Disclaimer: The material on this website is provided
for general information only. It is not intended as legal advice
on any specific factual situation. For such advice, a client
must contact a member of the firm directly. Nothing on this website
constitutes an offer for supply of goods or services and nothing
on the website constitutes any waiver, in whole or in part, of
the firm's Terms of Business, which govern all services
provided to clients by the firm.
An invention can be defined as any technical advance which results
in a recognisably new product, process or use.
It is the technical advance that sets an invention apart
from purely artistic creativity, although in many instances artistic
creativity has a supporting role to play, for example in applying
an appealing design to a new product or in advertising and promoting
a new use.
The term "invention" therefore embraces technical advances
in many areas, for example:
- mechanical gadgets
- automobiles
- pharmaceuticals
- chemical processes
- technical computer software
- electronic goods
- manufacturing processes
- commercial products
- genetic engineering
- metallurgical processes and products
- new uses of known products
- telecommunications
Inventions may be legally protected, independently of any know-how
used alongside them and independently of any products of purely
artistic creativity that may be incorporated into inventive commercial
products.
Protection of know-how (other than as an invention) is dealt with
under Confidentiality.
Protection of purely artistic creativity is dealt with under Copyright and Designs.
A patent is a statutory monopoly which lasts for a defined length
of time (typically, as in the United Kingdom, for up to twenty
years from the application date). If valid, a patent protects an
invention against unauthorised commercial use in the relevant territory
during the period for which it can be enforced.
In the United Kingdom, a patent can be obtained via
Option (i) yields a right which, if valid, is enforceable in the
territory and waters of the United Kingdom, including the Isle
of Man, the seabed of the Continental Shelf and the United Kingdom
sector of the North Sea.
Option (ii) yields a right which, if valid, is enforceable in
the territories and waters of a range of European countries selected
by the applicant as part of the application procedure, including
potentially all countries of the European Union, Switzerland, Cyprus
and, by extension, some Eastern European countries.
See our Europe-EPC information
pages for further details of the countries available via a European
Patent, both as Contracting
States to the European Patent Convention and as Extension
States having bilateral agreements with the European Patent
Office.
If option (iii) is used, the applicant will end up with only one
patent, as a mechanism is provided to prevent duplication of patents;
however, if one of the routes yields a better patent than the other,
the applicant can keep the better right.
A patent is an exclusive right to the invention defined ("claimed")
in the patent document. That is: it is a right to exclude others
from using the invention commercially. Importantly, it does not
guarantee its owner that the invention can be commercially exploited,
and indeed it is perfectly possible for the commercial exploitation
of patented inventions to be hindered or prevented in many different
ways. These may include:
- the presence of earlier third-party patents to inventions
that must necessarily be used to enable the later (e.g. improvement)
invention;
- the presence of regulations or legislation limiting the freedom
to commercialise, e.g. on public health or safety grounds;
- difficulties in manufacturing at an affordable cost;
- poor business skill on the part of the inventor;
- bad publicity or advertising;
- the invention being overtaken by later improvements;
- market resistance, consumer conservatism or manufacturing
inertia (e.g. caused by set-up costs or resistance to scrapping
existing products).
Claims
The potential power of a patent lies in the act that the invention is defined
verbally in a set of definitions known as the "claims". Each
claim will define the invention in relation to specified features and variations
in a way which will not normally be tied to any one implementation of the
invention in a particular individual product design. A properly constructed
set of claims will offer protection against many more potential variants
and imitations than would a corresponding registered design, unregistered
design right or copyright.
For example, the basic patent for the well-known "WORKMATE" ®,
the original handyman's workbench, invented by the British inventor
Ron Hickman, claimed in general terms the concept of any workbench
in the form of a vice having independently operable ends. In this
way, the whole market in such workbenches with equivalent features
and function was controlled. Had the inventor relied only on registered
design protection or copyright, production of benches with a different
visual appearance, but which used the same functional concept,
would not have been subject to the inventor's control.
The scope of protection provided by a patent will depend on how
the claims are interpreted by the Courts. In European
Patent Convention countries, the scope will be determined in
accordance with Article
69 EPC and subject to the "Protocol on the Interpretation
of Article 69", which provides that the claims are to be interpreted
so as to provide "...a fair protection for the patentee
with a reasonable degree of certainty for third parties." At
their Diplomatic
Conference in November 2000, the EPC countries also agreed
to add a clause to the Protocol explicitly stating "For
the purpose of determining the extent of protection conferred by
a European patent, due account shall be taken of any element which
is equivalent to an element specified in the claims." (This
amendment will officially come into force after ratification of
the Revision
Act (.pdf file) adopted at the Diplomatic Conference.)
This additional clause reflects the approach adopted in the US
under the so-called "Doctrine
of Equivalents", whereby a US Court may find a patent
to be infringed in situations where an alleged infringer has adopted "equivalents" to
specified claim features rather than taking the elements as literally
specified in a patent claim at issue.
A recent decision of the US Court
of Appeals for the Federal Circuit (CAFC) - Festo
Corp. v Shoketsu KKK - had suggested that the extent
to which this Doctrine could be applied should be severely restricted.
The CAFC ruled that if a claim were amended during examination,
for any reason relating to patentability, this would create a "prosecution
history estoppel" which would deny the patentee the
right to any equivalents in respect of the amended claim.
The US Supreme Court subsequently delivered a unanimous
opinion on this controversial CAFC decision, moderating the
CAFC's view. It asserted that prosecution history estoppel may
apply to any claim amendment made to satisfy the Patent Act's
requirements, not just to amendments made to avoid the prior
art, but that estoppel need not bar suit against every
equivalent to the amended claim element. In particular, the Court
observed:
"By amending the application, the inventor is deemed
to concede that the patent does not extend as far as the original
claim. It does not follow, however, that the amended claim
becomes so perfect in its description that no one could devise
an equivalent. After amendment, as before, language remains
an imperfect fit for invention. The narrowing amendment may
demonstrate what the claim is not; but it may still fail to
capture precisely what the claim is. There is no reason why
a narrowing amendment should be deemed to relinquish equivalents
unforeseeable at the time of the amendment and beyond a fair
interpretation of what was surrendered. Nor is there any call
to foreclose claims of equivalence for aspects of the invention
that have only a peripheral relation to the reason the amendment
was submitted. The amendment does not show that the inventor
suddenly had more foresight in the drafting of claims than
an inventor whose application was granted without amendments
having been submitted. It shows only that he was familiar with
the broader text and with the difference between the two. As
a result, there is no more reason for holding the patentee
to the literal terms of an amended claim than there is for
abolishing the doctrine of equivalents altogether and holding
every patentee to the literal terms of the patent."
Hopefully, this decision restores a rational balance to US claim
interpretation, more consistent with the interpretation
of European Patent claims. (Such "prosecution history
estoppel" is not applicable to the interpretation of European
Patent claims.)
