Patents are generally used to protect inventions against anyone who might copy, use, sell or import it without the owner’s permission. Such an infringement gives the owner the right to take legal actions against the infringer.
To obtain a patent for your invention, this must be something new and inventive, and different from a simple modification made to an object, a process or something else that already exists and it also needs to be something that can be used and made.
Because the process of obtaining a patent is expensive and complex, it is important to make sure that your company actually needs the patent, will actually benefit from it and that your invention is eligible for such a patent.
What you can’t patent
Among the types of creations that you can’t obtain a patent for are included creations as:
- Artistic creations such as books, dramatic pieces, songs etc.
- A specific way of thinking, or a way of doing business
- A method of diagnosis or of treatment
- Mathematical methods, scientific discovery or theory
- A way of presenting information
- Some computer software
- Processes considered as “essentially biological” such as obtaining new animal varieties, crossing-breeding plants, etc.
Because obtaining a patent is a complex, long and expensive process and probably the most difficult form of protection to obtain, before applying it is important to make sure that:
- Your invention is eligible – it is something new and it does not resemble anything that is already out here. You can find out this by searching already published patents on the Internet and by consulting trade publications and publications specific to your field of invention.
- You have the financial resources and the time to take the application process all the way.
What you need to know about the process of obtaining a patent is that:
- Only 5% of the applicants succeed in getting a patent without any professional help
- The investment in obtaining a patent is around £4,000 with professional help
- It can take up to 5 years to obtain a patent
Once you have obtained the patent, you also need to renew it each year, which also includes costs. Another cost you need to take into consideration is the cost of the legal actions you might have to take to defend it. Invention patents are complicated, difficult to obtain, expensive to obtain and maintain so make sure you really need one before starting the application process.
Besides the invention patent, there are other ways you can use to protect your intellectual property
Depending on what you need to protect and how much money and time you want to invest in this, you can choose another type of protection that might be more appropriate for your business, such as trademarks, design rights or non-disclosure agreements.
- Trademarks– are useful to protect a brand you want to use and develop on the market against your competition or anyone who might try to benefit from copying it
- Design rights– help you protect how your product looks, if that is distinctive, innovative and important for your company
- Non-disclosure agreements– are meant to keep secret an information for a predetermined period of time and it can offer you protection for products that you will have on the market for a short time.
If you want to make sure that your application for a patent will go as smoothly as possible, after you have made the decision to apply for one, you need to find a good patent attorney or a patent advisor.
He or she will increase your chances of obtaining the patent by helping your prepare your application. Since there is no possibility of adding information to your application later in the process, it is very important to include from the start every information that can help you receive the patent. Also, a good patent attorney or advisory will help you in long term by making your patent as commercially valuable as they can. And you will also need a professional advice when you will be approached by various companies offering to promote your invention.
Applying for a patent – the steps you need to follow
Whether you are working with a patent attorney or you are filing the application yourself, there are 8 steps you need to follow as a patent applicant in the UK:
- Search for similar patents – The application is filed to the Intellectual Property Office (IPO) and it is always preceded by a comprehensive search you need to make or hire someone to make, to check if your invention is indeed new.
- Preparing your application – If you choose to use the help of a professional, the patent attorney or advisor will help you a lot at this step.
- Filing the application – After preparing the application, it needs to be filed at the IPO and you also need to request a search from the IPO.
- IPO search report – It generally takes up to 6 months to receive the IPO report. At this moment you will need to decide if you wish to continue with the application or not, based on the results.
- Application publishing – By filing the application you are also agreeing to making it public, since your application will be published 18 months after filing it.
- Requesting an examination – You need to ask for what is known as a “substantive examination” within 6 months of publication.
- Responding to comments – You need to understand that the examination of your application might take place a few years after you have filed your application. You still need to be able to respond to any IPO comment sent to you in this regard.
- Final response – You will finally find out if you request has been granted or denied.
It is very important to understand that you can’t make your invention public in any way before applying for patent, because you might not be able to obtain a patent for it. Once you have been granted the patent, you can benefit from it by licensing, selling or mortgaging it.
Other ways to get a UK patent
If you want to try other ways of obtaining a UK patent you can also file your application through the European Patent Office (EPO) or World Intellectual Property Organization (WIPO).
A patent application needs to include certain elements in order to be valid and actually taken into consideration for granting a patent. If you have a patent attorney or advisor to help you with this, things should be easier for you.
Such an application needs to include:
- A description of the invention – A clear and easy to understand description of your invention allowing other people to understand how your invention works, how it can be made and how it can be used.
- Legal statements (Claims) – This is the section where you need to set out all the technical features you want to protect on your invention.
- Summary (Abstract) – This includes a short presentation of all the technical aspects of your invention. This part can also be submitted once your patent is pending, but it is better if you submit the complete application at once.
Other elements you need to include are technical drawings illustrating your invention and sustaining your description. All these need to be submitted with the completed application.
The documents you file with your application can also include academic papers if they help your in describing your invention, but you will also need to add a description of your invention, drawing and claims.
