FAQs: patents

Whether you’re a seasoned investor, tech startup or wondering whether patent protection could work for you, our team of IP solicitors and patent specialists can help throughout your entire journey. Here we’ve compiled common questions introducing the basics of patent application and management: patents FAQs for our clients who are getting to grips with patents, or those who need a refresh on patent law.

General Patents FAQs

What is the definition of a patent?

A patent is an exclusive legal right for an invention which is granted to an inventor (or someone they’ve assigned the patent to). In the UK this right is granted by the Intellectual Property Office (IPO). The invention may be a product or a process which involves a new way of doing something, or which offers a new technical solution to a problem. A patent provides protection for the owner of the patent, by enabling them to take legal action against other people using, making or selling the invention without the patent owner’s permission.

What can be protected by a patent?

Most physical creations you invent can be protected by a patent. Examples of existing patents include Samsung’s recent patent for technology which allows your phone to be rolled up, and Sony’s recent patent application for sensors which improve tracking for its virtual reality headset.

What is the criteria for an invention to be patentable?

For an invention to be patentable, it must meet the following criteria:

• It must be new – not published anywhere in the world
• It must involve an inventive step – meaning that it can’t be a simple obvious development of something that already exists
• It must be capable of being made or used in industry
• It must not fall into an excluded category

Are there exclusions to what can be patented?

In the UK there are some inventions which are excluded from being patented. These are inventions include:

• Inventions whose exploitation would be contrary to public policy
• Any plant, animal varieties, or other biological process invented for the production of plants or animals
• Any method of treatment practised on a human or animal body by way of surgery or therapy.

Because of these exclusions, a patent may have to be reworded so as to cover only aspects of the invention that fall outside these excluded areas.

The following creations are also excluded on the basis that they aren’t considered to be inventions:

• Works of art and aesthetic creations
• Discoveries
• Scientific theories
• Mathematical methods
• The presentation of information
• Schemes, rules, and methods for performing mental acts, playing games, or doing business
• Programs for computers

Because of these exclusions, it’s usually necessary for your patent to focus on ways of making a machine of some sort work better. There is a difficult balance to strike between protecting the heart of your invention and skirting around the excluded areas.

When should you patent?

It’s recommended that you apply to patent your invention as soon as possible. This reduces the chance of someone else creating a similar invention and patenting the creation before you.

If you want to apply to extend the scope of your UK patent application abroad, you must file a foreign or international application within 12 months of the date you filed your original UK application claiming priority from the UK filing. This will mean your foreign application will be assessed against existing technology and other patents as if it had been filed on the same day as your earlier UK application.

What should you do before applying for a patent?

As we’ve discussed, it’s important that you check that your invention is not already something that has been patented. You can do this by conducting a search online to check if the invention has already been patented, as well as a checking trade literature.

You should also make sure you’ve taken the measure to keep the invention becoming public knowledge. Ensuring relevant individuals enter confidentiality agreements will prevent information about the invention being disclosed to the public and competitors.

How long does it take for a patent application?

It can take anywhere from one to four years for a UK patent to be granted. Once you have filed your UK patent application, you must also file a search request. The results of this search result can take an average of six months. The IPO usually publishes your application no sooner than 18 months after you file the application. Within six months of publication, you must request an examination and pay a fee. The first examination report will typically be issued around 36 months from your filing date.

You can ask the IPO to ‘fast grant’ your application so that the process can be shortened to under a year. In other circumstances, the application can take up to four years.

How much does it cost to apply for a patent?

If you apply online, the IPO’s application fee is £20, and the search and substantive examinations are £130 and £80 respectively.

If you have your patent professionally drafted, the total cost will be much higher, perhaps £6,000 for a UK patent. Of course, you don’t have to seek legal advice and can do the application yourself, but it is a very complex process and DIY applications have a much smaller chance of success.

