Introduction to Patents and the Patent

Application Process Dr Sarah Whitehead

Patents Directorate19th September 2012

Sarah.whitehead@ipo.gov.uk

What this talk will cover:

What a patent is and why you might want one What a patent isn’tOther optionsRequirements for a patentPatent specThe application process - inc priority. CostsTipsInternational protectionAccelerationResolving disputes

What is a patent

• Intellectual Property right which protects new inventions

• Covers how things work, what they do, how they do it, what they are made of and how they are made.

• Gives the owner the right to prevent others from making, using, importing or selling the invention without permission

• Lasts up to 20 years in the UK – as long as it is renewed!

• Country specific i.e. patent protection in the UK only works in the UK.

State Inventor

A deal between the state and the inventor

Fees

Technical Description

Exclusive Rights

20 years

Why would you want a patent?

Stops others from copying, manufacturing, selling, and importing your invention without permission

The right to take legal action to stop them exploiting your invention and to claim damages

You can also:

• Sell the invention and all the intellectual property (IP) rights

• License the invention to someone else but retain all the IP rights

• Discuss the invention with others in order to set up a business based around the invention.

What a patent isn’t

A guarantee of commercial success

Something the police or government will enforce on your behalf – patent infringement is a civil rather than criminal offence; it is your responsibility to enforce your patent

Valid in counties other than those where it has been granted

Necessary in order to manufacture or sell a product (it just means you can stop others doing the same)

Freedom to operate - doesn’t mean you won’t infringe anyone else’s patent.

Other options

• Trademarks

• Copyright

• Design rights

• Company names

• Reputation/branding

See our website www.ipo.gov.uk

Requirements for a patentYour invention must:

be new

not published, disclosed or made public (anywhere in the world) before the filing date.

have an inventive step

not obvious to someone with knowledge and experience in the subject

be capable of industrial application

must be technical/practical such as apparatus or device, product such as a new material or an industrial process or method of operation and not against the laws of physics

not be excluded

Exclusions

a scientific or mathematical discovery, theory or method

a literary, dramatic, musical or artistic work

a way of performing a mental act, playing a game or doing business

the presentation of information, or some computer programs

an animal or plant variety

a method of medical treatment or diagnosis

against public policy or morality.

Patent application

Description

Must contain enough information for others to carry out the invention.

Drawings

Optional. Helps to understand the description.

Abstract

Short summary including most important technical features. Included on the front page when published.

Claims

Defines in words the invention that is protected. Defines the scope of the monopoly and can be crucial to the commercial exploitation of the invention.

Main claim should list all the main technical features of the invention including those that distinguish it from what already exists. Subsidiary or preferred features are set out in dependent claims.

Timeline

Search (4 months)

Publish (18 months from filing)

Exam (+36 months from filing)

Amend

Grant (<4 ½ years from filing)

File + Prelim. Exam

Publish

1 2

Prepare a patent specification

Description

Drawings

Claims

Abstract

File form 1 and one copy of your specification

Form 7 will be required if the applicant is not the inventor

3

We issue a filing receipt confirming your application number and filing date

4

File form 9A and fee within 12 months of the filing or priority date

Formalities examination

PAU examination (if unrepresented)

The application process

Priority date

Once you have filed, if you file a new application to the same invention within a year you can claim the filing date of the earlier application

UK and/or abroad

e.g. file in UK get search results (we are quick!) decide whether you want to proceed and or file abroad as well

Or add new developments in new applications

Once filed can’t add new info to an application!

5 6

We carry out a novelty search to assess your invention and issue a report

4 months after form 9 filed

If formal requirements have been met your application is published at 18 months

7

You file form 10 and fee no later than six months from publication

8

We examine your application and inform you if anything needs amendment

Once all objections have been overcome we will grant your patent

Can be around 4.5 years from filing

The application process

Search – look for docs which demonstrate that the invention as defined in the claims is not novel or inventive. Inform applicant

Publication – we publish the information in the application. This means that others can see the information and use it in any country where there isn’t a valid patent preventing it’s use.

Exam - explain in more detail why we think citations are relevant. Explain if application doesn’t meet other legal requirements (clarity etc). Can have multiple rounds of amendment and exam before grant.

How much does it cost?

Total application is GBP £230 - £280 up to grant. Cheaper if file online.

