Out-Law Guide 6 min. read

Patents: filing an application and the grant procedure

Inventions may be protected by the patent system, which has a statutory basis developed and refined by case law. Businesses wishing to obtain patent protection need to file an application to patent offices.

Filing for a patent in the UK

A granted patent, whether a UK patent or a European patent designating the UK, confers upon the proprietor a monopoly right in respect of the patented invention, for the term of the patent. Provided the relevant renewal fees are paid, the term of pat­ent protection is 20 years from the date of filing the applica­tion.

In the UK, applications for a ‘GB’ patent providing protec­tion in UK are filed with the UK Intellectual Property Office (IPO). The legal framework for patents is provided by the UK Patents Act 1977 (Patents Act), certain sections of the Copyright, Designs and Patents Act 1988, related procedural rules and regulations set out in associated laws, the Patents Rules 2007, the Manual of Patent Practice, together with various guides and guidance notes issued by the UK IPO.

A natural or legal person who is the inventor of the inven­tion or subject-matter in question is entitled to apply for UK patent protection (Patents Act section 7). Joint applications are permitted. Importantly, defects in entitlement to the inven­tion can create issues both before and after grant, and can in some cases lead to revocation of the granted patent.

The initial step is for a patent application to be filed with the UK IPO. The filed application must contain a request for the grant of a patent, a written description of the invention including any relevant diagrams, called a specification, and, either immediately or within 12 months of filing, a list of claims and an abstract.

Provided the procedural and sub­stantive requirements are met and the relevant fees paid, the application will proceed to the preliminary examination and search phase. Assuming the application continues to comply with procedural requirements, this will be followed by publi­cation, substantive examination, grant and final publication of the granted patent.

Following publication of the patent application but prior to grant, third parties have the opportunity to lodge written objections, called observations, regarding the patentabil­ity of the invention.

Observations are lodged with the UK IPO’s Comptroller-General of Patents, Designs and Trade Marks (the Comptroller) (Patents Act section 21). The filing of an observation does not make the observer party to any pro­ceedings.

Although observations can be made at any stage, the UK IPO advises that third-party observations be raised within three months of publication because in practice a pat­ent can be granted within three months of the publication date. The UK IPO will provide copies of third-party observa­tions to the applicant and will consider observations during the examination process.

Official fees charged by the UK IPO for processing an ap­plication through to grant are approximately £230 to £300, although an applicant is likely to incur additional costs for various professional services required to support the application, including, for example, patent attorney fees, technical expert fees and translations. Such fees vary considerably, but will increase if an applicant is required to overcome UK IPO challenges to the application.

Filing for a European patent

The European patent system, which includes the European Patent Office (EPO), is a centralised, regional system for the application, prosecution and grant of European patent protection. The European Pat­ent Convention (EPC) governs European patents and the EPO.

The EPO presently covers 38 member states, including all 28 states of the EU, two extension states and other states with which the EPO has validation agreements. Accordingly, one single European patent application potentially provides protection in respect of over 40 states, as a collection of national designations.

A natural or legal person, or any equivalent body, is entitled to apply for European patent protection; however, the result­ing patent right will belong to the inventor of the invention in question or their successor in title, as determined by their national law. Joint applications are permitted.

To obtain a European patent conferring UK protection, a party must file with the EPO an application designating the UK. Applications may be filed via the UK IPO or directly with the EPO.

Applications may also declare a priority date based on an application elsewhere in the world. The filed application must contain a request for the grant of a Euro­pean patent, a written specification, a list of claims, and an abstract. Provided the procedural and substantive require­ments are met and the fees paid, the application will pro­ceed to the formalities examination, publication and search phases. Assuming the application continues to comply with procedural requirements, these phases will be followed by publication, substantive examination, grant and final publi­cation of the granted patent.

Following publication of the European patent application but prior to substantive examination and grant, third parties have the opportunity to lodge written observations, which may be anonymous, regard­ing the patentability of the invention. Observations may be filed in English, German or French, and do not make the ob­server party to any EPO proceedings. The EPO will provide copies of third-party observations to the applicant, who may comment upon them, and will consider observations during any proceeding before it. Observations are also made pub­licly available in the event that opposition proceedings occur.

For a fee, within nine months of grant third parties may file written opposition to the grant of a European patent. This is a centralised procedure and the outcome is effective for all designated countries, and national rights. Unlike third-party observers, third-party opponents will become a party to the opposition proceedings. Any opposition must set out specific grounds for objection - patentability, lack of suffi­ciency and/or added matter (EPC Article 99).

The EPO will consider the opposition and the proprietor will have four months to respond, which may include filing amendments. The EPO evaluates the opposition and considers any submissions by the parties, which may extend to oral hearing, following which the EPO’s opposition division will issue a final determination. The EPO may issue interim preliminary and non-binding opinions to allow the parties to assess the merits of their respective positions.

Upon final determination, the outcome will affect all desig­nations for which it was granted. Any amendments to spe­cific national designations under the law and procedure of the relevant country will be supplanted by the EPO’s decision, if it results in amendments.

The grant procedure, for all specified country designations, is governed by the EPC. Additional and more detailed pro­visions are set out in the Implementing Regulations, Rules relating to Fees and Guidelines for Examination issued by the EPO.

Post-grant, the European patent will separate into national patents for those countries designated and those countries will assume responsibility for validation.

Granted European patents must in most cases be validated in each designated country of interest within three months of grant, and each country has various specific requirements for vali­dation based on national law, for example the requirement to translate the granted patent. However, the requirement for further validation is dispensed with in certain countries, including the UK by virtue of the London Agreement.

To maintain a UK patent - whether it is a national patent or a UK designation of a granted European patent - annual renewal fees are payable to the UK IPO after the end of the fourth year from the date of filing. If a UK national patent is not granted by the time the first renewal fee becomes due, then the renewal fee - and any subsequent renewal fees falling due prior to grant - can be paid after the patent is granted.

Annual renewal fees are payable to the EPO in respect of pending applications only. These are due in respect of the third year from filing, and each subsequent year until the patent is granted. After grant, the renewal fees must be paid to the respective national offices.

Making an international patent application

Alternatively, UK patents and European patents covering the UK may be designated as part of a Patent Co-operation Treaty (PCT) application. This international application system, which is administered by the World Intellectual Property Office (WIPO), provides a streamlined service for patent applications made globally.

Over 140 countries are party to the PCT system, meaning that a single application designating all relevant states may be filed to preserve pri­ority date, and national or regional applications can be filed in due course. The international application does not itself become a granted patent.

Timeline for patent applications to be granted

A UK national patent application may take between three and five years from the date of filing the application to grant. However, if certain fees are paid early and an appli­cant ensures that correspondence from the UK is responded to promptly, the timeframe to grant may be substantially shortened.

A European patent application can take between three and eight years, but this may be shortened or lengthened subject to EPO resources and intervening events. For example, third party oppositions are likely to lengthen the timeframe for the EPO granting procedure. It is also possible to accelerate or slow down prosecution using certain provisions and procedures.

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