A UK patent provides protection for an invention in the United Kingdom, but can also be extended to certain overseas protectorates (see bottom of this page).
The procedure in the UK begins with writing (drafting) a patent specification and filing it at the Patent Office (UKIPO). Once filed, the invention is provisionally protected to the extent that the invention is described in the specification. Unless and until a patent has actually been granted, however, you cannot sue for patent infringement.
The effect of filing a patent application is that it secures a filing date to which subsequent applications filed in the UK or in most overseas countries within the next 12 months can effectively be backdated (by a procedure called “claiming priority”). Furthermore, if another applicant applies for a patent for the same or a similar invention after your filing date, then that other applicant will need to show that their invention is new and/or inventive over your invention to be allowed to be granted a patent. Filing, therefore, enables you to disclose your invention (NB, but only to the extent that the invention is described in the specification) to third parties (i.e. by showing and/or by commercialisation) without you destroying the novelty of your invention for patenting purposes.
To be accorded a filing date, the application must include a request for the grant of a patent and a statement identifying the applicant (these are usually done using “Form 1”); as well as a description of the invention (which usually includes a set of drawings) explaining what the invention is.
Before a patent can be granted for the invention, however, the application needs to undergo a formal and substantive examination procedure.
With regard to the form (layout, presentation, enclosures, fees, etc.) of the application, there are many requirements. These include the need to have clear, reproducible drawings; and documents presented with typefaces, line-spacings, margins etc, of certain sizes. In addition, an application is not “complete” until it contains a set of claims, which set-out the scope of protection sought; an abstract, which is used for searching purposes; and a statement identifying the inventor and how the applicant derived the rights in the invention from the actual inventor. There are also three main fees to pay, namely the filing fee (which oddly enough, doesn’t always need to be paid on filing); the search fee; and the examination fee. Unlike other Patent Offices, the UKIPO does not levy claims or pages fees, so you can, in theory, have as many pages and claims as you please for the same, uniform fees.
Dealing with the formal matters is usually straightforward, but due attention does need to be paid to such matters as correctly identifying the inventor(s) and applicant(s) and making sure that the transfer of rights in the invention from the inventor(s) to the applicant)s) is sound – to avoid “entitlement proceedings” later on.
With regard to substance, the UKIPO carries out a Search, whereby the Search Examiner attempts to identify prior art that renders the claims of the application either lacking in novelty or inventive step. The Search Report lists the prior art relied upon, and often contains a Search Opinion, which foreshadows objections which may be raised at the Examination stage. When the Search Report has been issued, we will be able to provide you with an opinion on the application’s prospects of success, and the likely scope of protection that might be obtainable. You can then decide to proceed further with the application, or withdraw it to prevent publication.
The “filing > search > examination” route outlined above does defer costs but you would not have any indication of the application’s chances of success until a Search Report has been drawn-up, which may not occur until after the priority year has ended. Therefore, it is recommended to pay the filing and search fees at the outset, to obtain the earliest possible indication from the Patent Office of the likely scope of protection that may be obtainable.
If you wanted to speed-up the application procedure even more, then you can opt for Combined Search and Examination (CSE) at the outset. There is no overall increase in cost for doing this, but the fees are incurred sooner. However, by opting for the CSE route the application is prioritised in the examination queue.
Finally, if the invention relates to “green technology”, it is also possible to request accelerated Search (and Examination, if requested) under the “Green Channel” scheme. This could mean that the application is searched within a matter of weeks (depending on the backlog of work in the relevant department at the Patent Office), rather than months, as would ordinarily be the case.
Publication occurs 18-months after the filing date. The Patent Office publishes the application online, and from the date of publication, the public is effectively “put on-notice” of the existence of the application. This means that after the publication date, it is more difficult for an infringer to avoid paying damages using an “innocent infringement” defence if you were to later successfully sue for infringement.
The next stage is substantive examination, where the applicant essentially has to convince that the invention is new and non-obvious compared with the prior art. If relevant citations have been raised during the Search phase (or later) then it may be necessary to amend the claims and/or the description to differentiate the invention over the prior art. Examination proceeds by way of “rounds” of correspondence in which the Examiner issues an Examination Report and the applicant responds. There are usually 1-3 rounds of Examination in a typical UK application.
Once the application meets the requirements of The Patents Act 1977 and the Rules, it is forwarded for grant. The application is re-published as a patent specification (also known as a “B spec” because it has a “B” suffix), whereupon the patent will be in-force in the UK.
Annual renewal fees are payable, from the 5th year onward, to keep the patent in-force. The maximum term of protection is 20-years from the filing date. Failure to pay renewal fees results in the patent lapsing.
Anguilla, Antarctic, Antigua, Bahamas, Bermuda, British Indian Ocean Territory, Brunei, Cayman, Cyprus, Falkland Islands, Fiji, Gambia, Gibraltar, Grenada, Guernsey, Guyana, Isle of Man, Jersey, Kiribati, Malta, Montserrat, Nauru, Pitcairn, Saint Helena, Saint Kitts, Saint Lucia, Saint Vincent, Seychelles, Sierra Leone, Solomon Islands, South Georgia and the Sandwich Islands, Swaziland, Tanzania, Tonga, Turks & Caicos Islands, Tuvalu, Uganda, Vanuatu, Virgin Islands and Western Samoa.