Introduction To UK Patents

What is a UK patent?


A patent is a monopoly right to prevent others from exploiting an invention in a particular country. In the UK, the right is renewable up to a term of 20 years.

A patent does not give the owner the right to exploit the invention. For example, if the patent is for an engine management system and a competitor has an earlier patent covering an engine, a licence may be required to use the engine management system in conjunction with the competitor’s engine. If you have concerns in the area, then you should consider a freedom to operate search.

Should I apply for a patent?


You are free to exploit your invention if you have a patent or not, but once you have disclosed your invention publicly, you will no longer be able to gain a valid patent in the UK. We would, therefore, strongly advise filing an application because it may be your only opportunity to do so.

How do I apply for a patent in the UK?


An application should be submitted to the UK Intellectual Property Office.

Should I Get Professional Assistance?

It is not necessary to have your patent application drafted and prosecuted by a patent attorney and the UKIPO offer clear guidance to inventors on their website.

However, drafting and prosecuting a patent application through to grant is a complex matter and so we would strongly encourage you to consult with an attorney as early as possible and to consider their professional advice. Our attorneys are highly trained UK and European Patent Law specialists, with expertise in a broad spectrum of science and engineering disciplines.

By way of analogy, you could compare drafting, filing and prosecuting a patent application through to grant yourself with choosing to represent yourself in court. You may be able to achieve a satisfactory outcome by representing yourself in court, but if you were represented by a lawyer, then through their expertise in the field, the final outcome may be considerably better. Similarly, a patent attorney could gain much broader and more robust patent protection for your invention than you may achieve yourself.

Confidentiality


As discussed above, it is important to seek professional advice before you make your invention public. We are bound to confidentiality by virtue of our membership of the Intellectual Property Regulation Board click here for a link to the Code of Conduct and therefore any disclosure made to us in the workplace is confidential and so is not considered a public disclosure.

When should I apply for a patent?


In short – as soon as possible.

The application must be submitted before you make your invention public and, when filed, acts as a ‘flag in the ground’, securing what is called the priority date. Anything published before this priority date anywhere in the world can be used when assessing the patentability of your invention; anything published on or afterward, can not.

At the very latest, a UK application can be submitted on the same day as a public disclosure.

What is in a patent application?


The application comprises a description, appropriate drawings and a set of claims which define the actual monopoly for which protection is sought.

The description should describe the relevant features of the invention in sufficient detail and in a manner clear enough for it to be put into practice by a person knowledgeable in the particular field to which the invention relates.

How is patentability assessed?


In order for an invention to be patentable, there must be some functional (i.e. technical) aspect which is novel and inventive and which is not specifically excluded from patentability in the Patents Act.

In the UK, a novel invention is simply one that has not been publicly disclosed anywhere in the world before the filing date of the patent application seeking to protect the invention. Such public disclosure can take the form of a book, magazine, website, journal article, an earlier patent application, prior use or the like.

The novel aspect of a device or process is then assessed as to whether it can be considered non-obvious (i.e. inventive) in light of what is already known. This means that if an invention is novel, it still may not be considered patentable because of a lack of inventiveness, for example it is considered obvious to modify a known process to arrive at the novel invention.

What is the basic process in the UK and how long does it take?


The typical strategy is to file an application comprising a description, appropriate drawings and a set of claims. The application will then lie dormant until such time as a search request is filed. This can be done at any point within twelve months from the initial filing date but must be done by the first anniversary of the UK filing date in order to proceed. A search report will issue approximately 4 to 6 months after filing the search request and will list the prior art that the UKIPO examiner considers to be relevant to the patentability of your patent application.

The application will publish approximately 18 months from the filing date and six months after publication is the deadline for filing a request for substantive examination.

A substantive examination report will issue around 6 to 8 months after the request has been filed and this will outline, in detail, any objections the Examiner has to the patentability of an invention and invite the applicant to address these objections within a timeframe of, typically, 4 months.

Examination and amendment proceeds for as long as is required to put the application in order for grant, up until the compliance deadline of 4 ½ years from filing or 12 months from issuance of the first substantive examination report (whichever is later).

Deadlines can typically be extended should the applicant require more time and an application can typically be restored should the applicant unintentionally miss a deadline.

How much does it cost?


The cost to prepare and file a UK patent application varies, it can be as low as £2500 (plus VAT) but more typically costs approximately £5000 (plus VAT).The overall cost for prosecuting a typical UK application to grant will be in the region of £4000 to £6000 plus VAT. Note that these figures are estimates only and will vary depending upon the complexity of the idea and the ease or otherwise with which the prosecution through the Intellectual Property Office proceeds. In particular, if there are significant objections raised by the UKIPO during the prosecution procedure than the time taken to deal with those issues will likely increase the overall cost.

Can I speed things up?


There are a number of options available to us in order to expedite prosecution and it is possible to obtain a patent in as little as 7 to 8 months.

