How to file a patent application in the UK

In this article, we will guide you through the patent filing process, sharing tips on how your application should be prepared as well as providing information on expected costs and timelines. It’s a complicated area of law, and you only have one chance to get it all right. Working with a qualified patent attorney can help speed up the patent filing process and will help maximise your protection. 

Can I patent my invention? 

Before you file for a patent, you need to make sure your application meets the clearly defined eligibility requirements set in the legislation. To qualify for a patent your invention must be:  

• Novel and not previously available, anywhere 
• Either a product or a process 
• Capable of being used in or made by industry 

Take care – keep it secret! 

Because your invention has to be new to be patentable – it must not have been disclosed to anyone, anywhere in the world, at any time before an application is filed – you must ensure that you keep it secret. Like all secrets, you can tell others provided they are prevented from telling anyone else, or using the information themselves. Talking to your lawyer or patent attorney does not amount to disclosure to the public, because they have a duty of confidentiality to their clients. Talking to your friend in the pub about it is a definite no-no, and if you’re trying to raise finance to help exploit the invention ensure that you have a non-disclosure agreement in place with the person you are talking to. It doesn’t have to be in writing, but a written NDA is much more watertight than an oral one – especially if the recipient of the information has signed it. 

Why would someone apply for a patent? 

A patent gives you the exclusive legal right to an invention, preventing competitors from using your process, or manufacturing or selling a product that uses your invention.  If someone does use your invention you will be able to take legal action against them. If you are successful with your claim, you may be awarded damages from the business that has infringed. 

Other key benefits include: 

Licensing - Once you have been granted a patent you will be able to license it to third parties. This can be a very lucrative source of revenue and much cheaper and easier than building a factory. Many inventors prefer to spend their time inventing and leave the manufacturing to people who know how to do it. 

Increase business value – A patent is an asset in its own right, often a very valuable one, and in some circumstances can increase the value of your business. Whether you are looking to sell your business outright or are considering a fund raise, patent rights can make your business more attractive. You don’t have to watch Dragons’ Den for long to see how this works! 

How to prepare your patent application 

The first step is to file an application form, accompanied by the specification – a document that includes a description of your invention, supported in most cases by drawings, and one or more claims. The description is a technical document (and sometimes just a laboratory notebook or similar informal document can do the job), but there are definitely advantages to having an experienced patent practitioner on board to guide you through this stage. Knowing when you have reached the right point to put in the application relies on experience. A patent attorney, skilled in science or technology as well as patent law, can help you ensure that you tell the world enough, but not too much, about your invention. 

Unlike the technical specification, the claims are a tricky legal production. Like the description of a plot of land, they stake out the boundaries of your invention, and therefore set how far your legal monopoly will extend. 

Fortunately, you don’t have to file the claims at the outset: you can do this, usually, during the 12 months after you file. This means that if you have a valuable invention, you can get your application in quickly, and secure what is known as the priority date, without having to spend time on the claims. If there are other inventors working in the same field, this can be very important because the first person to file will be the one to whom the patent is granted. Also, what you want to claim as your invention might well change when you see what the examiner’s patent search reveals. 

You should consult an experienced solicitor or patent attorney to get the claims right. They can be crucial to the success of your invention – in one leading case, the use of the word “vertically” almost deprived the patent of any value when the relevant part of another producer’s lookalike deviated by just a few degrees from the vertical! 

Also, within that 12-month time period, you must file an abstract – a maximum of 150 words identifying your invention for the benefit of people who might be searching for the latest developments. 

What are the steps in the patent application process? 

Once you have filed your application, the next step is for an examiner at the IPO to check that it is in order. They will also carry out a search to check that the invention you are claiming is in fact new and inventive and meets the other requirements for patentability, and send you (or your agent, if you are using one) the report. At this stage, it is nothing more than a list of existing patents, articles from technical and scientific journals, material from the Internet – in fact, anything that has been published that the examiner can find, although in our experience sources like textbooks can sometimes be overlooked. Later, the search report will be used by the examiner as the basis for the substantive examination. 

You may be able to glance through the search report and, just by looking at the titles of the patents cited in it, discount much of what the examiner has found. However, knowing what is already in what patent lawyers call the state of the art is going to be useful when it comes to formulating your claims. Or you might decide in light of what the report reveals that there’s no point in carrying on with the application and incurring steadily increasing fees. 