Paper filing

•GBP £30 (application fee) for a preliminary examination •GBP £150 for a search •GBP £100 for a substantive examination

Electronic filing/web-filing service

•GBP £20 (application fee) for a preliminary examination •GBP £130 for a search •GBP £80 for a substantive examination

Renewal fees

Increase each year. Up to £600 year 20

Enforcement

Can be expensive. Worth considering before applying

Tips:

Consider carefully before applying – do you need a patent? Do you need further advice? Will a granted patent do what you need?

If patent is important to the commercial success of your business get legal advice

The better drafted the application and the more details there are about the invention the more likely it is to get something granted (more ways of amending in light of examiner’s comments)

Would you be able to enforce your patent (can be expensive)?

Read guidance on our website carefully

Ring our information centre if you have any questions before filing

Meet deadlines

Consider your market – would anyone want to buy your product?

Applying abroad

Do you want to sell your invention abroad? Now or in the future?

Do you want to license your patent abroad?

UK patent granted by the IPO only valid in the UK.

Apply to individual national patent offices = protection in individual countries. Can apply in a single country, including the UK, and apply later elsewhere using the first application to claim priority (12 months).

Patent Co-operation Treaty (PCT) = countries worldwide

European Patent Convention (EPC) = countries in Europe

Separate National Filings

Search

“A” Pub

Exam

Search Search Search Search

GRANT

“A” Pub

Exam Exam

“A” Pub

Exam

“A” Pub

Exam

“A” Pub

GRANT GRANT GRANTGRANT

UK France Germany US Japan

Obtaining Patent Protection Abroad

Filing

Application process: search, publication, substantive examination...

Grant of UK

patent

GB application

Maintain, sell, licence, amend, litigate etc in the UK

Filing

Application process at EPO -essentially the same as in the UK

Nominate states in which the patent will be granted (up to 38)

Grant of EP

patent

European application

Maintain, sell, licence, amend, litigate etc in each individual state

Opposition at EPO*

Bundle of national patents

Patent Revoked at EPO

EP(UK) EP(FR)

EP(DE) ETC

Filing

Application process until examination essentially the same as UK

Grant of UK

patent

International application

Maintain, sell, licence, amend, litigate etc in eachIndividual state

Nominate states (up to 145)

International phase

National phase

Enter national phase in UK

Enter national phase in other

states

Grant of national patent Grant of

national patent

Grant of national patent

National processing at individual offices

*After a European patent has been granted it may be opposed by third parties who believe it should not have been granted. Notice of opposition can only be filed within 9 months of the grant being mentioned in the European Patent Bulletin.

Application process essentially the same as UK post exam

In each case the granted patent(s) can be maintained for up to 20 years from the date of filing (providing renewal fees are paid)

Combined Search and Examination

• Not an acceleration as such but starts examination process sooner

• Request search and exam at the same time• Doesn’t require a reason• Receive search and examination report within 4

months

Accelerated search/pub/exam

• Reason required for accelerated search or exam• Reason must be should be specific to the particular

application – Fast Grant Guide gives examples • Early publication available on written request (but

beware disadvantages)• CSE can also be accelerated• Timeliness targets

Overview of fast track to grant

Application filed with accelerated CSE and early publication requested- adequate reasons for wanting

accelerated processing provided

CSE report issued

Amendment Rounds

Application published with search report

Three months for third party observations

Application sent for grant

Filing Date

3 months

5 months

8 months

9 months

Green Channel

• Invention must relate to a “green” or environmentally-friendly technology

• Request should provide reasonable assertion of some environmental benefit

• Can be used to accelerate any or all of the application process

• Requests refused if clearly unfounded• More info and FAQs available from

www.ipo.gov.uk/p-green

Green Channel

Wind 6%

Water 8%

Recyc-ling 10%

Solar 8%

Energy Saving 29%

Vehicle 18%

Other 21%

Area of technology, 2010/11

Wind 4% Water

10% Recyc-ling 5%

Solar 4%

Energy Saving 25%

Vehicle 42%

Other 10%

Area of technology, 2011/12

Acceleration options are also provided by the Patent Prosecution Highway and PCT (UK) Fast Track, each of which allows the Intellectual Property Office (IPO) to make use of work already conducted on related applications at other offices.

Resolving disputes

Hearings

Dispute between yourself and the office

Between yourself and a third party

Opinions

Infringement and validity

Mediation

Talk about dispute and come to an agreement with out court action

Court Proceedings

Thank you for your attention

Any questions?

Sarah.whitehead@ipo.gov.uk

Info centre: 0300 300 2000information@ipo.gov.uk

Website: www.ipo.gov.uk