The UKIPO guide to getting your patent granted more quickly is here: www.ipo.gov.uk/p-fastgrantguide.pdf.

You should, though, consider whether expedited prosecution is the best path for you to take. Expediting prosecution will bring forward the date by which costs are incurred and, although provisional protection for your invention will start from the date the application is published, early publication will put your competitors on notice as to your activity. You may wish to plan the commercialisation and marketing of your invention whilst your patent is pending and has not been published.

Furthermore, if you make improvements to your invention then it may be easier to patent these if a further patent application is filed before your original patent application publishes.

How do I minimise the preparation and filing cost?


We can minimise costs in a number of ways, for example:

  • Filing only a description initially and filing the claims to the invention by 12 months later.
  • Waiting until 12 months from filing the application to submit the search request.
  • Having the applicant provide as much information as to the technicalities of the invention as well as details of any similar ideas which are known to be available already.

I’ve disclosed my invention to others – what should I do?


Please let us know exactly what has been disclosed, where and to whom. Disclosures must have been ‘made available to the public’. Confidential disclosures are not prejudicial to novelty and disclosure at an officially recognised international exhibition benefits from a 6 month grace period by which the application must be filed.

Please note that for matter to be deemed ‘made available to the public’ it does not require that the public became aware of the matter as a result, for example a book on a library shelf is disclosure whether the book was read or not. However, the disclosure must be enabling, i.e. was enough information revealed to enable a person in the relevant field to replicate the invention. Public use is not necessarily an enabling disclosure.

I’ve made some improvements since I filed – what should I do?


As touched on above, you should inform your advisor as soon as you make any improvements to your invention. They can then assess whether these improvements fall within the scope of protection applied for in your patent application. It may be that a further application is required and that your original application can be allowed to lapse.

Will my UK patent application protect me overseas?


Yes, but only in a limited number of countries.

A patent is a monopoly right specific to a particular country. A UK patent provides a monopoly right in the UK and can be extended, by registration after grant, to the following places:

  • Anguilla
  • Bermuda
  • British Virgin Islands
  • Brunei Darussalam
  • Cayman Islands
  • Falkland Islands
  • Fiji
  • Gibraltar
  • Grenada
  • Guernsey
  • Guyana
  • Jersey
  • Kiribati
  • Montserrat
  • Nauru
  • St. Helena
  • St. Lucia
  • Seychelles
  • Sierra Leone
  • Solomon Islands
  • Turks & Caicos Islands
  • Tuvalu
  • Vanuatu
  • Samoa
  • Zanzibar

The filing of a UK patent application also secures an option on filing outside of the UK for a period of twelve months. As long as an application to afford protection in overseas territories is filed within twelve months of the initial UK filings, those applications will be treated as if they had been filed on the same day as the initial UK filing.

A UK patent application can also be registered in Hong Kong and will then automatically give rise to a Hong Kong Patent when the UK application grants.

Is a patent the best form of protection for me?


A patent affords protection for the functionality underlying a product, process or the like and is designed to protect the technical innovation behind an idea. In contrast, a registered design will protect the aesthetic appearance of an item and is used to protect the artistic craftsmanship which goes into creating the distinctive appearance of an article. It gives no protection to similar designs that have the same functionality but a different appearance.

What is registered design protection?


Registered designs are explained in more detail here but, briefly, they are a form of intellectual property protection that is relatively quick to obtain and significantly cheaper than corresponding patent protection.

Typically, a registered design can be secured in two to three months. In the case of a UK registered design, the cost for a single registration will be approximately £750 plus VAT. It is also possible to obtain a Community design registration which is a single registration covering the whole of the European Community, the cost of which is approximately £1000 plus VAT for a single registration. The application is filed with images showing the relevant features of the design and the above cost estimate assumes that, rather than instructing a draftsman, we are provided with the appropriate images for this purpose.

A registered design only affords protection for the distinctiveness of the aesthetic appearance shown in the representations which are filed, and therefore somebody who makes something which has the same functionality but looks sufficiently different so as not to reproduce the same distinctive character shown in the representations filed in the design will not infringe the design registration.

The filing of either a UK or Community registered design also secures an option for filing corresponding applications in other International territories for six months from the base filing date. If that option is exercised within the six-month period, the subsequent overseas filings will be treated as if they have been filed on the same day as the basic UK or Community design application.

How can A.A. Thornton help?


If you are interested in discussing any of the above with an attorney, or have any questions, we would be happy to help.

We offer a free 30 minute initial discussion for new clients with a qualified attorney, during which you would talk through your invention in detail and we would discuss with you our thoughts on design protection, patentability, outline the patent procedure to you and when you can expect to incur costs, and offer our advice as to how best you should proceed. We would be happy to arrange such a meeting with you.

In order for you to get the most benefit from a meeting, we recommend that you provide us with as much detail as you can regarding your invention in advance so that we can at least arrange for you to meet with an attorney with an appropriate technological background.