Patents of Invention

– Patents Act 1977, as amended.
– Patents Rules 2007, as amended.
– Patents (Fees) Rules 2007, as amended.

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since January 24, 1965.
– Convention Establishing the World Intellectual Property Organization (WIPO), since April 26, 1970.
– Strasbourg Agreement Concerning the International Patent Classification, since October 7, 1975.
– European Patent Convention (EPC), since October 7, 1977.
– Patent Cooperation Treaty (PCT), since January 24, 1978.
– Budapest Treaty (Deposit of Microorganisms), since December 29, 1980.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Patent Law Treaty, since March 22, 2006.
– London Agreement on the application of Article 65 EPC (in force since May 1, 2008).

Territories Covered

The United Kingdom consists of Great Britain and Northern Ireland and the Isle of Man (hereinafter referred to as the U.K.), the territorial waters of the U.K. and the continental shelf areas of the U.K. The following details have been supplied by the U.K. Intellectual Property Office (“UKIPO”) regarding the territories to which a European patent (U.K.) or a U.K. national patent can be extended:

1. The following States allow the registration of a U.K. national patent within a time period set under their laws: Anguilla, Bermuda, British Virgin Islands, Brunei Darussalam (filed before January 1, 2012), Cayman Islands, Falkland Islands, Fiji, Gambia, Gibraltar, Grenada, Guernsey, Guyana, Jersey, Kiribati, Montserrat, Nauru, Saint Helena, Saint Lucia, Samoa, Seychelles, Sierra Leone, Solomon Islands, Zanzibar (part of Tanzania, no registration is allowed in Tanganyika), Turks & Caicos Islands, Tuvalu, and Vanuatu. Note: protection normally lapses with the U.K. patent.

2. The following States or territories appear to accept the registration of European patents (U.K.): Anguilla, Bermuda, British Virgin Islands, Cayman Islands, Falkland Islands, Fiji, Gambia, Gibraltar, Grenada, Guernsey, Jersey, Kiribati, Saint Vincent & the Grenadines, Samoa, Solomon Islands, Turks & Caicos Islands, Tuvalu and Vanuatu (under new law changes). Note: protection normally lapses with the European patent (U.K.).

Some of the States above have amended their laws to allow the registration of European Patents (U.K.). However, some simply allow the registration as a convenience.

3. European Patents (U.K.) are not registered at present in the following States or territories: Antigua & Barbuda, Saint Lucia, Tanzania (both Tanganyika and Zanzibar).

4. European Patents (U.K.) can no longer be registered in the following States: Brunei Darussalam (with a filing date of January 1, 2012 or later) and Uganda.

5. Information is not currently available on the registration of European Patents (U.K.) in the following States: Guyana, Montserrat, Nauru, Pitcairn, Saint Helena, Saint Kitts & Nevis, Seychelles, Sierra Leone, Swaziland, and Tonga.

6. Protection can be obtained in Hong Kong by two-stage registration of the published U.K. national application or its equivalent from PCT or EPC procedures, and the subsequent registration of the granted patent. See Chapter on Hong Kong for greater detail.

7. A U.K. patent or European patent (U.K.) also extend automatically to British Indian Ocean Territory.

The list can be viewed at this link: www.gov.uk/government/publications/extension-of-uk-intellectual-property-rights-abroad.

Filing

Applicant: may be any person or corporate body either alone or jointly with another. The applicant(s) must be in a position to substantiate a right to the grant of a patent.

Priority: may be derived from an earlier U.K. application or from an application in a WTO country, including an application made under the Patent Cooperation Treaty (PCT) or the European Patent Convention (EPC). Priority should be claimed on filing of an application. However, a declaration of priority can be filed subsequent to the filing of an application either (1) adding or modifying a claim to priority where the application was filed within one year of the earliest claimed priority; or (2) claiming priority of an application filed more than one year prior to the filing of the application where it can be shown the failure to file the application within the due time was unintentional. An application made under (1) above is to be filed within sixteen months of the earliest claimed priority and under (2) within two months of the end of the period for claiming priority. In both cases, the application should not have been published or the preparations for publication completed, and there should not be an outstanding request for early publication of the application.

Multiple priorities: may be declared and may derive from applications in different WTO countries.

Foreigners and nationals not resident in the U.K.: patent applicants and any person commencing or opposing proceedings before UKIPO must furnish an address for service within the U.K., Gibraltar or the Channel Islands. With the U.K.'s withdrawal from the EU there is not expected to be any immediate change to the U.K. address for service rules. 

Patentability: an invention, to be patentable, should be new, involve an inventive step, and be capable of industrial application.

