When a company develops a new product an important part of the prototype phase is to guarantee that it works before incurring the significant costs of large scale manufacturing. This is done by field trials, whereby the product undergoes testing under various conditions in order to observe how it performs within its core market. The problem with these field trials is that they can ruin the chances of a getting a granted patent.
Patent applications are granted by the UK Intellectual Property Office (UKIPO). One criterion by which an invention is judged to be patentable is the novelty of the invention, in other words, ‘is the invention new?’ If the invention is known to the public before the filing date of the application, then the patent to that invention is invalid. This condition is extremely strict. Any non-confidential disclosure anywhere in the world is sufficient to count as being known to the public. The field trial process can, and often does, come into this category.
For example, an inventor who had recently designed a unique lock for a gate tested the product by placing one on the gate at the end of his drive. When applying for a patent application the UKIPO deemed that because the lock was visible from the public road, it had been disclosed to the public and the patent application was rejected. This example highlights the strictness with which the UKIPO operates. Far too often companies find this out the hard way when it is too late to rectify.
It is a difficult situation because understandably companies want to ensure their products are fully developed and commercially viable before incurring the legal costs of protecting them. This is perfectly possible providing the correct steps and precautions are taken. I would strongly emphasise that any company planning to apply for a patent application for a new product ensures that every stage of product development and testing is conducted in a secure and confidential way. The safest thing to do in this situation is to check in advance with a patent attorney.
For any aspect of Intellectual Property advice and overall strategy, please get in touch with the ip21 team.
Paul Harrison, Senior European Patent Attorney for ip21 Ltd.