching/free/espacenet.html.
- The United States Patent and Trademark Office – http://patft.uspto.gov/.
- Google Patents – www.google.co.uk/advanced_patent_search.
Freedom to Operate
Freedom to operate is an expression used to describe whether an organisation can develop a product without infringing another organisation’s intellectual property rights (usually patents). In order to develop a new technology or product it might be necessary to use somebody else’s patented technology.
If the new technology require use of the another party’s patented technology then permission may be granted in the form of a licence agreement, which allows use of the patented technology in exchange for financial consideration. Commercialisation without securing such rights might constitute infringement and might result in legal action.
A freedom to operate assessment identifies whether rights to third party patents will be required to commercialise the technology in question and whether such rights can be obtained (at an acceptable cost).
HSC Innovations can undertake searches that will contribute to a freedom to operate assessment. More detailed assessments and advice can be obtained from a patent attorney, which HSC Innovations can assist with.
We will examine the market for your invention, including its size, model and key companies, in order to determine whether a viable business model exists and which companies could be valuable commercialisation partners.
We use various methods to evaluate your solution, considering its financial value in support of a licensing arrangement, as well as its value in patient care.