Q3. Are there ways, other than patents,
of protecting inventions?
Certain limited protective rights can, in appropriate cases,be
obtained by the following methods:
(i) maintaining confidentiality for as long as possible
(see Confidentiality for
more details);
(ii) obtaining short-term patent-like rights (e.g. petty
patents, short-term patents or utility models) in overseas
countries where such protection is available (our individual European
Country pages indicate if such rights may be available
but a member of the firm should always be consulted for confirmation
of the type and extent of protection available in any specific
case);
(iii) using design protection to protect specific features of
shape, configuration, pattern or ornament of an article (see Designs for
more details);
(iv) using copyright protection to protect accompanying literature
or artwork (see Copyright for
more details);
(v) using trade mark protection to protect a specific distinctive
shape or surface decoration of a product (see Trade
Marks for more details);
(vi) using plant variety rights protection to protect a specific
new plant variety;
(vii) using semiconductor topography rights protection to protect
a specific new semiconductor topography.
Contact Us if any specific
advice or assistance is required, concerning these types of rights.
All these alternative methods have disadvantages as ways of protecting
a general invention. For example:
(i) is good only so long as confidentiality can be maintained;
does not stop use of an independently devised invention; and
does not stop attempts by others to protect that independently
devised invention;
(ii) is available only in certain countries, and is typically
limited to a maximum period of 10 years of protection, although
the rights are often easier to obtain than a patent;
(iii), (iv), (v) and (vii) are specific rights to a particular
expression in the form of a copyright work, a trade mark or semiconductor
topography rather than to an invention in general; and
with the exception of registered designs, (iii), (iv) and (vii)
are restricted to protecting against unauthorised copying, rather
than providing monopoly protection against any unauthorised use.
In general, therefore, a patent is the best way to protect an
invention against unauthorised use.
Q4. How clever does an invention have
to be before it can be patented in Europe?
Patents are granted for inventions in many areas of technology,
both high-tech and low-tech.
Outside Western Europe, there are substantial variations in the
rules from country to country, but in Western Europe (including
the United Kingdom) the rules are largely harmonised. In Western
Europe, to be patentable an invention must:
(i) be new, in the sense of not having been previously
made available to the public by publication or use anywhere in
the world; in legal terms, this is often expressed as a requirement
for "novelty" over the "state of the
art" or "prior art" (i.e. everything
previously made available);
(ii) involve an inventive step, in the sense of not being obvious
to a person skilled in the relevant art (i.e. the relevant technological
field);
(iii) be capable of industrial application, in the sense of
being able to be made or used in any kind of industry, including
agriculture; and
(iv) not be in a category of subject-matter which is specifically
excepted from being patentable (see Q5 below).
In many cases it is the second requirement (ii) - that the invention
must involve an inventive step in the sense of being not obvious
to a person skilled in the relevant art - that gives particular
difficulty when predicting and judging patentability. However,
the rule is that during the examination for patentability in
a Patent Office the benefit of any doubt must be given to the
person applying for the patent, and that hindsight must not be
used when judging the matter. For these reasons, patents can
be granted on inventions which with hindsight appear simple and
obvious, provided that they were not obvious beforehand.
A fair assessment of the capabilities of the notional "person
skilled in the art" is clearly critical to making
an objective judgement of whether or not an invention is patentable.
This is where many inventors and companies can run into difficulties.
The "person skilled in the art" is presumed
to be an ordinary practitioneraware of what
was common general knowledge in the art at the relevant date
and also of what could have been located by diligent searching.
He or she is presumed to have normal research facilities available
and an ordinary capacity for experimentation and to be able
to consult with colleagues or specialists having complementary
or related skills, if this would be normal practice in the
relevant art. Critically, however, he or she is presumed to
have no exceptional level of skill and imagination.
It frequently happens that a highly-skilled expert devises an
invention but decides not to apply for a patent because the expert
thinks that the idea was obvious to him or her. If, in reality,
it would not have been obvious to the ordinary "person
skilled in the art" - who is the relevant person according
to the legal test to be applied - then it may well have been
possible to obtain patent protection for such an invention. The
consequences of neglecting to consider this possibility can include
(a) a failure by the expert to properly patent and control his
or her invention; and (b) an inability to commercially exploit
the invention because another inventor has thought to
obtain a patent on it! In case (b), moreover, considerable time
and resources can be wasted before the existence of such a patent
is discovered, because the highly-skilled expert dismissed the
level of inventiveness and the potential patentability of the
invention.
The moral is not to overestimate the skills to be attributed
to the notional "person skilled in the art" for
the purposes of assessing whether or not an invention is likely
to be considered obvious.
Q5. Are there any inventions that
cannot be validly patented in Europe?
Yes.
Most importantly, inventions which have been made publicly
available anywhere in the world before a patent application
is filed cannot be validly patented in Western Europe. This
is the case even if only one person, or a very small number
of people, know of the invention and were not subject to
an obligation to keep it confidential. In Western Europe, there
is no grace period (as exists under US law, for example)
to allow an inventor to apply for a patent after any voluntary
disclosure of the invention.
An invention which is made available to the public anywhere in the world
before an application for a patent is filed will fail the first requirement
of patentability Q4(i) above - it will not be "new".
Similarly, an invention which is obvious in comparison with
what is available to the public anywhere in the world before
an application for a patent is filed will fail the second requirement
of patentability Q4(ii) above - it will lack
an "inventive step".
An invention which is not capable of industrial application
will fail the third requirement of patentability Q4(iii)
above. In practice, an invention will normally possess industrial
applicability if it has any commercial significance at all. However,
under the European Patent Convention, methods of treatment
of the human or animal body by surgery or therapy and diagnostic
methods practised on the human or animal body are considered
not to be susceptible of industrial application and are therefore
not patentable. This exclusion is narrowly construed, and there
are alternative ways of defining inventions in the excluded fields
so as to avoid the exclusion - specific advice should be sought
if an invention is in these fields.
This leaves the fourth requirement of patentability Q4(iv)
above, namely that the invention does not lie in one of the statutorily
excluded categories of subject-matter. These categories cover
things which, for various public policy reasons, are either not
considered to be "inventions" or which are otherwise
specifically excluded from being patentable. In Western Europe,
the exclusions from patentability are as follows:
(a) Not considered as "inventions":
- discoveries as such;
- scientific theories as such;
- mathematical methods as such;
- literary works as such;
- dramatic works as such;
- musical works as such;
- artistic works as such;
- aesthetic creations as such;
- schemes, rules or methods for performing a mental act as such;
- schemes, rules or methods for playing a game as such;
- schemes, rules or methods for doing business as such;
- computer programs as such;
- presentation of information as such.
