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Patents explained

Written by Rehana Ali on 15 October 2014

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What is a Patent?

A Patent is a legal monopoly giving an inventor (or his employer) the exclusive right to make, sell, import or otherwise use his invention. Patents are territorial and not easy to obtain.

What conditions does an invention have to satisfy to be patentable in the UK?

To be patentable in the UK, the invention must be new at the date of filing a UK Patent application. This means that the invention must not have been made available to the public by the inventor or any other party. It is therefore important to consider whether a UK patent application should be filed before going to market or otherwise publishing the invention. The invention must also be sufficiently different to what is already known so as to be more than an obvious development.

Procedure

The procedure for securing grant of a Patent in the UK can be broadly divided into the following four stages:

1) Filing

The first stage is to file a Patent application at the UKIPO (currently at a cost of £280 and potentially less if filed online) consisting of at least a description of the invention and drawings (if appropriate). Filing a Patent application in the UK generates a “UK filing date” from which runs a “priority year”. On or before the first anniversary of the UK filing date, further action must be taken to keep the application alive. If Patent protection abroad is required, this would normally be applied for on or before the first anniversary of the UK filing date.

During the priority year, the UKIPO makes no examination of the application until such time as a “Search Request” is filed (and a search fee paid) together with Patent Claims and an Abstract. This may be done at the time of filing the application (typically increasing the initial cost by 50-100 %) but must be done on or before the first anniversary of the UK filing date. In some cases, it is advisable to file the Search Request on filing the application.

If there are any improvements or modifications to the invention during the priority year, these may be included in a second UK Patent application. The second UK Patent application claims priority from the first UK Patent application and is entitled to the UK filing date of the first UK Patent application for subject matter which is common to both applications.

2) Search

After a Search Request has been filed and the search fee paid, a Search Examiner at the UKIPO conducts a search through previously published Patent Specifications and a limited range of other literature to identify published documents which may be relevant to the patentability of the invention. A search report listing these documents is sent to the applicant (together with a copy of the documents) about three months after the Search Request has been filed. The search report may be used to assess the prospect of the Patent application being granted.

3) Publication

Approximately eighteen months after the UK filing date, the Patent application is published together with the search report. If the search report was favourable and the prospect of securing a granted Patent seems good, the applicant may decide to proceed to “prosecution”.

4) Prosecution

Within six months of the date of publication of the application an “Examination Request” must be filed and an examination fee paid.

The application is allocated to a UKIPO Examiner who will in most cases issue an “Official Letter” detailing any objections to the application. Objections which may arise are that the invention is not new or is merely an obvious departure from what is already known.

Working closely with his advisor, the applicant may choose to instruct his advisor to prepare and file a response to the objections or amend the application to overcome the objections. There may be several exchanges of correspondence between the Examiner and the applicant’s advisor and this procedure is often referred to as prosecution. The costs of prosecution will depend on the time spent by the advisor.

It is possible to combine the search and examination stages by filing the Search Request and the Examination Request at the same time. This variation of normal procedure may be useful if the applicant requires a Patent to be granted earlier than would otherwise be the case.

Grant of the Patent

On successful completion of the prosecution stage and providing the application meets the requirments of the Patents Act 1977 the UK Patent application is formally accepted and the application in its accepted form is published as a granted UK Patent. The owner must ensure that they pay the yearly renewal fees in order to keep the patent protection in force.

 

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