‘Statement of inventorship’
This is a statement that you need to complete if you are not the inventor, the only inventor (there are more inventors and you are the only one listed as applicant) or you are not filing in your name, but on behalf of a company for example.
The purpose of this statement is to provide the IPO more information about your rights to apply for a patent for that invention. You can submit it with the application or later, case in which you will need to file it as document for a pending UK patent.
This is a step for which you can also receive help from your attorney or advisory. You can file a UK patent application with IPO either on-line or by post. For the search and examination services, you can choose to pay when you file your application or later in the process.
Get your patent granted more quickly
Obtaining a patent takes a long time, but there are ways to make it faster. One of them is to request search and examination at the same time with filing your application for patents. There is no difference in costs and it will be processed more quickly.
There is a possibility to obtain the patent faster by receiving a ‘fast grant’ search, examination and publication if your invention is considered to have environmental benefits, case in which is will be processed via the “green channel” or if you have a patent application submitted at another patent office (Patent Prosecution Highway).
An important step in obtaining a patent for your invention is the search and examination stage in which you can also benefit from the help of a patent attorney or advisor who knows all the details. There are two things you need to know about this step:
- You need to request and pay the search and ‘substantive examination’ associated with your application.
- The search and ‘substantive examination’ can be requested when you file your application or later but within 12 months or filing the application (priority date) and within 6 months after publication.
The search is carried out by the Intellectual Property Office (IPO) and it has the objective of determining if your invention is indeed new and inventive. As previously mentioned, you need to request the search and pay for it within 12 months from the date you have filed the application. Generally you will receive a search report after 6 months with the results of the search and details about what part of the application is not right, if it is the case.
The purpose of the substantive examination is to show if your patent application complies with the legal requirements, meaning that your invention can be considered new and inventive and the description and claims included with the application accurately present your invention and are good enough to patent.
How to apply
You can file your application to patent your invention by fax, by post or on-line. The request for search and examination can be filed the same way, either along with your initial application or later, as long as it is within 12 months from filing the application.
- While it is strongly recommended not to make public any details about your invention before applying for your patent, you need to know that in 18 months after you have filed your application, your invention will be published in online patents journalon the IPO website and in IPO records
The next step after applying includes receiving a receipt containing the date of filing the application and the application number. You will also receive indications regarding the next steps to follow. If a patent attorney or advisory is working with you in applying for the patent, he or she can help you in this stage also.
In this stage, your invention is considered as ‘patent pending’ or ‘patent applied for’ and you can mark it as such on your website, if you have one, or in other documents associated with your invention.
When and if you obtain the patent, you will receive a certificate acknowledging that your invention is patented and you are the inventor and owner of patent and the application will be published in its final form. From that date you are responsible of owner of the patent to renew and defend it if there is the case.
File more documents once your patent is pending
Depending on whether or not you chose to file all the documents at once, you might need to file more forms and documents after you have filed your patent application and your invention is considered “patent pending”. While there are documents that you can file later in the application process, such as claims, search request and fee, application fee or abstract, they need to be filed within 12 months of the date of filing the application.
If your application includes a ‘priority date’ from an earlier application
Documents such as claims, search fee, abstract, and application fee must be filed either in 12 months of filing your previous application or in 2 months of filing the current one, whichever is later.
Withdraw your application
You might decide to withdraw your patent application if, for example you want to stop it from becoming public. If this is the case, you can request the withdrawal of your application until the date before the deadline you have received or will eventually receive in your search report.
Withdraw by email
You can request the withdrawal of your application by email, fax or post. If you are choosing email, you need to send an email to the address email@example.com including the patent application number in the subject line.
In the body of the email you need to specify the reason of withdrawing your application and who you are in report with the application (the applicant or its agent).
Withdraw by post or by fax
If you choose to send your withdrawal request by post or fax, it is important to mark it “Urgent” if when you are sending it there is less than 3 weeks until publication, to make sure it will get to the IPO on time.
Make a new application with a priority date
Why make a new application? While your application is being examined, you might have developed your invention and you want to patent the new, enhanced one or maybe you have new information that you think it might increase your chance to obtain the patent. Either way, you can withdraw your application and reapply. If you file the new application within 12 months from the first one, you can keep the priority date of your first application.
If you fail to submit all the necessary documents or to complete correctly the application form, your application will be terminated. Your application can also be terminated if you fail in paying the application fee which is £150, and it is not refundable if your application is terminated from another reason than paying the fee.
If you wish to reinstate your application, you can do that by applying within 12 months of termination and you will have to be able to show that your failure to meet the patent application requirements was not intentional, what elements prevented your from meeting the requirements and when did or will you become able to comply with the patent application requirements.
A UK patent will offer protection for your invention only in the UK. If you need protection overseas you need to either apply separately in each country where you need your invention to be protected, file a single application with EPO (the European Patent Office) which will offer you protection in over 30 European countries or file a single application with the PCT (Patent Cooperation Treaty) which will protect your invention in more than 140 countries signatory of the treaty.