You should also be aware that you’ll need to pay a renewal fee for extended protection. Your patent will originally be granted for five years. However, to continue relying on the patent protection, you must pay a renewal fee of £70. This renewal fee increases by £20 each year so on your 20^th renewal, your renewal fee will be £600.

How long will patents last for? When do they expire?

Patent applications require renewal from the end of the fourth year from grant. The patent must then be renewed annually to keep it in force for up to 20 years. After 20 years the patent will expire, meaning anyone can use your creation to make a profit.

What is the Intellectual Property Office?

The Intellectual Property Office (IPO), also known as the patents office, is the official UK government body which has administrative responsibility for patent applications. The IPO examines applications for patents, and decides whether to grant or reject them.

Are there any patents acts? What laws and statutes govern patents in the UK?

Patents in the UK are governed by the Patents Act 1977 which has been supplemented and amended by various further legislation. If you search for the Patents Act on the IPO’s site, you will be guided to the “consolidation” which shows the Patents Act in its up to date form.

What is a statement of inventorship?

A statement of inventorship is also known as a Form 7. This is a document which needs to be filed with the IPO if you’re applying for the patent and you’re not the inventor of the creation.

To determine if you are the inventor, you’ll need to:

• Define the invention which is the basis of the patent application (the ‘heart of the invention’).
• Identify the actual inventors (the ‘devisers’) of the invention. This may be any person who:
  • Conceived the initial idea which defined the research that led to the invention.
  • Actually devised the experiments/products which form the basis of patent application.
  • Carried out any experiments or other processes described in the patent application which required that person to show initiative to conceive and/or complete; possibly because of an unexpected practical difficulty which needed resolving.
  • Interpreted the data disclosed in the patent application and recognised the significance of the result.

You cannot claim to be the inventor by virtue of:

• Having carried out work under instruction, regardless of skill and effort.
• Having funded the invention if you had no part in the research.
• Being associated by way of owning the premise used for research, by way of having published earlier work related to the invention, or by having contributed very generally.
• Having been a project manager or supervisor, but you didn’t contribute technically to the invention.

A failure to file such statement will lead to your application being refused.

What is prior art?

Prior art is any matter that is already available to the public anywhere in the world.  It can be a product, process, information about a product/process, or anything else which is made public.

In UK law, an invention is new if it doesn’t form part of the state of the art. This means that it does not fall within any prior art.

Sometimes granted patents are challenged as being anticipated and not new because of prior art. For such a challenge to be successful, two requirements must be met:

1. Requirement of disclosure – the prior art discloses the invention in the patent; and
2. Requirement of enablement – the prior art would have given the skilled person all the information s/he needed to perform the invention.

Other forms of intellectual property protection

How do you know if a patent is right for you? What other types of intellectual property might be suitable?

To know if a patent is right for you, you need to consider your invention and decide how you will use and exploit it.

If you can use your invention to make money without filing a patent, you should consider doing so because patents are very expensive to obtain and maintain.  If your invention is a secret process, or something made using that process, that cannot be reversed-engineered from looking at the product, then other people will not be able to copy the invention and so you can protect it as a trade secret whilst still making money from it.

Another consideration relevant to the question of whether a patent is right for you is whether the costs are proportionate to the profit you expect to make from the patented invention. Although the basic cost of applying for a patent is around £230-£280, the cost of legal fees, translation fees and renewal fees are far higher. It’s therefore important to make a realistic evaluation of how profitable the invention will be for you.

You’ll also need to be financially prepared to defend your patent if someone infringes the right. This is a costly process. However, a skilful patent solicitor can minimise costs, and having a patent can deter others from infringing your rights.

What if your invention’s appearance is important?

If your invention’s appearance is particularly important, you may decide to register the design with the IPO even if you can’t, or don’t want, to spend the money associated with getting a patent. This will give you exclusive rights to manufacture and use an item with that appearance. To register a design, you need to show the design has ‘individual character’ and is not already publicly available. The process usually takes around one month from filing the application. Registered Design protection is weaker than patent protection, but it costs a faction of the price of obtaining a patent.

