Patents - Practice And Procedure

Patents provide protection for inventions, and in particular

provide a right to prevent third parties making, using, selling, or

otherwise commercially exploiting the invention which is defined by

the claims of the patent. New products, and articles which function

in a new way are patentable, as are machines, methods, processes,

compounds and compositions. However, the item to be patented has to

be new and unobvious at the date of the application for the


First Steps

An initial patent application is filed with a specification,

which is intended as a document of record, to establish a priority

date for the invention for which a patent is sought. The

specification must, essentially, include a description of the

invention and be accompanied by drawings. It is our recommendation

to include claims, which define the scope of protection being

sought by way of the patent, at the outset.

Any patent granted, in due course, in pursuance of the

application will not be invalidated by a subsequent disclosure of

the subject matter disclosed in the specification. Therefore, once

the first application is on file, the applicant is free to take

steps to commercialise the invention. This may involve

manufacturing and selling goods, or otherwise making details of the

invention public. In contrast, such steps taken before the

application has been filed can result in the application being


The country in which the first application is filed is generally

chosen in accordance with cost and convenience. A first application

filed at the United Kingdom Intellectual Property Office (UKIPO)

requires the payment only of low official fees and will also

provide an early search from a UKIPO Examiner. Where it is

particularly important for clients to obtain patent protection in

the United States of America, it can be advantageous to make the

first filing in the US.

It is a skilled job to draft a patent specification. It has to

describe an invention in sufficient detail to enable someone

skilled in the art to perform the invention. The claims, which have

to be supported by the description, define the scope of the

protection, and therefore need to be as broad as possible without

covering prior art. As inventions are frequently protected in more

than one country, it is also necessary to ensure that the final

documents do not offend against the differing requirements of

various countries.

We are skilled and experienced at drafting. In consultation with

inventors, we will produce a patent specification for filing in the

chosen jurisdiction which is sufficiently robust to withstand the

citation of relevant prior art and is generally in accordance with

requirements worldwide, despite regional differences.

The Priority Year

Within one year of making the initial application, a decision

must be made as to the future of the first application, and as to

where protection might be required.

Under various international agreements, a first...

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