Not patentable: the following are not inventions for the purposes of the Act: (a) a discovery, scientific theory, or mathematical method; (b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever; (c) a scheme, rule or method for performing a mental act, playing a game or doing business or a program for a computer; or (d) the presentation of information. These exclusions apply only to the extent that the patent application relates to them as such, and inventions with appropriate technical contribution may be patentable, even though they may be implemented by computer. An invention of a method of treatment of the human or animal body by surgery or therapy or a method of diagnosis practiced on the human or animal body is now specifically excluded from patent protection under section 4A of the Patents Act 2004, now in force and in line with EPC 2000. This exclusion shall not apply to an invention consisting of a substance or composition for use in any such method. A patent shall not be granted: (a) for an invention the publication or exploitation of which would be generally expected to encourage offensive, immoral or anti-social behavior; (b) for any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a micro-biological process or the product of such a process. The U.K. law relating to the patenting of biotechnological inventions is derived from EU legislation. With the U.K.'s withdrawal from the EU, the U.K. government has indicated its intention to retain the relevant EU legislation in U.K. law.

Filing requirements for an application (to be sent to resident agent):
1. An indication that a patent is sought;
2. Full details of the applicant(s) for the patent including state of incorporation/nationality;
3. A description of the invention, including claims and abstract;
4. Drawings where appropriate (informal drawings as a minimum with formal drawings to be filed within sixteen months of the earliest claimed priority date);
5. Country and date of filing of any application from which priority is to be claimed;
6. Certified copy of each application from which priority is claimed;
7. Full details of the inventor and the applicant’s right to the grant of a patent;
8. Official fees are payable to the UKIPO in respect of filing, search and examination.

Minimum requirements for obtaining a filing date for a patent application are: (1) an indication that a patent is sought; (2) an indication of the applicant(s) for the patent; (3) a description of the invention or a reference to an earlier relevant application made by the same applicant or predecessor in title; and (4) drawings where appropriate.

Electronic filing of documents: an application and supporting documents may be filed electronically.

Notes: a patent application must be formalized to include one or more claims and an abstract. Furthermore, a request for Search (and fee paid) must be filed. These must be done within twelve months of the filing date or the earliest claimed priority date, or two months from filing of the application, whichever expires later. Failure to formalize a patent application within the prescribed term will result in the application being considered to be withdrawn. The Statement of Inventorship and right to the grant of a patent, if required, must be filed within sixteen months of the filing date or the earliest declared priority date. Failure to file this within the period prescribed will result in the application being considered to be withdrawn.

When a patent application discloses an invention requiring for its performance the use of a microorganism which is not available to the public at its date of filing, in most circumstances a culture of the microorganism must be deposited in a depository institution not later than said date of filing. The name of the depository institution and the accession number of the deposit must be given in the specification of the application.

An authorized agent may sign all patents forms on behalf of an applicant. An Authorization of Agent need not be filed.

PCT applications: time limit for entering national phase under both Chapter I and Chapter II: 31 months. Translation of the application may be provided up to 33 months.

Where priority has been claimed from an earlier application, a certified copy of the earlier application(s) must normally be filed within sixteen months of the earliest declared priority date. If the priority document is in a language other than English, the Examiner may require the filing of a declaration, stating that the priority document corresponds with the application as filed, or a certified translation of the priority document application. This will be requested if novelty or inventive step depends on the priority claim. Failure to meet these requirements will result in loss of the declared priority. The Priority Document Access Service enables U.K. applicants to electronically file a patent application and request that an electronic copy by held in a secure database. It also enables U.K. applicants to substantiate a priority claim from an earlier application by using a copy of the priority document accessible via a secure database at WIPO.

Examination Procedure

An application is automatically referred to an Examiner for preliminary examination once the application fee has been paid, provided the application has been accorded a date of filing, and has not been withdrawn or treated as withdrawn. The preliminary examination report may raise formal objections which must be dealt with within a short term, or confirm dates for the completion of formal requirements, for example Statement of Inventorship, formal drawings or certified copies of the application(s) from which priority is claimed. Otherwise, the applicant is not required to do anything at this stage.

Search reports are currently being issued about three to eight months after the request. The search report lists any relevant prior art without restriction to origin although normally the search is restricted to EP, U.K., U.S. and PCT patents publications.

Amendment: the application may not normally be amended until the search report has been issued. The applicant is allowed to amend the claims to overcome the citations.

Publication of the application as filed should occur eighteen months after the earliest declared priority date or, where there is no declared priority date, the filing date unless the patent application is withdrawn or refused before preparations for its publication have been completed by the UKIPO. The original claims and any amendments to those claims filed before the completion of the preparations for publication will also be published. If the applicant is concerned about infringement, publication of amended claims may be desired.

Observations: after publication of the application and before issue of the notice to grant a patent, a third party may make observations in writing to the UKIPO on the question of whether the invention is a patentable invention, stating reasons and providing evidence and the UKIPO shall consider them. The third party does not become involved in the proceedings.