What is the difference between patents and trade marks?

The key difference between a patent and a trade mark is that patents protect inventions which may be a product or process, whilst trade marks protect names.

A trade mark allows a trader to guarantee where the product came from. The trader may do this using words, slogans, designs, symbols, images, and sound.  However, a trade mark does not protect the function of the product.

Patent application process

Where can you check patents expiring today or in the near future?

The IPO has a service called Ipsum which allows you to check the status of all UK patent applications. The IPO has a separate list for published Green Channel patent applications, patents with a licence of right, and patents no longer in force.

You can also check for patents on Espacenet. This is the European Patent Register which gives you access to patent documents from a number of countries.

A third place you could check for patents expiring soon is Patentscope. This is a database held by the World Intellectual Property Organisation (WIPO), which holds international patent applications from a number of countries across the globe.

When will the IPO publish your patent application?

The IPO will publish your application no sooner than 18 months after your filing date or priority date. This will give people the opportunity to challenge the application if they think the invention infringes on their patent rights.

The final version of the application will be published once the examination has been completed and the patent is granted.

Where are patents registered?

In the UK, patents are registered with the IPO. As patent rights are territorial, you’ll only have exclusivity to the invention in the UK.

If you do wish to extend your protection in other countries, you should apply to register your patent in the desired foreign jurisdictions. To access the relevant authorities for different jurisdictions, you can use the WIPO’s Directory of Intellectual Property Offices.  As mentioned earlier, doing this within 12 months of your priority date is important if you wish to have your foreign priority date synchronised with your UK priority date.

An alternative to applying to foreign countries separately is to apply to register your patent with the European Patent Office (EPO), to protect your patent in multiple European Union jurisdictions. Once the patent is granted by the EPO, the patent must be validated in each designated state.

Another way to gain protection in foreign countries is to apply for a patent under the Patent Cooperation Treaty.  Under this system, you file a patent in the International section of the UKIPO which forwards the application on through an “International Phase”. You can ask for one international search and one international examination instead of having to search and examine in each individual country. However, there is still a final phase where you need to ask the patent offices in the countries where you seek protection to examine and grant your patent there. This final “national” phase is the most expensive.

How and where do you search for patents?

It is recommended that you search for patents online. It is possible to obtain assistance from a local Patent Library, as qualified staff can help you conduct your research. Alternatively, you may get assistance from a commercial search organisation.

If you do wish to search patents without assistance, there is helpful guidance on the Government website.

The best way to search for patents is by using online databases. For UK patents, Ipsum is the recommended place to search. To check a European database, Espacenet is a useful database to search. And if you wish to search internationally beyond Europe, you can use the comprehensive database held by WIPO, Patentscope, which allows you to conduct a flexible search.

With the Patentscope, you can use the simple search which requires you to input keywords in six different fields. The advanced search allows you to input an unlimited keyword combination in the fields. The field combination search allows you to conduct a targeted search using specific criteria in any field.

Google also maintains a database of patents which has an advanced search function.

What happens when a patent is granted?

If your patent is granted, your application will be published in its final form and you’ll be sent a certificate confirming the patent.

The patent means that you have exclusive rights to the invention. If anyone infringes your patent right, such as by manufacturing your patented product for sale without your consent, you can ask the courts to stop them and award you damages.

What happens if your invention has changed since you applied for a patent?

If you’ve applied for a patent but your invention changes because of an improvement for example, you will need advice on how to proceed. You may decide to withdraw your application before it is published and re-apply with a revised application. Alternatively you may be able to file new applications for the improvement and claim priority so that aspects of your protection are still backdated to the filing date of the first patent.

What is a patent ‘fast grant’?

A patent fast grant is a way for you to obtain your patent quicker. The IPO provides alternative ways of speeding up your application process. This includes:

• Combined search and examination (CSE)
• Accelerated search and/or examination
• Early publication

Any applicant can request a CSE and early publication, but an accelerated search and/or examination is only available in limited circumstances. You can request an accelerated search and/or examination if you can demonstrate that:

1. it is important for your application to be accelerated; or
2. if you can demonstrate that your invention relates to ‘green’ technology.