(b) Excluded from patentability (i.e. inventions for which
patents are not allowed):
- inventions the publication or exploitation of which would
be generally expected to encourage offensive, immoral or anti-social
behaviour (contrary to "ordre public"); and
- any variety of animal or plant or any essentially biological process
for the production of animals or plants, not being a micro-biological process
or the product of such a process.
A number of these exclusions have been carefully considered
in decided cases in the UK Patent Office, the UK Courts and/or
the European Patent Office, and the precise effect of the exclusion
may not be immediately apparent from its wording. For example,
the exclusion of "computer programs as such" does not,
in practice, prevent inventions which are implemented in computer
programs from being patented in Europe, provided that such inventions
have a technical character. The exclusions relating to "ordre
public" and plant or animal varieties do not, in practice,
prevent genetic engineering inventions from being patented in
Europe.
Contact us for specific
advice if you consider an invention may be excluded from patentability
for the reasons set out above.
Q6. How are patent applications
checked for novelty?
To assess whether an invention is new and involves an inventive
step - and therefore may be patentable in Europe (if it is not
otherwise excluded - see Q5 above) - the normal
process is to conduct searches of relevant technical literature
and other publications.
The patent collections of the world’s Patent Offices are
a good starting point for any searches, because they are carefully
classified according to the technical subject-matter. In addition,
technical literature which is held on the Internet or on databases
on which "key word" searches can be performed can also
be included in searches. (See Q8 below, and
our Search page for links to various web-sites
where keyword and other useful searches can be carried out).
Some other technical literature is well indexed, and these indexes
can be inspected relatively easily. After consulting indexed
material, and if a prior disclosure of the same or similar invention
is not revealed, it would be possible, although time-consuming,
to review collections of relevant technical literature even without
the benefit of any indexing.
If an invention has previously been made available to the public
by non-confidential use, without any accompanying written publication,
it would be necessary to find witnesses to confirm the details
of any use that took place. It is not usual to make such enquiries
unless there is good reason to suspect that use may have taken
place.
As a practical matter, most Patent Offices conduct only limited
searches of the published literature when carrying out formal
examination of a patent application for the novelty and obviouness
requirements. Such searches will typically extend to specified
patent collections and keyword searches on databases, but not
usually beyond that. For this reason, patents are granted with
no guarantee of validity. More detailed investigations are generally
only undertaken when one party wants to invalidate another's
patent, for example in contemplation of opposition or revocation
proceedings or in response to a claim of infringement.
We are always happy to arrange for searches to be conducted
of technical literature and other publications on a client’s
behalf, for example as a preliminary to the filing of a patent
application, as a supplement to any official search conducted
on a patent application, or as part of a proposed challenge to
the validity of another party’s patent or patent application.
For more details, see Q7 below.
Q7. Can you check and advise me
whether my invention is new and whether it has already been
protected by someone else?
Yes. One of the services we can provide is a search and advice
service.
Firstly, we would need to discuss with you the purpose of the
search. If it is to establish whether your invention is new,
we would select a time window over which it would be likely for
a publication to have disclosed the invention; the database collections
likely to provide a good supply of potential disclosures; the
language(s) in which you would be happy to receive revealed documents;
possible company or inventor names to target specifically; and
the budget you would wish us to work within.
If, on the other hand, the purpose of the search is to establish
whether your invention has already been protected by someone
else and whether operating your invention would infringe another
person's rights, a slightly different strategy would be required.
The time window for the search would be fixed as the previous
20 years (the maximum possible patent term in normal cases);
the database collection would be fixed as the patents and other
relevant Intellectual Property rights of the country or countries
of interest; we would be looking primarily at the claims of those
patents and the protection conferred byany other relevant
Intellectual Property rights, rather than the total disclosures;
we would additionally need to check that any patents and other
relevant Intellectual Property rights located are still in force
and that their scope has not been restricted; and as before,
the budget you would wish us to work within.
In either case, it is important to realise that searching for
relevant prior art is like looking for a needle in a haystack
when you don’t know whether or not there is a needle there!
Searches, if the result is negative, can only ever be considered
as indicative and never conclusive. Depending on the level of
confidence desired in any particular case and the importance
of what is at stake, it may be prudent to consider extended or
supplementary searches if initial results are negative. Ultimately,
time and costs always have to be balanced against the degree
of certainty commensurate with the risk.
Q8. Can you link me to web-sites
where I can try my own searching?
Disclaimer: These links are provided for convenience only.
Page Hargrave makes no warranty and accepts no liability with
respect to the accuracy, completeness or fitness for purpose
of any of the linked databases and search facilities.
Search for patent applications in their original language
from Great Britain and other European countries, the European
Patent Office (EPO) and WIPO/PCT databases (International
applications); patent applications with an English abstract
and title from Japan; and over 30 million documents worldwide.
Search for US Patent front pages, claims, titles, abstracts,
inventors and companies; European (EP-A) applications, (EP-B)
issued patents; Patent Abstracts of Japan & WIPO PCT
Publications.
Technical University of Ilmenau PATON (Patent Information
Online) provides the most up-to date and convenient search
facility, but requires password for access. The PAJ database
is split into two files:
- Backfile 1976-93
- Frontfile 1994 onwards
English abstracts of Japanese Patents but no drawings
For other searches see the additional links on our Search page
Q9. Are there any mechanisms for
delaying the patenting process to defer the costs?
Yes. Any of options (i), (ii) and (iii) mentioned in Q2 can
be modified by using one or both of two established delaying
procedures beforehand:
(a) The "Priority" System
The Priority system (otherwise known as the "Paris
Convention" or "Convention" system) allows
an applicant to file one or more basic patent or utility model
applications, normally in the applicant's home country, within
a period of one year, before completing a final (composite) "Convention" application,
which will claim the "Priority" of the earlier basic
application(s). The applicant must file any desired "Convention" application(s)
with the Patent Office(s) appropriate to the country or countries
of interest (i.e. options (i), (ii) or (iii) in Q2 above
for the United Kingdom) and must claim the "Priority" (Date)
of the earlier basic application(s), within a one year period
calculated from the date of filing of the earliest basic application
which has not been expressly withdrawn or abandoned. Otherwise,
the right to "Priority" is lost.
The World Intellectual Property Organisation, WIPO,
maintains a list (.pdf)
of the countries which are party to the Paris Convention, and
which recognise the deferral of the filing of "Convention" applications
for the period of up to one year after the filing of a basic
home country application. Following implementation of the World
Trade Organisation (WTO) Agreement on Trade Related Aspects
of Intellectual Property Rights (TRIPS),
the right to claim "Convention" Priority is now also
extended to all WTO
members irrespective of whether or not they are also signatories
of the Paris Convention. Additionally, the UK has reciprocal
arrangements with a number of other countries, which are recognised
as "Convention" countries for the purposes of UK patent
filings. The UK list below is derived from The
Patents (Convention Countries) Order 1994 SI 3220 as
amended by The
Patents (Convention Countries) (Amendment) Order 1995 SI 2989 and The
Patents (Convention Countries) (Amendment) Order 2000 SI 1114 (which
added Taiwan as a convention country).
