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 do not need a patent to exploit your invention, 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 suggest seeking advice, and probably also filing an application, before disclosing your invention publically 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 (UK IPO).
Should I Get Professional Assistance?
It is not necessary to have your patent application drafted by a patent attorney, or to have a patent attorney communicate with the UK IPO on your behalf to get that application to grant. The UK IPO offer clear guidance to inventors on their website.
However, drafting a patent application and dealing with the UK IPO 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 and filing a patent application, and dealing with the UK IPO 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.
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 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 new, or “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 an invention 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 might be 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 process is to file a patent application at the UK IPO comprising a description, appropriate drawings and a set of claims which define the invention. The application will then lie dormant until such time as a search request is filed and fee paid. 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 publications that predate the filing of the application (“prior art”) that the UK IPO examiner considers to be relevant to the patentability of the invention.
The application will publish approximately 18 months from the filing date and six months after publication is the deadline for filing a request for the UK IPO to carry out a substantive examination of the application to determine the patentability of the invention.
A substantive examination report will be issue after the request has been filed (usually at least six months after, and often longer) and this will outline, in detail, any objections the Examiner has to the patentability of the 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 can vary significantly. Typically the cost of preparing and filing a UK patent application can cost between approximately £5000 and £10,000 (plus VAT). Depending on whether objections are raised, and the complexity of the technology, the overall cost for prosecuting a typical UK application to grant following the initial application can be very low (less than £1000 +VAT), but for a typical case it is likely to be in the region of £3000 to £6000 (plus VAT). As noted above, 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 then 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 well under a year.
The UKIPO guide to getting your patent granted more quickly is here: https://www.gov.uk/government/publications/patents-fast-grant.
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 you should discuss with your attorney as it may be easier to patent these improvements 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’ so confidential disclosures are not prejudicial to novelty.
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. enough information must have been revealed to enable a person in the relevant field to replicate the invention. Public use of an invention 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, in a number of different countries. The full details can be found here.
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. The registration is a two-step process requiring a first step to be taken within six months of publication of the UK application and the second to be taken within six months of grant. This gives rise to a Hong Kong patent based on the UK patent.
How can AA 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 patent 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 discussion with you.
In order for you to get the most benefit from a discussion, 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. Please fill in the form below and one of our experts will contact you.