It may also be possible to have an accelerated examination if your application is an international application which you’re pursuing in the UK national phase.

To benefit from a fast grant, you should request the services when you file your application. You also need to ensure you reply promptly to all correspondence with the IPO.

Can you withdraw your patent application?

Yes, you can withdraw your patent application if you change your mind before the patent is granted.

There are two ways of withdrawing your application:

• Email
  You can email withdraw@ipo.gov.uk, stating you wish to withdraw your application. The email should also state your authority for withdrawing, for example: you’re the applicant or an agent of the applicant.
  Don’t forget to include the patent application number in the subject line of the email.
• Fax
  The second way of withdrawing is to send a request to the IPO stating you wish to withdraw your application by post or fax. Note that if there’s less than 3 weeks until your application is to be published, you need to mark the request as urgent. You can find the IPO’s contact details here.

Once you’ve withdrawn your application, you may still be able to re-apply and benefit from the priority date of the first application, if you make a new patent application within 12 months of the priority date.

Protecting your patent

How do you protect your patent after it is granted?

Once your patent is granted, you need to protect the patent by taking legal action against anyone who infringes your patent.

An infringement may involve any of the following if done without your permission:

• Manufacturing, selling, using, importing, or stocking your invention, or a product created by a patented process;
• Using your patented process; or
• Supplying an essential element of your patented invention with knowledge (or reasonable belief) that the supply will allow the receiver to create/reproduce your patented invention.

How do you enforce your patent and protect it?

To enforce your patent, you must take legal action against any person who infringes your patent. The legal action must be brought to either the Patents Court (a division of the High Court) if the case is complex and the value exceeds £500,000, or the IPEC if not complex and valued below £500,000.

The courts can grant you remedies ranging from a temporary or permanent injunction to stop the infringer from continuing the activity which infringes your patent, to ordering the infringer to deliver to you/destroy any product created which infringes your patent. The court can also award damages, or require the infringer to account for any profits made through their infringing activity.

Can patents be renewed or extended? How?

Yes – patents can be renewed for up to 20 years. You must renew each year starting on the fourth anniversary of your priority date (i.e. a year in advance of the expiry of the patent).

To renew your patent, you can use the online Government service for renewal.

After your first renewal, you must renew every year near the due date; the last day of the month in which you first filed your application. It is advised that you renew up to three months before, or within a month after, the due date. Whilst you can still renew up to six months after the due date, you will be charged £24 extra for each month you delay the renewal.

If you don’t review your patent on time, the IPO sends reminders by post. This means if you haven’t requested an email reminder a month before the due date when you first renew, you should ensure the IPO has your correct address to send the postal reminder.

What happens if you don’t pay your patents renewal fees?

If you don’t pay your renewal fee, your patent will lapse. This means that any patent protection against infringers won’t be legally enforceable. You will therefore have no protection for your invention, and no avenue for remedies if someone uses, copies, or manufactures your invention. This is because you will lose exclusive rights to the invention.

Patents as property

Can patents be sold, purchased or licensed? How is a patent assigned during a sale?

Yes, patents can be sold and purchased like any other asset. Just as with buying and selling houses though, there are some formalities and technicalities involved. You sell a patent by assigning all the rights, interest, and title in the patent to an assignee/buyer in return for your agreed price.

When you sell a patent and enter into a patent assignment, you may be asked to give warranties and representations which confirm that you have the right to sell or transfer the patent, that the patent is properly registered, the patent is not being infringed by another party, and the renewal fees have been paid (where appropriate). We can advise you on preparing these warranties and representations.

Once you’ve bought a patent you should notify the IPO about the change in ownership. You can do this by filing a Form 21.