The PCT
System requires an applicant to file a complete application
(known as an "International Application") with the
International Bureau of the World Intellectual Property Organisation
in Geneva, by the end of the one year "Priority" period
mentioned above, but then extends the deadline for filing
corresponding application(s) in the Patent Office(s) appropriate
to the country or countries of interest, which must be PCT
Contracting States, and thus allows national filing costs
to be deferred for up to a further 18 (or in some countries
19) months. During that time an International Search (and optionally
an International Preliminary Examination - IPE) would be carried
out, giving an indication of whether and what objections are
likely to be raised by the national or regional offices. The
PCT System is operated according to the provisions of the Patent
Co-operation Treaty and Regulations.
For a quicklook overview of PCT coverage in Europe see our Europe-PCT page.
Q10. I devised the invention in
the course of my employment. What rights do I have personally?
The following comments are appropriate to rights in respect
of the United Kingdom only. For advice in relation to rights
in other countries, please consult a member of the firm.
Provided that an employment contract, or conditions of work
having the characteristics of employment, existed when the invention
was made, the employer (i.e. the company or other owner of the
business) will automatically be the legal first owner of the
invention, and the right to any patent(s) on it, if the invention
was made in the course of the employee’s normal duties,
or in the course of other duties specifically assigned to the
employee, and the circumstances in either case were such that
an invention might reasonably be expected to result from the
carrying out of those duties.
As far as directors, managers or other officers are concerned,
the employer (i.e. the company or other owner of the business)
will automatically be the legal first owner of the invention,
and the right to any patent(s) on it, if the invention was made
in the course of the director’s, manager’s or officer’s
duties and, because of the nature of those duties and the particular
responsibilities arising from the nature of his or her duties,
he or she had a special obligation to further the interests of
the business.
In general, therefore, an employer automatically owns an employee’s
invention (including a director’s, manager’s or officer’s
invention) where that invention is relevant to the business and
where either the employee was employed (or assigned) to invent
or was sufficiently senior to have a "special obligation" to
further the interests of the business.
If however, the invention was actually devised in the employee’s
own time, there may be difficulty in deciding whether the requirements
stated above have been satisfied. In particular, was the invention "made
in the course of the normal duties" of the employee
or, in the case of a director, manager or officer, "in
the course of [his or her] duties"? For advice on specific
cases, a member of the firm must be consulted.
Unless an employer can claim legal first ownership in one of
the ways set out above, the employee (including a director, manager
or officer) will automatically be the legal first owner of the
invention.
Of course, the legal first owner of an invention (whether employer
or employee) can voluntarily transfer his ownership to another
party, typically in return for monetary compensation or "consideration".
This type of transfer is known as "assignment". It
is normal and advisable for a company to secure assignments from
its employee inventors as a precaution, even if the circumstances
appear clear that the company is automatically the legal first
owner of the invention.
The Patents
Act 1977 includes lengthy provisions (ss39-43 - .pdf
version) whereby an employee, who has made a patented invention
which the employer otherwise automatically owns by virtue of
the rules explained above, can claim compensation through proceedings
in the UK Patents
Court or the UK Patent
Office provided that the patent has been of "outstanding
benefit" for the employer. In practice, none of these
proceedings has ever been decided in favour of an employee,
principally due to difficulties in proving that the required "outstanding
benefit" has accrued directly from the patent. It
must be concluded that employed inventors, unless they have
a contract with their employer that provides for compensation
where an invention is automatically owned by the employer,
cannot expect to succeed in a legal claim for compensation
from the employer after the event.
All inventors - employed or not - do have the right to be acknowledged
on any patent for their invention. However, this right of acknowledgement
extends only to the naming of the inventor(s); it does not, of
itself, provide the inventor(s) with any ownership or control
of the invention or patent(s).
Warning: All employees (including directors,
managers and other officers) should take their own legal advice
if they are considering publishing, patenting or exploiting on
their own account inventions to which their employer may
be entitled as first legal owner. Not only may such actions
breach the Patents Act 1977, but offences may also be committed
under other Statutes or under common law.
The legal position of employed designers is generally similar
to the legal position of employed inventors, but there are important
differences in some circumstances (in particular, there are no
corresponding provisons allowing an employee to seek compensation
where a design or copyright has been of any benefit to an employer).
For further discussion of rights relevant to designers and artists,
see our Designs and Copyright pages.
Q11. Can you briefly outline the
procedure you would follow for patenting my invention in the
United Kingdom via the UK Patent Office (not using the EP/PCT
routes initially)? How long is it likely to take?
It is vital that you maintain your invention confidential
before any application for a patent is filed (see Q5 above).
We would start the procedure by filing, on your behalf, an application
for a patent in the UK Patent Office.
If the application is the first filing of any application for
that invention, the application must include:
• a request for the grant of a patent
• a description (and, if necessary, drawings) of the invention
• the name and address of the applicant
• the status of an incorporated applicant (e.g. the country or state of
incorporation).
If the application is a subsequent filing, claiming priority
(see Q9 above) from one or more basic applications
in the United Kingdom or overseas, the application must also
include:
• a declaration of Priority,
showing the details of the basic application(s).
In either case, the following additional material must also
be filed by the deadline stated:
• claims defining the invention
(deadline: 12 months from the filing date or from the earliest claimed
priority date or, if later, one month from the filing date in a case
where priority is claimed) (no extension available)
• an abstract summarising the invention
(deadline: as for claims)
• a request for preliminary examination of the application
and search of the official records for publication of identical
and similar earlier inventions
(deadline: as for the claims). (The appropriate fees for preliminary examination
and search must also be paid.)
• professionally prepared drawings, if requested by the
UK Patent Office
(deadline: set by the UK Patent Office if the drawings filed do not meet
the prescribed standards) (limited extension available)
• the full name and address (business or home) of the
(or each) inventor, unless (s)he is the (sole) applicant and
this fact is already stated
(deadline: 16 months from the filing date or from the earliest claimed
priority date, if any) (limited extension available)
• if appropriate, details of how the rights of the (or
each) inventor have passed to the applicant
(deadline: 16 months from the filing date or from the earliest claimed
priority date, if any) (limited extension available)
• if appropriate, an officially certified copy of the
or each basic application from which priority has been claimed
(or, if that is an abandoned UK patent application, a request
for the papers to be re-used from the official file)
(deadline: 16 months from the earliest claimed priority date) (limited
extension available)
• if appropriate, a certified English translation of
the or each basic application, from which priority has been
claimed
(deadline: the date of grant of the UK patent, unless requested earlier
by the UK Patent Office)
• if appropriate, as an alternative to the certified
English translation of the or each basic application, a declaration
to the effect that the full UK patent application is a complete
translation of the relevant basic application
(deadline: the date of grant of the UK patent, unless requested earlier
by the UK Patent Office)
As soon as the request for preliminary examination and search
has been filed, and the appropriate fee paid, the UK
Patent Office will conduct its preliminary examination and
search. In the preliminary examination, any formal deficiencies
in the papers that have been filed will be brought to our attention
and we will then correct them. In the search, any relevant prior
publications located by the Search Examiner will be listed in
a Search Report and copies provided. We normally make a charge
for reporting the results of the search to you (if requested,
this charge can be included for convenience in the initial charges
raised when the application is first filed).