The next step is for your application to be published. Details will be included in the online Patents Journal, where competitors will read about it for the first time and obtain copies if they are interested. (Published patent applications are studied carefully by companies who want to keep abreast of the latest technical developments in their field.) 

Following publication, you can request that the examiner carry out the substantive examination. You’ll have to pay a fee, too – naturally. The examiner will look at what they found in the search they already carried out, but this time will study it in detail to work out whether your application can proceed to grant. Usually there is some reason why it can’t, and you or your agent will correspond with the examiner making changes to the claims (the description is set in stone) so that you are not asking for exclusive rights over something that is already in the state of the art, or is obvious (lacks an inventive step, in patent-speak) or is not patentable for some other reason. 

At this stage, third parties who have read your application may make representations to the examiner. The examiner is not obliged to act on representations. Because making representations tends to lead to a better patent when it is finally granted, interested parties are often reluctant to use this route – they (or perhaps just their lawyers) prefer to allow the patent to be granted and then challenge its validity. 

Eventually, you or your agents and the examiner will agree on a claim or claims that can be granted, and you will receive a certificate showing that you are the owner of a UK patent. 

How much does a UK patent cost? 

Filing a patent will cost at least £310 to complete the process. This fee however does not include any legal costs you will incur if you decide to instruct a patent attorney. From our experience you should expect to spend between £3,000 to £9,000 on legal fees, but exactly how much depends very much on the complexity of the invention and how much prior art there is in the field. 

How do I protect my invention outside the UK? 

Patents are national rights, and in fact a UK patent does not even give protection in the Isle of Man, Jersey or Guernsey (though getting protection in those territories is a simple matter). There is no such thing as an international patent, though there are arrangements that make it easier and cheaper to file applications for overseas patents. These arrangements only help if you use them in the 12 months following your initial UK application – you can claim priority from your UK application, but after the 12 months expires the opportunity is lost for good. 

One important possibility is to file for a European Patent – a bit of a misnomer, because at the moment all that is available is a bundle of national rights: a European Patent France, a European Patent Germany, and so on. A European Union patent using the same mechanism is on the way, but not here yet. The European Patent system can save you a lot on fees, and – very importantly – translation costs. 

You don’t have to pay for patents in all the countries in the European Patent system. Depending on your needs, you might consider that protection in the UK, France, Germany, the Netherlands, perhaps Italy and Spain, and possibly Poland, will do the trick: no-one is going to tool up to make something that they can only sell in the smaller European countries. 

The Patent Co-operation Treaty enables you to file a single application which will be examined centrally then passed on to any countries you have specified and paid the requisite fees for. This is most of the countries in the world, even North Korea (but not Taiwan). So if you want patent protection right across the world, there are ways to do it quite easily – but it is not cheap, and the bill will soon run into tens of thousands of pounds. 

How long does the patent application process take? 

Based on our experience, you can typically expect it to take between 2 to 4 years to obtain a UK patent for your invention. During this period, no other company will be able to obtain a patent for the same invention. Instructing a specialist patent attorney is the best way of ensuring your patent is processed quickly. A patent lawyer will have a clear understanding the patent filing process and will be able to draft and liaise with the IPO on your behalf: should any problems arise, they will have the necessary experience to deal quickly with issues that arise during the patent filing process.  

An experienced patent lawyer will also be able to advise you about accelerated procedures available if you fit the following criteria: 

• Will have a genuine environmental benefit 
• There is a genuine reason for obtaining patent rights more quickly 

If you would like to know if you meet the accelerated process criteria you can arrange an initial no-obligation consultation with one of our patent lawyers.

How long does patent protection last? 

If your patent application is successful, you are granted protection from the date you file the patent application. You can renew the patent every year, for up to 20 years. You are not allowed to renew your patent rights beyond this timeframe, after 20 years your patent rights will lapse and will enter the public domain. 

Summary 

A patent is the strongest type of intellectual property in many ways, though of course it’s of no help if you don’t have an invention to protect. There is a rigorous formal process to go through to get a patent, which costs money and is best undertaken with specialist legal advice. There are numerous pitfalls for the unwary, and mistakes can be very expensive. 

Remember, too, that just having a patent is not the end of your intellectual property journey. Your invention might involve software, which cannot be protected directly by a patent but is protected by copyright. When you make articles that embody the invention, their designs might be another important aspect that requires protection. And when you start selling things, you’ll be using trade marks to identify yourself and your products to customers. A patent might turn out to be just one item in a large portfolio of intellectual property rights. 

For more information on patents, read our patent FAQ guide.