A request for substantive examination along with payment of the prescribed fee must be filed before the expiry of six months from the publication of the application. If this request is not filed within that term, the application is considered to be withdrawn. Following the request for substantive examination, the application is examined to determine whether (1) the invention is novel and involves an inventive step; (2) the specification discloses the invention clearly and completely for it to be performed by a person skilled in the art; (3) the claims are clear and concise and supported by the description; and (4) there is unity of invention.

Accelerated processing: applicants may request accelerated search and examination of their application via (1) a reasoned accelerated search and/or examination request; (2) the UKIPO’s “Green Channel” if the invention has an environmental benefit; or (3) the PCT (U.K.) Fast-Track for an International (PCT) application entering the U.K. national phase after receiving a positive International Preliminary Report on Patentability (see “EPC and PCT” section below). In addition, if the patent claims of the U.K. application have already been found to be acceptable under examination by another Patent Office participating in the “Global Patent Prosecution Highway” program, applicants may request accelerated examination at the UKIPO under the “Global PPH” initiative. Full details of the other Offices participating in the program may be found at www.jpo.go.jp/ppph-portal/index.htm. Bi-lateral pilot PPH programs are also presently under way with the State Intellectual Property Office of the People’s Republic of China and Brazil's National Institute of Intellectual Property. 

Duty of disclosure: the applicant is requested to advise the UKIPO of all official search reports on corresponding applications which are issued prior to filing a response to the first examination report or, if the Examiner does not raise any objections, within two months of the issue of the examination report.

Objections: when objections are raised, a term normally of four months will be set for reply to the first official letter, but for any subsequent official letter the usual term is two months. No amendment of the application will be allowed which would result in the application or specification disclosing matter not present in the application as filed. The term set by the Examiner may normally be extended by two months, if requested before the end of the extended two-month period. A further two-month extension may be obtained in exceptional circumstances. An extension to the term set by the Examiner cannot, however, normally extend past the end of the compliance period mentioned in Section 6. “Granting” below.

Reinstatement: reinstatement is available where an application has been refused or deemed to be withdrawn because the applicant has not complied with a requirement of the Act or the Rules within an applicable time limit. The application for reinstatement must be filed within twelve months of the date of termination of the application. For reinstatement to be successful, the applicant must show that the non-compliance was unintentional. If reinstatement is allowed, the applicant will be given a further period, not less than two months, to complete the missing requirements. If the applicant fails to comply with the above requirements, the application shall be treated as having been withdrawn.

Division: a divisional application may be filed by the original applicant or his successor in title, in respect of any part of the matter contained in the earlier application. A divisional application must be filed prior to the issue of a notification of grant communication by the IPO, and no later than three months before the end of the compliance period.

Granting

An application must satisfy the Act and the Rules, within a compliance period, which ends at the later of (1) four years and six months after the earliest declared priority date or, where no priority date has been declared, the filing date or, (2) one year from the issue of the first examination report. Prosecution of an application is closed when the UKIPO indicates the application is in order for grant of a patent. A patent is deemed to have been granted when mention of the grant is published in the Official Journal, which also corresponds to the publication of the granted patent.

Delivery of document: the patent certificate is issued in paper format.

Duration – extension: a patent is granted for a term of twenty years beginning with the date of filing of the application. For medical and plant protection patents, this term is extendible by up to five years under certain circumstances by Supplementary Protection Certificates (see Section 9 below).

Renewal fees: are payable annually in respect of the fifth and subsequent years. Grace period: an extension of six months can be obtained to the period for payment of any renewal fee. A fine becomes due when renewal is made in the second to sixth month of extension. The proprietor of a patent may apply for an entry to be made in the Register to the effect that Licenses of right under the patent are to be available. Renewal fees payable thereafter are halved whilst such an entry is on the Register.

Restoration of a patent which has lapsed due to non-payment of a renewal fee is possible if: (1) application for restoration is made by the last day of the nineteenth month from the date of the missed renewal; and (2) the proprietor of the patent can prove that the failure to pay the renewal fee was unintentional.

Patents of addition: no provision.

Assignment: it is in an assignee’s interest to register an assignment within six months of the assignment. For an assignment to be deemed valid in the U.K. it need only be signed by the assignor.

Change of name or address: must be registered. Can be effected by providing evidence from an official extract illustrating the change. A scanned copy is sufficient and there is no need for notarization or legalization.

Opposition: there is no provision for opposition to the grant of a patent. Third party observations can be filed during examination (see “Observations”, above).

Infringement: it is an infringement to carry out any of the following acts in the U.K.: to make a patented product or to use a patented process; to dispose of or offer to dispose of, to use, to keep (for disposal or otherwise) or to import a patented product or the product obtained directly by means of the process. It is also an infringement to supply without authority (or offer to so supply) in the U.K. means for putting the invention into effect in the U.K. if the supplier knows or should have had reasonable grounds to believe that the “means” are for that purpose. Infringement proceedings cannot be initiated until the patent has been granted, but the patentee can seek damages in respect of infringement which took place between publication of the application and grant provided that the infringing act infringes (a) the claims of the granted patent; and (b) the claims of the published application.