The UK Patent Office will automatically publish the application
on, or shortly after, the expiry of the period of 18 months from
the filing date or from the earliest claimed priority date, if
any.
Unless you yourself have by then publicly disclosed the invention,
for example through non-confidential discussions, through advertising
or publicity or through launch of a marketed product or process
(provided in each case that the relevant action makes the invention
available non-confidentially to at least one member of the public),
and provided that publication has not taken place by other means,
this official publication by the UK Patent Office will constitute
the first publication of the invention. Therefore, even if you
yourself have maintained confidentiality, in some (but not all)
countries of the world applications for corresponding overseas
patents cannot validly be filed after this official publication
date. For details of which countries this rule would apply to,
please contact a member of the firm.
However, although the official publication may prevent subsequent
filing of valid patent applications in many overseas countries,
it will have the effect of estabishing the date from which your
rights can subsequently be enforced against infringers after
the UK patent is granted.
To be granted, the application must successfully pass the substantive
examination stage. Substantive examination must be initiated
by the filing of a formal request within six months after the
date of the official publication mentioned above (limited extension
available). In the substantive examination stage, an Examiner
of the UK Patent Office is assigned to the application, and checks
it thoroughly for compliance with all the patentability requirements
of the UK Patents Act 1977 (see Q4 and Q5 above).
If necessary, we will enter into correspondence with the Examiner
on your behalf (and subject to your instructions), either to
argue and explain that any misgivings the Examiner may have are
unfounded, or to amend the application papers to cure any defects
noted. The correspondence between us and the Examiner will be
held on an open file in the UK Patent Office, which members of
the public may inspect.
In the event that agreement with the Examiner cannot be reached
in correspondence, or in a telephone conversation, or as a result
of an informal meeting, a formal Hearing can be held before a
senior official of the Patent Office (a "Hearing Officer"),
to try to resolve the matter. If agreement still cannot be reached,
the application would be refused and you would then have to appeal
to the Patents
Court (part of the High
Court of Justice), and from there, if necessary, to the Court
of Appeal and House
of Lords.
The costs of each stage of the procedure will depend on the
amount of work involved, as well as the official
fees charged by the UK Patent Office for the preliminary
examination and search, and for the substantive examination.
See Q14 below, for further information on
likely costs.
The procedure is clearly staged, and the likely costs can be
discussed at each stage in the process. At any stage, an application
can be withdrawn if further expenditure is not felt to be warranted.
The application would then be of no further effect, other than
as a publication against later applications for protection of
the same or a similar invention (assuming the official publication
has taken place). Costs already incurred are not refundable.
It is not possible to guarantee that any patent application
will succeed and mature to a granted UK patent. This is dependent
primarily on whether the invention meets the patentability requirements
of the UK Patents Act 1977 (see Q4 and Q5 above).
It is also not possible to predict precisely how long the patenting
procedure may take for any given application. This will largely
depend on whether an applicant wishes to take advantage of all
the available time for completing each stage, or to speed the
procedure up (which of course would have the effect of bringing
forward later costs). In addition, the patenting procedure can
be slower if the application has a complex substantive examination
stage. Under Section 20 of the UK Patents Act 1977, an application
cannot be pending for more than four years and six months from
the filing date or from the earliest claimed priority date, if
any, without a decision on patentability being taken by the UK
Patent Office (unless the initial examination has been unusually
delayed, in which case a longer period will be allowed). If,
by the end of that period the UK Patent Office is still unable
to grant a patent, the application will be treated as having
been refused. More typically, however, the substantive examination
can be expected to be completed between about 3 and 4 years after
the filing date or from the earliest claimed priority date, if
any.
Q12. Can you briefly outline the
procedure you would follow for patenting my invention in Western
Europe (potentially including the United Kingdom) via the European
Patent Office (not using the PCT route initially)? How long
is it likely to take?
It is vital that you maintain your invention confidential
before any application for a patent is filed (see Q5 above).
It is also important that a UK resident does not file any
patent application outside the UK without having previously
filed a corresponding patent application with the UK Patent
Office, or without having first obtained formal clearance from
the UK Patent Office. Unauthorised overseas patent filing is
a criminal offence under the National Security and Safety provisions
of Sections
22 and 23 of the Patents Act 1977 (.pdf file). (However,
compliance with these provisions can conveniently be met by
depositing a European Patent Application with the UK Patent
Office, which will then check the application before forwarding
it to the European Patent Office).
We would start the procedure by filing, on your behalf, an application
for a patent in the European
Patent Office (normally via the UK
Patent Office to ensure compliance with the requirements
of Section 23 of the Patents Act 1977).
If the application is the first filing of any application for
that invention, the application must include:
• a request for the grant of a patent
• a description (and, if necessary, drawings) of the invention
• claims defining the invention
• the name and address of the applicant
• the status of an incorporated applicant (e.g. the country or state of
incorporation)
If the application is a subsequent filing, claiming priority
from one or more basic application(s) in the United Kingdom or
overseas, the application must also include:
• a declaration of Priority,
showing the details of the basic application(s).
In either case, the following additional material must also
be filed by the deadline stated:
• an abstract summarising the invention
(deadline: set by the European Patent Office) (any extension is at the
discretion of the European Patent Office, and cannot be guaranteed)
• payment of the filing fee and the fee for a search
of the official records for publication of identical and similar
earlier inventions
(deadline: one month from the filing date) (no extension available)
• professionally prepared drawings, if requested by the
European Patent Office
(deadline: set by the European Patent Office if the drawings filed do not
meet the prescribed standards) (any extension is at the discretion of the
European Patent Office, and cannot be guaranteed)
• the full name and address (business or home) of the
(or each) inventor, unless (s)he is the (sole) applicant and
this fact is already stated
(deadline: 16 months from the filing date or from the earliest claimed
priority date, if any) (no extension available)
• if appropriate, details of how the rights of the (or
each) inventor have passed to the applicant
(deadline: 16 months from the filing date or from the earliest claimed
priority date, if any)(no extension available, although a two month period
will be set by the European Patent Office for correction if the details
are not supplied voluntarily)
• if appropriate, an officially certified copy of the
or each basic application from which priority has been claimed
(not required if the basic application is (i) a European patent
application, (ii) a Japanese patent application, (iii) a Japanese
utility model application or (iv) an International (PCT) patent
application whose number is prefixed by the letters PCT/EP
or PCT/JP)
(deadline: 16 months from the earliest claimed priority date) (no extension
available, although a two month period will be set by the European Patent
Office for correction if the details are not supplied voluntarily)
• if appropriate, an English, French or German translation
of the or each basic application from which priority has been
claimed
(deadline: the deadline for payment of the grant and printing fee after
examination, unless requested earlier by the European Patent Office)
• if appropriate, as an alternative to the English, French
or German translation of the or each basic application, a declaration
to the effect that the European patent application is a complete
translation of the relevant basic application
(deadline: the deadline for payment of the grant and printing fee after
examination, unless requested earlier by the European Patent Office).
