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Patent applications

Contents

UK application procedure

Step 1

Prepare a 'patent specification' which includes:

  • A written description of the invention (allowing others to see how it works and how it could be made)
  • Drawings (to illustrate the description)
  • Claims (precise legal statements in the form of single sentences that define the invention by setting out its distinctive technical features)
  • An abstract (a summary that includes all the important technical aspects of the invention)

Clear and complete disclosure

Specification must meet an adequate disclosure requirement. In essence, the specification must disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art.

The claims of the specification must:

(1) define the subject matter;

(2) be clear and concise;

(3) be supported by the description; and

(4) be related to one invention.

The crucial issue is what constitutes a sufficient description that justifies a given claim. The key element is that the disclosure has to enable the invention to be performed to the full extent of the protection claimed.

The EPO and the UK courts have arrived at the following propositions:

  • If there is a single invention in a straightforward sense, then a description of how to perform one instance of it will suffice to support a claim to other instances in which predictably it will work
  • In such a case, it will not be enough to attack such a claim just because a few marginal instances cannot be made to work
  • The contrary will be so if a substantial proportion of the claimed embodiments do not work or cannot be made to work merely by reliance on common general knowledge and routine trial
  • In consequence, if a claim covers a number of discrete methods or products, it may be necessary to provide the skilled addressee with sufficient instructions in respect of each of them
  • Equally, if a general claim is made to a product (irrespective of how it is made), the specification reveals only one way of making it and there is evidence that there are other ways, then the description will not be regarded as adequate to support the general claim

Step 2

Fill in and file form 1 'Request for grant of a patent' with the UK Intellectual Property Office (IPO), together with one copy of the patent specification. Also, if the person applying is not the inventor, form 7 'Statement of inventorship and of right to grant of a patent' will need to be completed explaining why the person applying has the right to be granted a patent. This form can be filed up to 16 months after the filing date (or priority date, if there is one).

Filing a fresh application

There are various reasons why the decision may be made to file a fresh application:

  • The invention may have been developed in the meantime, with the result that the initial specification does not protect the new development
  • It may be thought that the specification drafted without professional assistance is not good enough and that it would be desirable to invest in a professionally drafted one
  • A search report may have been received which shows that the invention is not new

In these circumstances, it will not always be necessary to withdraw the application and start again. If it is less than 12 months since form 1 was filed, a new application may be made with a declaration of priority from the original one by filling in section 5 of form 1. Declaring priority from an earlier application means any information in the later application that is also in the earlier one is treated as if it has the same filing date as the earlier application. This earlier filing date is then known as the 'priority date'. However, it is important to realise that this priority date only applies to the information that is common to both applications. Any new information will be given the filing date of the later application.

The advantage of claiming priority is that the information repeated in the later application takes the date of the earlier application, which may be important if someone else has filed a similar application after the first but before the second application.

The disadvantage of claiming priority is that some important processing dates for the later application will arrive more quickly. For example, a new UK application which includes a declaration of priority from an application filed exactly 12 months earlier will result in form 9A and the associated fees having to be filed within 2 months of the new filing date. If the new application had not included a declaration of priority, there would have been a 12-month period from the filing date of the new application for payment to be made.

Step 3

IPO responds by issuing a filing receipt which includes an application number and confirms the filing date of the application.

Step 4

File form 9A with the IPO, together with the appropriate fees, asking for a search. This must be done by a given date – usually within 12 months of the filing date – to avoid the application being terminated. However, if the application includes a declaration of priority, the deadline for filing form 9A is 2 months from the filing date or 12 months from the priority date, whichever is later.

Step 5

The IPO carries out a preliminary examination to make sure the application meets certain formal requirements and searches through published patents and other documents for material against which it can assess whether or not the invention claimed is new and inventive. The IPO aims to issue its search report within 4 months of receiving form 9A.

Step 6

The IPO publishes the patent application shortly after 18 months from the filing date (or priority date if there is one), as long as the formal requirements have been met, form 9A has been filed together with the appropriate fees and no request has been made to withdraw the application.

Step 7

Fill in and file form 10 , together with the appropriate fee, asking for 'a substantive examination' no later than 6 months after publication to avoid your application being terminated.

Step 8

The IPO examines the application and advises what, if anything, needs to be amended and the period of time the applicant has in which to respond.

If the application meets all the requirements of the Patents Act 1977, the IPO will grant the patent, publish the application in its final form and send a certificate to the applicant.

Applying for an overseas patent

The general principles of patent protection are recognised almost everywhere in the world.

At present, there is no such thing as a 'world patent'. To get patent rights in other countries, you have to apply under the national patent laws of each country or take one of the following two routes for getting patents in a number of countries by filing a single application.

International applications under the Patent Co-operation Treaty (PCT)

The PCT, which the UK has signed up to, aims to simplify filing on an international scale. By filing a single application under the PCT, you can get protection in a number of the member countries of the treaty. An up-to-date list of member countries can be found on the World Intellectual Property Organization (WIPO) website.

A PCT application can be sent to the IPO. The IPO will then send it to the WIPO and forward a copy to an international search authority (the branch of the European Patent Office (EPO) at The Hague), where a search is carried out to see if the invention has been described by others before.

The WIPO publishes the international application, together with the search report, as soon as possible after 18 months from the priority date.

After publication, a request can be filed for an international preliminary examination, which is carried out by the EPO. This examination is optional and a fee is payable. However, it will give an initial, non-binding opinion as to whether the invention is new and inventive (not obvious) and capable of being used in any kind of industry.

At least 30 months after the priority date, the application enters what is known as the 'national phase'. Each country processes the application as a national one, as long as their fees have been paid and a translation of the application (if needed) has been provided within the set time limit.

European applications

Most western European countries, including the UK, have signed up to the European Patent Convention (EPC). A single application filed under the EPC will enable protection to be obtained in the member countries. For an up-to-date list of member countries, visit the EPO website.

An EPC application can be sent to the IPO. The IPO will then send it to the EPO, which is responsible for processing the applications and granting European patents.

The EPO publishes the application, together with the search report, as soon as possible after 18 months from the priority date.

As long as the requirements in the EPC are met, the EPO will grant the EPC patent application, which will then become valid in the UK and any other specified member countries.

Individual national applications

Separate national applications may still be needed if protection for the invention is required in countries which are not members of the EPC or PCT.

The advantages of applying for a UK patent first

As long as you file any foreign applications within 12 months of the filing date of your original UK application for the same invention, you can ask for each foreign application to be given the same priority date.

A priority date is vital when considering whether the invention claimed in a patent application is new. If two patent applications claiming the same invention are filed on different dates, the patent will be awarded to the one with the earlier priority date. As long as further applications for the same invention are made in the other countries within 12 months of a UK priority date, each foreign application can be given the UK priority date. So, the applicant ends up with a group of patents for the same invention in different countries, all with the same priority date.

If priority is not claimed in this way, the foreign applications should be filed before the UK application is first published (about 18 months after the original UK filing date). If this deadline is missed, the invention will be in the public domain and any foreign applications made later could be invalidated.

Another benefit of filing a UK application first is that the search report can be used to make an initial assessment of the likely success of the application before beginning the costly process of getting protection abroad.