Employee’s inventions: in most circumstances, inventions made by employees in the scope of their duties, belong automatically to the employer.

Post-grant amendment: EPC 2000 has introduced a central limitation process for post-grant amendment of European patents, effective in all Contracting States designated by the European patent. It is still possible to amend a European patent (U.K.) at the UKIPO, wherein the amendment will only be effective in the U.K.

Refusal of Protection after Granting

Revocation: an application for revocation of a patent may be made to the UKIPO or the court by any person at any time after grant of the patent and while the patent is in force, on any one or more of five grounds, namely: (a) the invention is not a patentable invention; (b) the patent was granted to a person or persons not alone entitled to the grant; (c) the specification does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art; (d) the matter disclosed in the specification of the patent extends beyond that disclosed in the specification as filed; (e) the protection conferred by the patent has been extended by an amendment which should not have been allowed. (See EPC Section below also). If, however, revocation is requested under the grounds provided in (b) above, the entitlement proceedings must have been commenced within two years from the date of grant of the patent, unless it can be shown that the registered proprietor of the patent knew at the time of grant, or transfer of the patent to them, that they were not entitled to the patent.

EPC and PCT

The U.K. is a member both of the EPC (including EPC 2000) and the PCT.

The U.K.’s position as a contracting State of the EPO is not affected by the U.K.’s withdrawal from the EU, and European (U.K.) patents will continue to be obtainable through the EPO route.

When the U.K. is designated in an EPC application, a European Patent (U.K.) shall, as from the publication of the mention of the grant in the European Patent Bulletin, be treated as if it were a patent granted in pursuance of a national application, and the proprietor of a European patent (U.K.) shall accordingly as respects the U.K. have the same rights and remedies, be subject to the same conditions, as the proprietor of a national patent. To obtain provisional protection under Art. 67 EPC, an English translation of the claims has to be filed. Under the London Agreement (in force since May 2008), an English translation of an EP specification published in French or German is no longer required for newly-granted European patents. Dual protection under national law and the EPC is not permitted. In such a case the UKIPO will revoke the national patent. Renewal fees: where the date of publication of the mention of grant of the EP patent in the European Patent Bulletin occurs less than three months before the fourth or a subsequent anniversary of the date of filing, the first renewal fee due on the patent following mention of grant may be paid up to the last day of the third whole calendar month after the date of publication in the Bulletin without any additional fee being charged.

National phase of PCT applications: where the U.K. has been designated in a PCT application and a U.K. patent is desired after completion of the international phase, the applicant must pay into the UKIPO the national search, and substantive examination fees, and file, if necessary, a translation into English of the PCT application, including any amendments effected during the international phase. The National Fee should be paid within 31 months from the earliest claimed priority date of the PCT application, though the fees and the translation can be deferred to 33 months so long as an associated request for extension is filed before the end of the 33-month period. PCT (U.K.) Fast-Track Examination: patent applicants can request accelerated examination in the U.K. national phase if their international application has received a positive International Preliminary Report on Patentability (IPRP). In order to qualify for this service, all claims present in the application on entry into the national phase must have been examined and found to meet the requirements for novelty, inventive step and industrial applicability in the international phase.

Supplementary Protection Certificates (SPCS)

Notion: an SPC extends the protection conferred by a U.K. patent or European patent (U.K.) (basic patent) beyond the term of that patent but only in respect of a product covered by an authorization to place the corresponding medicinal or plant protection product on the market and any use thereof which has been authorized before expiry of the certificate. It does not extend the term of the patent itself. Provisions under U.K. patents relating to matters such as infringement therefore apply equally to an SPC.

Application: an SPC will only be granted to the holder of the basic patent or his successor in title. An application for a U.K. SPC must be filed with the UKIPO. The basic patent must be in force at the date of application for the SPC.

Duration and annuities: an SPC takes effect at the end of the lawful term of the basic patent, subject to payment of annual fees. The term of an SPC may not exceed five years. It is extremely important to note that the annual fees are payable as a single cumulative amount as a condition of the SPC taking effect. It is not possible for an applicant to opt to pay renewal fees one year at a time on a SPC in the U.K. Where the effective period chosen by the applicant for which he requires protection is less than the maximum allowable period for the certificate, it cannot be subsequently extended. U.K. SPC practice is therefore different from that of U.K. patent renewals during the lawful term of the patent and from the SPC annual renewal practice in some EC States.

The Patent Regulations 2007 amend the Patents Act to make clear which provisions of the Act apply to SPCs. They also provide a basis in the Act for the new rules on the extension of SPCs for paediatric medicines.