Patent Procedures

BRIEF OUTLINE OF THE PROCEDURE TO OBTAIN A UK PATENT


To obtain a patent in the United Kingdom it is necessary to carry out all of the following steps:


1. First, one must file at the Intellectual Property Office (IPO) an application accompanied by a patent specification that usually includes drawings. The specification must describe the invention in sufficient detail for a person skilled in the area of the invention to be able to put the invention into practice.  This may seem odd since a patent is supposed to give you a monopoly but the idea is that, at the end of the monopoly period, the public will be able to carry out the invention following the guidance in the specification.


2. Within twelve months from the filing date, a request for a novelty search must be filed.  Often this request is left to the end of the 12 months period but it can be made earlier, for instance, on filing the application. When the request is filed, IPO carries out a search and sends a report which identifies documents which should be considered and which are categorised in accordance with their relevance. 


4. Upon receipt of the search report, the cited prior art references need to be studied and a decision made as to whether it is worthwhile proceeding with the application.


5. The application is published eighteen months after its filing date so that anyone can study the invention and file observations on its patentability.


6. Within six months of the date of publication, a request for substantive examination must be filed. This examination is to ascertain if all the requirements of the Patents Act are met, including the requirements of novelty and inventiveness.  Alternatively, one may accelerate the procedure by combining the search and the substantive examination.


7. About six months after the examination request is filed, the IPO will issue an examination report indicating any objections that may exist to the granting of a patent and also setting down a deadline for replying to the report.


8. After correspondence with the IPO, during which arguments may be filed and the specification amended, the patent may be allowed.


9. The specification of the granted patent is then published in its amended form and, as of the date of grant, the patentee may commence a legal action for infringement.  Should such an action succeed, damages may be awarded backdated to the date of the first publication.


10. On each of the fourth to the nineteenth anniversary of filing, a renewal fee must be paid to maintain the patent in force.  There is no obligation to pay the renewal fee but if it is not paid the patent will lapse and the invention will enter the public domain. This happens automatically after twenty years, beyond which the patent cannot be renewed.


11. The above only indicates the procedure for obtaining a UK patent. However, having filed the initial application in this country, one can within one year file applications in other countries and derive the benefit of the British filing date.  It is as of this date (referred to as the priority date) that the novelty of the invention is assessed rather than the later filing date of the foreign application.  Because of this, it is only necessary to file in this country in the first instance and the decision to seek protection in other countries can be deferred for a year.

michael@mrh-ip.com © Michael Harrison 2018