As soon as the filing and search fees have been paid, the European
Patent Office will conduct its preliminary examination and search.
In the preliminary examination, any formal deficiencies in the
papers that have been filed will be brought to our attention
and we will then correct them. In the search, any relevant prior
publications located by the Search Examiner will be listed in
a Search Report and copies provided. We normally make a charge
for reporting the results of the search to you, although if you
so request this charge can be included as an advance charge when
the application is filed.
In addition, the European Patent Office will automatically publish
the application on, or shortly after, the expiry of the period
of 18 months from the filing date or from the earliest claimed
priority date, if any.
Unless you yourself have publicly disclosed the invention already,
for example through non-confidential discussions, through advertising
or publicity or through launch of a marketed product or process
(provided in each case that the relevant action makes the invention
available non-confidentially to at least one member of the public),
and provided that publication has not taken place by other means,
this official publication by the European Patent Office will
constitute the first publication of the invention. Therefore,
even if you have maintained confidentiality, in some (but not
all) countries of the world applications for corresponding overseas
patents cannot validly be filed after this official publication
date. For details of which countries this rule would apply to,
please contact a member of the firm.
However, although the official publication may prevent subsequent
valid patent applications in many overseas countries, it will
have the effect of establishing the date from which your European
Patent rights can subsequently be enforced after the European
patent is granted. This provisional protection between official
publication and patent grant is generally subject to a translation
of the claims of the application into a recognised national language
of the Contracting State where the infringement takes place,
either being filed in the national Patent Office of the country
in which the provisional protection is required, or being served
directly on the alleged infringer in that country.
To be granted, the application must successfully pass the substantive
examination stage. Substantive examination must be initiated
by the filing of a formal request for such examination and stating
the countries for which the European patent is required (see
Q2 above for a list of the available countries), within six months
after the official publication mentioned above (limited extension
available). In the examination stage, an Examiner of the European
Patent Office is assigned to the application, and checks it thoroughly
for compliance with all the patentability requirements of the
European Patent Convention (see Q4 and Q5 above).
If necessary, we will enter into correspondence with the Examiner,
either to argue and explain that any misgivings the Examiner
may have are unfounded, or to amend the application papers to
cure any defects noted. The correspondence between us and the
Examiner will be held on an open file in the European Patent
Office, which members of the public may inspect.
In the event that agreement with the Examiner cannot be reached
in correspondence, or in a telephone conversation or as a result
of an informal meeting, a formal Hearing ("Oral Proceedings")
can be held before the Examiner and two other Examiners, to try
to resolve the matter. If agreement still cannot be reached,
the application would be refused and you would have to appeal
to the Boards
of Appeal of the European Patent Office.
After the Examiner has accepted the application, a fairly lengthy "grant
phase" must then be completed, to obtain grant of the European
Patent and to register it before each national Patent Office
in those designated countries in which protection is required.
A considerable amount of translation work is needed during this
grant phase, which can typically last around 12 to 18 months.
This translation work is entirely at the applicant’s expense.
Within nine months after the date of grant of the European patent,
any person may oppose the patent in the European Patent Office,
in which case the validity of the patent will be examined in
contested opposition proceedings.
The costs of each stage of the procedure will depend on the
amount of work involved, as well as the official
fees charged by the European Patent Office for the preliminary
examination and search, and for the substantive examination.
See Q14 below, for further information on
likely costs.
The procedure is clearly staged, and the likely costs can be
discussed at each stage in the process. At any stage, an application
can be withdrawn if further expenditure is not felt to be warranted.
The application would then be of no further effect, other than
as a publication against later applications for protection of
the same or a similar invention (assuming the official publication
has taken place). Costs already incurred are not refundable,
unless the substantive examination has not started when the application
is withdrawn, in which case a partial refund of the substantive
examination fee will be available.
It is also not possible to predict precisely how long the patenting
procedure may take for any given application. For the reasons
set out above, this will largely depend on the complexity of
the substantive examination stage. Typically, however, the substantive
examination would be completed between about 4 and 7 years from
the priority or filing date, whichever is earlier. Unlike in
the UK Patent Office, there is no time limit by which a European
Patent application must be in order for grant.
Q13. Which route should I select
- national UK or European?
There is no right or wrong answer to this question. It must
be judged on a case-by-case basis. The choice will be influenced
by a number of factors, including which other countries may be
of interest to you, both within and outside Europe.
A European patent is almost certain to be more expensive and
slower to obtain than a national UK patent, although probably
not more expensive than, say, the combined costs of obtaining
national patents in a total of three or more different European
countries. Costs are discussed more fully in Q14 below.
The examinations conducted by the European and the UK Patent
Offices are supposed to follow the same criteria, but inevitably
there may be differences. As a general rule, a search conducted
by the European Patent Office is likely to be more thorough than
a search conducted by the UK Patent Office. Therefore, if close
prior art is available on a reasonably accessible database, it
is more likely that this will be revealed in the European Patent
Office search. This could make it more difficult to gain allowance
of broad patent claims in the European Patent Office; whereas
a corresponding UK patent application might be more readily granted
and could appear to have broader effect if such (unrevealed)
prior art was not considered during UK examination, but it could
also be partially or wholly invalid as a consequence.
As far as other European countries are concerned, because we
would handle all the filing and examination procedures in English
before the European Patent Office - rather than having to appoint
local patent attorneys as "middle men" to represent
you (often in another language) before the relevant national
Patent Offices in other Contracting
States - the possibilities for misunderstandings are reduced,
and the examination procedure is enormously simplified compared
with the alternative option of dealing with individual national
patent applications in various European countries. On the other
hand, the examination conducted by national Patent Offices in
Europe can be very much quicker and less stringent than that
conducted by the European Patent Office, so that may justify
selection of the national route in some cases.
