• Our People
  • Global Presence
  • Regions
    • Asia
    • Europe
    • Americas
  • Offices
    • Canada
      • Ottawa
      • Toronto
    • China
      • Beijing
      • Hong Kong
    • Luxembourg
    • Malaysia
    • Singapore
    • UK
      • Aberdeen
      • Birmingham
      • Cambridge
      • Edinburgh
      • Glasgow
      • London
      • Manchester
      • Oxford
  • Client liaison
    • Japan
    • Korea
  • Expertise
  • Services
    • Patents
    • Brands & Trade Marks
    • Designs
    • Litigation & Dispute Resolution
    • Commercial IP & Contracts
    • Due Diligence
    • Freedom to Operate
    • EPO Patent Oppositions
    • European Patent Validations
    • Anti-counterfeiting
    • Open Source & Third Party Code
  • Sectors
    • Digital Transformation
      • 3D Printing
      • Artificial Intelligence
      • Blockchain
      • Data & Connectivity
      • Extended Reality
      • Industry 4.0
    • Energy & Environment
    • Life Sciences
    • Agritech
    • Medical Technologies
    • Chemistry
    • Transport
    • Entertainment & Creative Industries
    • Food & Drink
    • Fashion & Retail
    • Universities & Research Bodies
    • Start-ups & Spin-outs
      • Creating value for start-ups
      • The IP driven start-up
    • Financial Services
  • About Us
    • Working with us
    • Awards
    • Corporate & Social Responsibility
    • Diversity & Inclusion
    • Careers
  • Insights
    • Articles
    • News
    • Events
    • Resources
    • Unified Patent Court hub
    • Beyond Brexit: European trade mark hub
    • M&C Reacts
  • Contact Us
Marks & Clerk logo
Marks & Clerk logo
Contact Us
Language
English
Our People
Global Presence
Regions
  • Asia
  • Europe
  • Americas
Offices
  • Canada
    • Ottawa
    • Toronto
  • China
    • Beijing
    • Hong Kong
  • Luxembourg
  • Malaysia
  • Singapore
  • UK
    • Aberdeen
    • Birmingham
    • Cambridge
    • Edinburgh
    • Glasgow
    • London
    • Manchester
    • Oxford
Client liaison
  • Japan
  • Korea
Expertise
Services
  • Patents
  • Brands & Trade Marks
  • Designs
  • Litigation & Dispute Resolution
  • Commercial IP & Contracts
  • Due Diligence
  • Freedom to Operate
  • EPO Patent Oppositions
  • European Patent Validations
  • Anti-counterfeiting
  • Open Source & Third Party Code
Sectors
  • Digital Transformation
    • 3D Printing
    • Artificial Intelligence
    • Blockchain
    • Data & Connectivity
    • Extended Reality
    • Industry 4.0
  • Energy & Environment
  • Life Sciences
  • Agritech
  • Medical Technologies
  • Chemistry
  • Transport
  • Entertainment & Creative Industries
  • Food & Drink
  • Fashion & Retail
  • Universities & Research Bodies
  • Start-ups & Spin-outs
    • Creating value for start-ups
    • The IP driven start-up
  • Financial Services
About Us
  • Working with us
  • Awards
  • Corporate & Social Responsibility
  • Diversity & Inclusion
  • Careers
Insights
  • Articles
  • News
  • Events
  • Resources
  • Unified Patent Court hub
  • Beyond Brexit: European trade mark hub
  • M&C Reacts

Preparing robust patents for Quantum technology

22 March 2022
Rhian Granleese
Print
Share

There are many articles on what can be protected by a patent in Quantum technology.

However, here we briefly look at some of the pitfalls in preparing the patent application for quantum technology.

To obtain a patent it is necessary to show that the claims of the patent define something that is new and non-obvious. There are also requirements for the description of a patent application. In Europe, the patent application must “disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art”. Thus, some of requirements to get a patent are quite subjective, such as whether the invention is not-obvious and also whether the disclosure of the invention is sufficient.

Patents in the field of quantum technology therefore present specific challenges.

This is a rapidly evolving field, and the patent office examiners are learning where the boundaries lie when making subjective assessments. The test for obviousness and the sufficiency of the description are based on the knowledge of a “person skilled in the art”. Whereas the knowledge and aptitude of this person is often a point of contention in patent prosecution, the situation is exacerbated in an emerging technology area where there can be little guidance from existing case law.

Also, in an emerging technology area, the meaning of terms used in the art can be still be evolving. For example, does the term measurement device independent (MDI) QKD also cover Twin-field (TF) QKD or are MDI-QKD and TF-QKD alternatives? Scientific papers in this area use the terms as alternatives, but some suggest that one is a subset of the other. Also, specialist terms sometimes do not translate correctly. An example of this is the term “ultrafine particle” which was often used in Asia whereas the term “nanoparticle” was generally used in the West.

To mitigate some of these problems, the description can be drafted anticipating these issues and the following two guides should be kept in mind.

1) The description needs to explain the invention so that it can be understood by one skilled in the art. It is safer to underestimate rather than over-estimate the knowledge and aptitude of a person skilled in the art. It is helpful to err on the side of explaining more basic principles, operation of basic equipment etc.
2) The description needs to be a reservoir for amendments - The Examiner may argue that some of the terms in the claims are not clear. For this reason, it is important to have alternatives to the terms used in the description and explanations. Also, using a variety of different terms in the description also helps to avoid translations issues.

Whereas a scientific paper can form part of the description of a patent application, it should not be the entire description as it unlikely to meet the above two requirements on its own.

There are many pitfalls to the preparation of the description and it is not just merely a description of the invention. Patent Attorneys working in the specialist area of quantum technology are up to date with the current practices of the various national and regional patent offices and are able to advise on the preparation of the entire patent application.

[This article first appeared on Dead Cat Live Cat here]

Next Story
  • Preliminary position on priority published
  • International patent insights on quantum computing
  • InterDigital v Lenovo: The latest FRAND judgment
  • Cambridge: City of Innovation - The 'beer summit' that generated a genomic revolution
  • IP protection in collaborations: "Just Do It"
More insights

Latest Insights

Chemistry
Article
- 24 March 2023

Preliminary position on priority published

As we reported in early 2022, the Enlarged Board of Appeal of the EPO are considering two pending referrals (G1/22 and G2/22) regarding the question of entitlement to priority. A hearing has now been set for 26 May 2023, and the Enlarged Board have now issued a preliminary opinion setting out the points to be discussed.
Read more
Quantum computing
Article
- 22 March 2023

International patent insights on quantum computing

The latest patent insight report from the European Patent Office (EPO) looks at the trends in patent filings for quantum computing, and has uncovered some interesting findings.
Read more
Article
- 22 March 2023

InterDigital v Lenovo: The latest FRAND judgment

On 16 March 2023, Mr Justice Mellor handed down the latest FRAND judgment: InterDigital v Lenovo. The case concerned a dispute between InterDigital and Lenovo as to the terms on which Lenovo should take a licence to InterDigital’s portfolio of patents which had been declared essential to the European Telecommunications Standard Institute (ETSI) Standards.
Read more
Marks & Clerk logo (white)
  • Terms & Conditions
  • Privacy Notice
  • Cookies
  • Legal Notices
  • Press Enquiries
  • Lexology
  • Mondaq