Patents in the UK

Photo: CITMA/gov.uk

A patent is an intellectual property right and gives the right to stop people from making, using, importing, or selling an invention without the permission of the inventor. In the UK, a patent can remain in force for up to 20 years and can provide protection throughout the UK so long as renewal fees are paid every year. 

For the patent to be granted, the invention must fulfil three criteria. Firstly, it must be new. This means an invention must not have been made public before the application for a patent. Secondly, it must be inventive, meaning the invention must bring something new and not just an obvious development to someone with a good knowledge of the field. Thirdly, it must be industrially applicable. With this, an invention should reflect something technical, capable of being used industrially.  

Because of these three criteria there are several things that cannot be patented. These include:
1) a discovery, scientific theory, or mathematical method,

2) a literary, dramatic, musical or artistic work or any other aesthetic creation,

3) a procedure of medical treatment or diagnosis,

4) a way of doing business, playing a game or thinking,

5) the way information is presented,

6) some computer programs or mobile apps, and

7) essentially biological processes like cross-breeding plants. 

Just because an invention qualifies for patent protection, it does not necessarily mean that patent protection is the best solution. There are both advantages and disadvantages to getting a patent. The advantages of patenting an invention include the right for the owner of the patent to license a patent to others to use it, or even to sell it. Licensing is often an important tool and can provide a good source of income to a business. A patent licensing agreement grants the licensee certain rights regarding the use or sale of a patented invention. Such an agreement typically includes:

1) the subject of the agreement,

2) the scope of the license,

3) royalties,

4) duration and

5) limitation.

There are also some disadvantages when patenting an invention. A patent entails making certain parts of an invention publicly available, increasing the risk that competitors might exploit an invention. This also means that the owner of a patent needs to be prepared to defend his or her patent, if necessary. This can turn out to be both time-consuming and very expensive. Also applying for a patent can itself be a very costly and lengthy process. 

When considering whether to patent an invention or not, one should also consider the risks of not patenting against the costs of doing so. Other forms of intellectual property rights might be a better option. First and foremost, trademark rights may be preferable, particularly where it is possible to create a brand out of an invention and be the first to market. Moreover, if the looks of an invention are important, rather than just the technical aspects of the invention, it may be desirable to seek design rights (more on trademark rights and design rights in later blog posts). It might also be a better idea to keep certain technical information secret and not reveal them to the public though a patent. In this regard a non-disclosure agreement could turn out to be a good solution when talking to others about an invention. Particularly if an invention is likely to sell only for a short period of time, but also to keep trade secrets intact. 

Before applying for a patent, a comprehensive search must be conducted to check if similar patents already exist. This helps to determine whether an invention is novel and inventive (and is therefore eligible for patent protection) or if it infringes upon already existing patents.

Once the decision to apply for a patent is made, the patent application must be prepared. A patent application is made up of four parts that need to include:

1) a description of the invention that allows others to see how it works and how it could be made,

2) legal statements known as claims, that set out the technical features of the invention,

3) a summary, known as abstract to summarise all the important technical aspects of the invention, and

4) drawings to illustrate the description and clarify the nature of the invention. 

A UK patent application can be filed with the Intellectual Property Office (IPO). As part of the application process a patent search and a substantive examination will be done by the IPO to check if a patent is new and inventive.

After the patent application has been filed, it is an opportunity to mark an invention. Patent marking involves labelling an invention as “patent pending” or “patent applied for”. It must include the patent number and the country of patent application. A patent that has been marked incorrectly is considered as false marking. Marking can be incomplete if:

1) the indicated patent does not cover the product,

2) the patent has expired, or

3) the patent doesn’t cover the territory where the marked product is being sold.

If you apply for a patent in the UK, it only protects your invention nationally. However, there are other ways to get patent protection in different countries. This might be a good solution for companies operating internationally. It is possible to:

1) file a single application under the Patent Cooperation Treaty (PCT) for protection in more than 140 countries worldwide,

2) file a single application with the European Patent Office (EPO) for protection in more than 30 countries, or

3) simply apply to each patent office in the countries where you want to patent an invention.