Furthermore, some British Commonwealth countries do not maintain
a fully examining Patent Office themselves, but register national
UK or European Patents on application by the patent owner. If
such countries are of interest, this may affect the choice of
route.
There is nothing to prevent you applying both in the UK and
European Patent Offices, but in that event you will ultimately
need to select one of the resulting UK Patent or European Patent
(UK) and abandon the other. Double patenting is not permitted.
Enforcement of national UK and European patents can involve
differences in procedure. For example, the rules on jurisdiction
to hear infringement actions differ as between UK and European
patents. Whereas a Continental court may, in appropriate cases,
have jurisdiction over infringement of a European patent that
has been registered in the United Kingdom (usually abbreviated
as "European Patent (UK)" or simply "EP(UK)"),
this is much less likely in the case of a national UK patent.
Therefore, the option for "forum shopping", in which
the holder of a patent selects the Court most likely to be sympathetic
and/or most likely to grant pan-European relief against an infringer,
is a potential advantage more readily available with a European
patent.
In conclusion, we would recommend that you should seek advice
from a member of the firm on a case-by-case basis, when deciding
which route to select for obtaining a patent in the United Kingdom.
Q14. What are the cost implications
of the two routes - national UK and European?
There are normally two factors to consider: the overall cost
and the way in which the components of the overall cost are spread
out during the patenting process.
It is generally impossible to predict the likely range for overall
costs with any accuracy until at least the Search Report is received
(giving an indication of whether close prior art exists), and
even then there can be later surprises at examination or if a
third party opposes grant (in the case of a European patent).
Initially a budget of perhaps £5000 (US $7200)* should
be allowed to cover the costs of prosecuting a relatively straightforward
national patent application to grant in the UK, with those costs
being spread over about 4 years (see Table below).
As far as a European application is concerned, a budget of perhaps £8500
(US $13000) should be allowed to take the application through
to grant, to which around £1600 (US $2400) would be added
per additional country designated in the European application;
again, this would represent a prudent initial budget for the
overall cost of a relatively straightforward European patent,
with costs typically spread over about 5 years (see Table below).
The cost-time (or cost-staging) profile in any particular case
will depend on the speed of action of both the applicant and
the relevant Patent Office, as well as whether other parties
choose to intervene in the procedure (e.g. through an opposition).
However, in general terms, the representative budgets might typically
be spread over years 1-5 as shown below:
Representative spread of costs in Years 1-5 for prosecuting a
typical patent application to grant
Year
National UK
European
Basic
Supplement
(per designated country)
1
£2000
($2900)*
£2900 ($4400)*
£0 ($0)
2
£1000
($1500)
£1500 ($2300)
£100
($150)
3
£ 450
($ 600)
£ 350
($540)
£0 ($0)
4
£1550
($2300)
£ 2000($3000)
£0 ($0)
5
[post-grant renewal
fees]
£ 2000 ($3000)
£1500
($2300)
* In these figures £1500 ($2300) has been allowed for
the cost of initial drafting and preparation of the description,
claims, abstract and drawings of the invention. This figure should
be subtracted if these papers are already prepared, e.g. if priority
is claimed from an earlier basic patent application.
The above budgets are all subject to confirmation or revision,
having regard to the facts of a particular case, and any changes
in the scale and timing of official fees charged by the national
UK and European Patent Offices. They assume no particular complexity;
no more than ten claims in the application (additional fees are
payable for more than ten claims in a European patent application);
average speed of action both by the applicant and the Patent
Office concerned; no division of the application (e.g. to answer
an objection that more than one invention is claimed); no opposition
against the patent (in the European Patent Office); and that
no appeal is required against an adverse decision of an Examiner.
In Western Europe, patents can be kept in force for up to twenty
years from their application date.
If the Priority system is invoked before
a final patent application is filed (see Q9 above),
the resulting patent could therefore finally expire twenty-one
years after the basic application (from which priority was claimed)
was filed.
Granted patents - and even pending patent applications, in some
jurisdictions - must be kept in force by payment of annual renewal
fees. If an annual renewal fee is not paid, the patent lapses
and is of no further protective effect. The requirement to pay
annual renewal fees to maintain a granted patent in force is
universal in Western Europe, including the United Kingdom, and
this is the same whether the patent is a national patent or a
European patent that has been registered after grant in the country
in question. The requirement to pay annual fees merely to maintain
a pending patent application is not universal - for example,
there is no such requirement in relation to national UK patent
applications, whereas there is such a requirement for European
patent applications.
Most clients take advantage of our renewal reminder system and
instruct us to enter their patent application and grant dates
on our computerised renewal diary, and to attend to renewal (after
first having obtained instructions that renewal is still required)
at the appropriate times.
If a patent relates to a pharmaceutical, veterinary or agrochemical
invention, a Supplementary Protection Certificate (SPC) can
be obtained in appropriate cases, allowing an extension of some
of the effects of the patent for up to a further five years after
the normal expiry date. (See UK Patent Office booklet entitled "Supplementary
Protection Certificates for Medicinal Products and Plant Protection
Products: A Guide for Applicants" for more information
- .pdf
version). If you would like specific advice on this possibility,
please contact a member of the firm as soon as the official regulatory
marketing approval is granted for a product covered by your patent.
The prolongation would be effective only to the extent of the
particular active pharmaceutical, veterinary or agrochemical
agent for which official regulatory marketing approval has been
granted, and the corresponding approved use(s). Thus, a Supplementary
Protection Certificate protects only the specific marketed active
agent covered by the patent (and not unapproved analogues or
other agents which may also have been covered by the patent).
The intention is thereby to compensate the patent owner to some
extent for the delays typically encountered in obtaining the
official regulatory marketing approval, but not to prevent other
parties from marketing such analogues or other agents, if desired.
Q16. What difference does it make
if I use the PCT procedure initially?
The term of any eventual UK patent is not affected by whether
the PCT procedure is used initially. In that
event, the twenty years is calculated from the filing date of
the International (PCT) Patent Application. However, whilst use
of the PCT procedure has the advantage of allowing an applicant
to defer the costs associated with filing and examination of
patent applications, it usually also defers the date on which
a patent is eventually granted, particularly in the normally
relatively speedy Patent Offices such as the national UK Patent
Office.
The procedures before the national UK Patent Office or the European
Patent Office are fundamentally the same as explained in Q11 and Q12 above,
except that the documentation required to file the application
is simplified in the case of an application following on from
the PCT route, and all the procedural stages that would normally
have arisen in national Patent Offices during the period of deferral
provided by the PCT route have to be complied with on filing
of the national application(s) or the European application as
these follow on from the PCT stages. In the European Patent Office,
some discounts may be available in the official fees payable,
depending on whether the searching and examination work already
conducted in the PCT procedure can be re-used. The EPO publishes
a Guide for applicants dealing with PCT
procedure before the EPO - "Euro-PCT" (.pdf
version).
