What can be protected by a patent?

A UK or European patent can only be granted for an invention which (1) is new, (2) involves an inventive step and (3) is capable of industrial application. In addition, some types of innovation are not considered to be inventions for which a patent can be granted. These criteria are discussed in more depth below.

1. The invention must be new.

This means that the invention must have some difference, however trivial, over everything known to the public, anywhere in the world (the "prior art") at the relevant date.

An important implication of the requirement for novelty is that you must not disclose an invention in a non-confidential fashion at least until you have filed a patent application, and often for longer. This is because a non-confidential disclosure can make the invention known to the public and so no longer new.

2. The invention must involve an inventive step.

This means that the difference between the invention and the prior art must not have been obvious to a person skilled in the field of the invention at the relevant date. There is no requirement that the inventive step be particularly high. There is also no need for the invention to be complex. Some apparently trivial ideas can be inventive.

3. The invention must be capable of industrial application.

This criterion is rarely a factor as the term “industrial application” is interpreted very broadly and includes both simple gadgets and complex technologies.

Excluded fields

Most countries of the world define certain fields of invention which are explicitly excluded from patentability. As we will explain, this is one of the areas of patent law which is most commonly misunderstood in the general business community.

In the UK and Europe, the following, as such, are not regarded as inventions for which a patent can be granted:

• a discovery, scientific theory or mathematical method;
• a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
• a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer; or
• the presentation of information

The reason why these exclusions are frequently misunderstood is that they are narrower in practice than is suggested by the above wording. For example, you cannot patent a discovery but may be able to patent technology resulting from that discovery; you cannot patent a method of playing a game but may be able to patent apparatus for playing a game; you cannot patent a mathematical method but many algorithms with important technical implications have been patented.

In the case of computer software, you cannot patent a program for a computer which is devoid of any technical implications. However, in Europe you can patent computer software and computer implemented inventions which have technical character and which provide an inventive solution to a technical problem.

Other exclusions include inventions the publication of which would be contrary to public order or morality and a number of specific exclusions relating to biotechnology, e.g. processes for cloning human beings.

We recommend always seeking professional advice on patentability before concluding that an idea is not patentable as the law governing patentability is complex and has many special cases.

International variations

The above discussion relates to the UK and Europe only. Patent law varies substantially between countries. Different countries have different requirements for novelty and inventive step. Some countries have different excluded fields.

Furthermore, some commercially important countries have other intellectual property rights which resemble patents but may have less stringent patentability requirements. These “utility model” or “petty patent” rights are found in countries such as Germany, China and Japan. Australia, for example, has an “innovation patent” which has a lower requirement for inventive step than a patent for an invention and a term of up to eight years. Utility models are not well known in the UK as we do not have equivalent rights here but they can be very useful for protecting some types of innovation internationally.