Patents

[jamoor]

OK, someone has approached us to manufacture a patented item.
It's patented in the UK however I called the patent office and they said I cannot patent it in Europe. Is that true?

Is there any other ways of protecting this?

Has anyone else meddled with patents, is there anything to be aware of?

[AlexB]

Someone has approached you to manufacture a patented item - ensure that that person is the patent owner (or has their permission to outsource manufacture) or you may be infringing the patent of a third party through your manufacture - at the very least, get an indemnity from damages in the contract from the person comissioning the work.

When you ask if there are any other ways of protecting the item, it is not clear what you mean. If it is a third party invention then you have rights in that invention so would not be able to protect it yourself anywhere. If the UK patent is already granted then it will have been published and, unless foreign patent applications have already been filed, nobody will be able to obtain patent protection for the material published in the patent anywhere in the world (not even the patent owner). It is a fundamental of patent law that the invention for which patent protection is sought must be new (not disclosed anywhere) at the time the applicaiton is filed - if there has been a publication then the invention is no longer new.

Hope that helps. If you can give some more detail regarding the situation (particularly if I have misunderstood anything!) then there may be a few other issues to consider.

Alex

[jamoor]

AlexB said:

Someone has approached you to manufacture a patented item - ensure that that person is the patent owner (or has their permission to outsource manufacture) or you may be infringing the patent of a third party through your manufacture - at the very least, get an indemnity from damages in the contract from the person comissioning the work.

When you ask if there are any other ways of protecting the item, it is not clear what you mean. If it is a third party invention then you have rights in that invention so would not be able to protect it yourself anywhere. If the UK patent is already granted then it will have been published and, unless foreign patent applications have already been filed, nobody will be able to obtain patent protection for the material published in the patent anywhere in the world (not even the patent owner). It is a fundamental of patent law that the invention for which patent protection is sought must be new (not disclosed anywhere) at the time the applicaiton is filed - if there has been a publication then the invention is no longer new.

Hope that helps. If you can give some more detail regarding the situation (particularly if I have misunderstood anything!) then there may be a few other issues to consider.

Alex

I think I meant protecting the idea in USA and Europe.

He has been granted the Patent in the UK, does that mean people can sell his product in Europe and USA however not in the UK?

[AlexB]

It means exactly that. The patent in the UK prevents someone making/selling the product in the UK or importing the patented product into the UK. If there is no protection anywhere else then third parties can do what they like wit the concept.

There may be some scope for protection of the product via a design registration (protecting the way the thing looks) in Europe/US depending upon when the publication/disclosure took place (but I suspect that publication/disclosure was more than 12 months ago). It could be worth speaking to a patent attorney and providing all the facts as there may be some scope for protection - but whatever protection you get it is likely to be weaker than a patent (which protects the way it works).

ALex