UK Patent Applications – Factsheet
UK patents protect novel and inventive products and processes from unauthorised manufacture, sale, import or use in the UK.
What is a patent, and why do I want one?
A patent is a legal monopoly giving the inventor (or their company) of a new and useful device or process the right to stop third parties from making, selling, importing or otherwise using the invention without permission. A patent can be licensed to third parties in return for royalty payments, and forms an asset which can be sold. Profits deriving from patented products and processes can also benefit from preferential tax rates.
What conditions does an invention have to satisfy to be patentable?
To be patentable, an invention must be novel at the time of filing a patent application. This means that the invention must not have been disclosed in a non-confidential manner prior to a patent application being filed. It is therefore important to decide whether or not to file a patent application before putting a new product on the market or disclosing the invention.
Sometimes it is necessary to talk to a third party about your invention before filing a patent application – for example where the third party is assisting with testing, or is being approached for funding. In such cases it is important to use a non-disclosure (confidentiality) agreement to reduce the risk of this disclosure causing problems for any patent application subsequently filed.
In addition to being novel, an invention must also be inventive. This means that the invention must be more than an obvious development of what is already known.
Some types of invention, such as pure business methods, are not patentable at all, even if they would be considered novel and inventive.
We can advise you as to whether your invention would be likely to satisfy these conditions.
What is the procedure for obtaining a patent?
The procedure for obtaining a patent in the United Kingdom can be divided into five stages – filing, search, publication, examination and grant. A summary of these stages is given below:-
1. Filing – the first stage is to file an application at the UK Intellectual Property Office (UKIPO). The application must at least comprise a description of the invention, together with drawings if appropriate. In most cases the application will include a set of claims, which define the scope of the legal monopoly being sought.
We work with you to prepare a patent application which accurately describes and defines your invention. We will attempt to define your invention in a manner which will cover not only your own implementation of your invention, but also foreseeable variants of your invention which third parties might adopt in order to try to “work around” your patent.
The filing of a first patent application signals the start of a “priority year” at the end of which further action must be taken to maintain the application. If foreign patent protection is required then this normally needs to be applied for before the end of the priority year (see “what about patent protection abroad” below).
During the priority year a “Request for Search” must be filed and the official search fee paid. This can be done at the time of filing the patent application in order to benefit from an early search. Until this step is completed the UK Intellectual Property Office will not take any action in connection with an application, which will simply sit on file.
If any improvements or modifications are made to the invention during the priority year, these may be included by filing a second or subsequent application. A second UK application claims priority from the first application and so preserves the earlier filing date for subject matter which is common to both applications.
2. Search – once the search request has been filed, and the official search fee paid, an Examiner conducts a search through previously published patent specifications, together with a limited range of other literature, to ascertain whether the invention is novel. This usually takes about three to six months to be completed, following which the Examiner issues a search report detailing any relevant prior publications found. We then report this to you.
The search report enables us to assess the likelihood of the application eventually being granted as a patent. If the search request is filed on, or soon after, filing then the search report is also valuable in terms of deciding whether or not to pursue patent protection abroad at the end of the priority year.
3. Publication – approximately eighteen months after the first application was filed, the application is published by the UK Intellectual Property Office along with the search report.
4. Examination – within six months of publication, a formal “Request for Examination” must be filed at the UK Intellectual Property Office and the official examination fee paid. The application is then passed to an Examiner who will consider whether the invention is novel and inventive. In most cases the Examiner will issue an “Examination Report” detailing any objections to the application. These objections generally relate to the Examiner’s opinion regarding the patentability of the invention. We then report the Examination Report to you and, following discussion with you, we prepare and file a response which deals with the objections.
Note: It is possible to combine the search and examination stages, by requesting both at the same time. This variation of normal procedure may be useful if you require your patent to be granted earlier than would otherwise by the case.
5. Grant – on successful completion of the “examination” stage, the application is accepted and published again, this time as a granted patent.
Once the patent is four years old, renewal fees become payable annually to maintain the patent in force.
In some cases it is desirable to obtain a granted patent quickly. There are a number of options available to achieve this, including requesting combined search and examination, early publication, and accelerated processing of the application. We can advise you on the best way to achieve this in view of your specific circumstances.
Sometimes it may be beneficial for us to carry out a search of the prior art databases ourselves before preparing and filing a patent application. We will advise if we think this might be of value to you, and if so we can instigate a search and assess the significance of the results of the search.
What about patent protection abroad?
If you require patent protection abroad, for example to protect your export markets or manufacturing interests in a foreign country, this can be done in three different ways:-
1. Filing separate patent applications in each country where protection is required.
2. Filing a European Patent Application designating several European countries.
3. Filing an “International” PCT Patent Application designating a number of countries, including Europe.
No matter which route is chosen, under an international convention to which virtually all industrialised countries subscribe, any foreign patent applications filed within the “priority year” are treated as having effectively been filed on the original UK filing date. Further information is provided in our information sheets “European patent applications” and “International patent applications”.
If you are a company which pays corporation tax, or expects to pay corporation tax in the future, Patent Box tax relief may be available to you in relation to profits attributable to products or processes protected by a UK (or European) patent. Eligible profits may be taxed at a rate of 10% rather than the prevailing tax rate.