An alternative to selling your patent is to license it. Under a licence, you allow a licensee the right to use or manufacture your patented invention, for a periodic payment. For more information on buying, selling, or licensing a patent, you can contact our specialist team for advice.

Where can you find patents for sale?

You may be able to find patents for sale online. It’s important that you take care when buying online, as some sellers online can be scammers. The IPO holds a database of patents for sale which you can access for a fee. You can ask for paid access by emailing sales@ipo.gov.uk.

If someone has a patented invention which they wish to sell, it’s more common for that person to approach businesses and individuals to market and offer the patent for sale. When considering whether to buy a patent, you should seek professional advice to ensure the patent is a valuable purchase.

Can patents be revoked?

Yes, patents can be revoked. There are five grounds on which your patent may be revoked:

1. Non-patentability – the inventions isn’t patentable: for example, it isn’t new or inventive.
2. Insufficiency – the patent specification doesn’t disclose the invention clearly and completely enough for it to be performed.
3. Added matter – the subject-matter of the patent extends beyond the content of the originally filed application.
4. Incorrect extension – the protection conferred by the patent has been extended by an amendment which shouldn’t have been allowed.
5. Non-entitlement – you weren’t entitled to the patent: for example, you had no authority to apply as you may not have been the inventor.

Revocation will only happen if someone challenges your patent in court, or through the IPO. Any individual can challenge a patent for the reasons above, except for the ground of ‘non-entitlement’. This ground of challenge can only be brought by the actual person entitled to apply for the patent.

Another point to note is that whilst grounds 1-4 can be relied on for revocation at any time, a non-entitlement claim must be brought within 2 years of the grant of the patent.

Can patents be amended or adjusted?

Yes – you can amend your patent at various points in the application process. Once the patent has been granted, you will need permission to amend it.

The golden rule of patent amendment is that you can make a patent narrower but not wider.

It’s very common to amend your patent (or patent application) in response to examination or because a third party objects to it or wants to revoke it.

Can patents be inherited?

Yes – patents can be inherited. A person who owns a patent can leave the patent as an asset for another organisation or person in their will.

If you do wish to leave your patent to beneficiaries through your will, you need to detail your instructions for each patent you bequeath. This is because the patent registrar will need a certified copy of the ‘letters of administration’ or ‘probate’ to update the register with the new owner.

International patents

Can patents be granted worldwide?

It’s possible to make a single patent application covering numerous countries and to have just one application, search and examination. To do this, you must make your patent application under the Patent Cooperation Treaty. But once the international search and examination is complete, you will still need to ask for the patent to be protected in each region or country. See more information about this in our previous FAQ, Where are patents registered?

International patent protection will nearly always require detailed legal advice. For more information on how to obtain patents in other countries, contact our experienced patent protection lawyers.

Patent infringement

What happens if someone accuses you of patent infringement?

If you’re accused of patent infringement, it’s important that you get help from a solicitor who can guide you through the process.

You will need to consider the claim made by the person and consider whether it has any merit. It may be that you’ve unknowingly infringed another person’s patent, in which case, you’ll need legal advice on how to proceed.

One option may be to challenge the validity of the patent as well as, or instead of, saying that you don’t infringe it.

Defending a patent can be costly, as you will likely have to litigate in court and pay legal fees. However, if your defence is successful, the court may order the other party to pay a significant portion of your legal fees.

What can you do about other people or companies infringing your patent?

If another person or company infringes your patent, you will need to contact them about your rights. It is important to get legal advice from a qualified patent solicitor with expertise not just on patent law but on the procedures of the civil courts. Our IP disputes solicitors can help you with this.

Patent disputes are usually heard in the Patents Court or the Intellectual Property Enterprise Court (depending on the value of the case and its complexity). In your claim, you must outline how your patent is being infringed. As we’ve mentioned above, there is a range of remedies available for a patent infringement.

Protecting patents by taking legal action against infringers is a costly process. However, if your claim is successful, the court may order the infringer to pay your legal costs.