United Kingdom Patent

Patentability search

When an invention is submitted to us, we first start by checking the novelty criterion by means of a patentability search. The aim of this search is to determine precisely the prior art that is closest to the invention. To complete the search, a report is established that contains a list of patents and possible articles published by third parties that raise concerns as to the patentability of the invention, as well as our advice for protection.

The costs of the patentability search are invoiced according to a flat fee agreed in advance, often around CHF 3’000 + VAT for an invention of average complexity.

Nearly half of the inventions that are submitted to us are abandoned in the light of the patentability search report, when the inventors become aware that the prospects of obtaining protection do not justify the costs or efforts. In this case, the patentability search that was carried out enables the applicant to achieve considerable cost savings by avoiding the filing of a useless application.

Should the procedure on the other hand continue with the drafting of a patent application, the patentability search makes it possible to ascertain which characteristics – in a project that contains several innovations – can be effectively protected and to optimize the drafting of an application to highlight clearly the differences between the new invention and the documents uncovered by the search.

The patentability search report is also accompanied by one or several suggestions as to the strategy for protecting the invention, taking into account the commercial prospects of the invention, the uncovered prior art and the applicant’s budget.

Filing

An application for a UK patent must be made at the UK Intellectual Property Office. Your application must contain:

• your name and address;
• a request for a patent;
• a description of the invention – preferably with drawings to illustrate your description.

Typically the application will be filed with Form 1 ‘Request for grant of a patent’ at the UK Intellectual Property Office, together with one copy of your patent application.

Upon receipt of your application, the UK IP Office will give it an application number and a filing date and sends a filing confirmation. From this date onwards, the invention described in the application may be disclosed publicly or commercialised without jeopardising your chances of achieving a granted patent, notwithstanding prior rights.

Preliminary Examination

Within 12 months of filing the application you must pay the application fee. Once your application fee has been paid the UK Intellectual Property Office will carry out a preliminary examination to make sure your application meets certain formal requirements.

Search Report

Within 12 months of filing the application you must file:

• “claims” which are precise legal statements in the form of single sentences that define your invention by setting out its distinctive technical features;
• an “abstract” providing a summary that includes all the important technical aspects of your invention; and
• A ‘Request for a search’ (Form 9A) along with the search fee.

After a Request for a search (Form 9A) has been filed and the search fee is paid, an Examiner at the UK Intellectual Property Office will search through published patents and other documents for material against which they can assess whether or not your invention is new and inventive. The Examiner will search for documents showing inventions similar to yours and then issue a search report which lists any relevant documents from around the world that were found in reference books, scientific journals or other patents. This search gives you an early indication of how likely you are to obtain a patent. The UK Intellectual Property Office aim to issue a search report within six months of receiving the ‘Request for a search’ (Form 9A) and search fee.

Within 16 months of filing the application you must file:

Form 7 ‘Statement of inventorship and of right to grant of a patent’ in which you tell the UK Intellectual Property Office why you have the right to be granted a patent (e.g. because you are the inventor of the invention; or because you are the employer of the inventor of the invention,etc.)

Publication

Shortly after 18 months from the filing date of your application the UK Intellectual Property Office will publish your patent application, provided that your application has met the formal requirements, and provided a ‘Request for a search’ (Form 9A) has been filed together with the search fee (and provided your application has not been withdraw). After publication your application will be available for anyone to read.

Examination Request

Within 6 months after the publication of the application Form 10 ‘Request for substantive examination’ along with an examination fee, must be filed at the UK Intellectual Property Office, to avoid your application being terminated.

After the Form 10 ‘Request for substantive examination’ has been filed and the examination fee paid, the UK Intellectual Property Office will then examine your application to determine if your invention meets the requirements for patentability; in particular the UK Intellectual Property Office will determine if your invention is ‘novel’ and ‘inventive’ over the relevant documents which were found during the search.

Office Actions

During the examination the UK Intellectual Property Office may raise objections to your application; in particular the UK Intellectual Property Office may allege that your invention is not ‘novel’ or is ‘obvious’ in light of the relevant documents which were found during the search. However your representative patent attorney will have the opportunity to respond to any objections that the patents office raise against your application, within a prescribed time period.

Grant

If your application meets all the requirements for patentability, as set out in the UK Patents Act, the UK Intellectual Property Office will grant your patent. The patent will be published in its final form and you will be sent a certificate of grant.

After your patent is granted only then can you enforce your rights against any suspected infringer. Your patent will remain in force for 20 years from its filing date; however you will need to pay renewal fees every year to the UK Intellectual Property Office to keep the patent in force. The amount of the renewal fees increases every year your patent is ‘live’. The first renewal fee is due 4 years from the filing date of your application.

The process for obtaining a UK granted patent usually takes about four years from the date of filing the application. However, if you pay some fees early and reply promptly to letters from the UK Intellectual Property Office, it may be possible to reduce this time to as little as 18 months, if your invention is not a complex one.

It is possible to apply for a patent without using a professional representative, but it is not recommended. A patent specification is a legal document and requires specialist skills to draft properly. Your chances of obtaining a useful patent are significantly greater if you use a qualified UK patent attorney.

Renewal Fees

The validity of a UK patent is 20 years maximum from the filing date, provided however that annual maintenance fees are paid to the UK Intellectual Property Office each year.

Lapse

The UK patent or patent application may cease to produce its effect in one of the following cases:

• in any case, 20 years after the filing date
• if the applicant or owner stops paying the renewal fees or any other required fee
• if the applicant fails to answer an office action from the UK Intellectual Property Office
• in case the application is rejected on the grounds that it does not comply with the requirements of the UK Patents Act
• in case of revocation by a court