The patent bargain
The patent system is often described in terms of a bargain between the individual inventor and the state. It’s a very useful way of understanding how the patent system works, although treat it as something that will help you learn the law, not something to tell the examiner about.
The classic explanation is that the inventor seeks the protection of the law for their invention. The law says that it will give the inventor a 20 year monopoly over the invention, but in return the inventor must disclose what they have invented. The state is giving the inventor a valuable piece of exclusive property, but wants to ensure that the learning embodied in the invention is available for others to use – subject to the inventor’s 20-year monopoly.
Why does the public have to be told what is in the invention, if they can’t use it themselves? There are several reasons. First, it may be possible to adapt the invention for use in another field. Second, another inventor may be able to improve on it. Third, if you are going to be sued for infringement if you cross the boundary and trespass on the inventor’s exclusive property you need to be told exactly where that boundary lies.
The disclosure must be in sufficient detail to enable the hypothetical skilled person to work the invention - in other words, while you don’t have to disclose everything about your invention (and there will usually be some valuable secret know-how held back), you cannot get away with a half-hearted disclosure.
The analogy with a bargain goes further. There is another condition imposed by the state, to safeguard the public’s interest: if the invention is not worked, another business might be able to obtain a compulsory licence to start making whatever it is that the invention protects.
Applying principles from contract law also helps to explain how a patent may be refused for lack of novelty, or (if granted) may be revoked. If the claimed invention wasn’t novel when the inventor applied for the patent, they didn’t actually have anything to give to the state in return for the 20 year monopoly. (The wording of the Patents Act 1977 makes clear that there may be inventions that are not patentable because they lack novelty – despite the fact that most people would consider novelty to be a defining feature of an invention.) When they said they had something new to offer the public that hadn’t been seen before, they were wrong, so there is a failure of consideration – which would cause a contract to be voidable, if this were a straightforward contract issue. The same logic applies if the invention lacked an inventive step – again, the law says although it is an invention, it is not a patentable one. The invention has to meet both criteria to qualify for a patent – and it must be capable of industrial application, and not excluded from patentability by the Act. But in respect of those criteria, the law isn’t saying that the inventor has to give something valuable in return for the protection, it’s saying that this area of law is not concerned with protecting that sort of thing (and sometimes other areas of law might give protection instead).
The copyright bargain
A similar bargain can also be seen in other parts of the intellectual property world. Copyright law is there to give creative individuals exclusive rights over their creations. There isn’t a process to go through to obtain protection though – copyright should be thought of more as a claim to protection, the soundness of which the court will consider if the owner has to sue for infringement. If the work turns out not to be the author’s original work, the judge will decide that there was no copyright to infringe, or perhaps that the defendant didn’t infringe what copyright there was.
There isn’t the same compulsion in the copyright world to force owners to do something with their copyright, but there is in design right (which is closely related to, but much weaker than, copyright). Licences of right are available during the last five years of the short period of protection that design right gives, and may be available earlier in special circumstances.
Trade marks
Trade mark law is not concerned with inventiveness or creativity, but the “bargain” analysis still does a useful job. The trade mark owner receives valuable rights from the state – the exclusive right to use the registered trade mark (and anything confusingly similar to it) in relation to the goods or services for which it is registered. In return, the trade mark owner promises that they are using the trade mark for those goods or services, or intend to do so: you can regard that as a form of consideration to support the bargain struck with the state. If that promise turns out to be false, it is theoretically possible to challenge the trade mark on the grounds of bad faith (although this rarely happens in practice, as the burden of proof is difficult). If the trade mark is not used for five years, it may be revoked – for all or only some of the goods or services for which it is registered. This is very different from the sort of compulsory licensing that the patent and designs systems have, but the economic effect is much the same.