There is no such thing as a "World Patent", and patents
are still granted country-by-country in almost all cases, although
there are a number of regional organisations, like the European
Patent Organisation, which have centralised application procedures
for member countries, including the Eurasian
Patent Organisation, the African
Regional Intellectual Property Organisation (ARIPO) and the African
Intellectual Property Organisation (OAPI). However, as explained
in Q9, the PCT System does
allow for filing a single application which may designate any
or all of the one hundred and more Contracting
States of the Patent
Cooperation Treaty. This offers significant advantages in
deferring costs and decision points for patentees who may be
initially uncertain about where to proceed. The PCT also provides
the additional benefit that Contracting States must apply consistent
requirements for entry of a PCT application into the national
phase in a Contracting State. Our services include arranging
for patent applications to be filed using the PCT, regional sytems
or national routes in the appropriate jurisdictions and steering
applications through their respective examination procedures
to grant wherever the client requires.
An important patenting country outside Europe is the United
States. The USA is a PCT Contracting State, but special legal
rules and procedures apply in that country in the national phase
(before the US
Patent and Trademark Office), and specific advice should
be obtained from a member of the firm, if you are considering
patenting in the USA, or if you need advice concerning another
party’s commercial or patenting activities there.
In particular, the following points should be noted regarding
the USA:
- US law provides a twelve month grace period which European
inventors often find useful. In essence, provided that a US
patent application is filed within twelve months following
the first non-confidential disclosure by an inventor, a valid
US patent can normally still be obtained. This of course contrasts
with European law, which gives no grace period to an inventor
in those circumstances (see Q5 above);
- US law can be more generous to inventors than European law
as regards the available range of patentable inventions in
quasi-technical areas such as methods of medical treatment,
computing, recreation and business management (see Q5 above).
- Where two independent inventors devise substantially the
same invention at similar times, US law will recognise the
superior legal rights of the first inventor, even if he did
not apply for his patent first. This contrasts with European
law, which gives no such recognition to a later applicant.
However, this potential advantage of US law is dependent on
the first inventor being able to prove what he did (and when)
to a very high level of legal certainty. Please consult a member
of the firm for specific advice on the extent and quality of
inventors’ record-keeping and independent corroboration
required, if you wish to secure the maximum potential rights
for your invention in the United States.
It is important that a UK resident does not file any patent
application outside the UK without having previously filed
a corresponding patent application with the UK Patent Office,
or without having first obtained formal clearance from the
UK Patent Office. Unauthorised overseas patent filing is a
criminal offence under the National Security and Safety provisions
of Sections 22 and 23 of the Patents Act 1977. [See Q12 above].
Contact Us for further
information on obtaining patents and patent-like rights (e.g.
so-called petty patents, utility models etc.) in any countries
of interest.
Q18. What can happen if an invention
is launched in the United Kingdom when it is already patented
by someone else?
The short answer is anything ranging from (a) receiving a High
Court Claim Form (formerly known as a writ) for patent infringement
to (b) nothing whatsoever.
In other words, it largely depends on the motivation of the
earlier patent owner. This will clearly depend on the actual
effect of the unauthorised launch in the market, and whether
such competition damages the business or business prospects of
the owner of the earlier patent.
While it may sometimes be possible to resolve a dispute by concluding
a licence agreement, this can never be relied on by a junior
user, and the safest course of action is always to check beforehand
whether you are free to launch a new product or process (see Q7 above).
Q19. Can my patent be challenged
after it has been granted?
Yes. Patents are granted with no guarantee of validity. If your
patent is a European patent, any third party can institute opposition
proceedings in the European
Patent Office, within the period of nine months following
the date of grant of the European patent, and that challenge
to validity will be judged by the European Patent Office Opposition
Division. The loser in those opposition proceedings has the right
of appeal to the Boards
of Appeal of the European Patent Office, but not to any national
Court. However, if the opponent loses and the European patent
is maintained, separate national challenges can still be started
later (see the next paragraph).
National UK patents and European (UK) patents can be challenged
at any time via national proceedings in the United Kingdom. Such
proceedings may be instituted either in the UK
Patent Office or in the Patents
Court, which is part of the High
Court (Chancery Division), at the choice of the challenger.
The loser in any UK Patent Office proceedings can appeal to the
Patents Court, and the loser in the Patents Court can then appeal
to the Court
of Appeal and possibly to the House
of Lords.
Validity can also be challenged by way of a counterclaim in
an action for patent infringement. Indeed, this is the usual
circumstance where validity of a patent would be challenged.
Q20. How do I use my patent to
stop unauthorised commercial use of my invention?
You should always seek professional advice before making
any approach to an unauthorised user.
To start with, we would normally notify the unauthorised user
of the existence of the patent and ask for the user’s comments
within a short reply period. If those comments do not lead directly
into settlement discussions, you would need to consider whether
to sue the unauthorised user for patent infringement. The remedies
available in such an action, provided that the patent is valid
and has been infringed, would normally include:
i) an injunction (restraining order);
ii) an award of damages (compensation);
iii) an order for delivery-up or destruction of infringing
products in the infringer’s possession;
iv) an order to compensate your legal costs; and
v) ancillary orders such as disclosure of details of suppliers
and customers, if appropriate.
In urgent cases, pre-action or pre-trial (interim) orders, including
restraining and search orders, may be available. In appropriate
cases it is also possible to use Customs
procedures to seize infringing goods at entry ports. If criminal
offences are being committed by an infringer, action by the Police
or Trading
Standards Authorities may be possible.
Civil court procedures can be instituted in either the Patents
Court or the Patents County Court, and the loser would
have the right of appeal to the Court
of Appeal. Action against a Scottish user would be taken
in the corresponding Scottish
Courts (the Outer House of the Court of Session, the decision
of which may be appealed to the Inner House of the Court of
Session).
Q21. Are there any rules for how
I should use my invention?
You should mark your product and literature with details of
the relevant UK patent application or granted patent that you
own. The details must be accurate and should preferably quote
the application or patent number.
If you intend to licensing the invention for others to use,
please refer to the Licensing section
of our web-site for guidelines on the issues involved.
If you are an inventor with no existing manufacturing or distribution/
sales facilities, we may be able to direct you to sources of
relevant advice and services including development of business
plans, seeking finance and grants, company formation, etc. However,
we ourselves do not advise in these areas.
Always remember that any discussions with others must be
strictly confidential, at least until a patent application
has been filed.
Q22. What do you need to file
a UK or European patent application for my invention?
For a basic UK or European Patent Application we need:
- a detailed description of the invention, including appropriate
explanatory drawings and diagrams; the description must identify
the essential features of your invention; ideally the description
should:
- identify the particular problem(s) the invention is intended
to solve or address and/or the advantage(s) it offers over
what is pr
