Types Of Intellectual Property Protection For Inventions And Granting Procedure

'The basics of patent law' covers key information relating to patent law, including: Types of intellectual property protection for inventions and granting procedure; Initiating proceedings; Infringement and related actions; Validity challenges, revocation actions and other procedures to remove the effect of an IP right; Trial, appeal and settlement; Remedies and costs; Assignment and licensing and the Unified Patent Court and Unitary Patent system.

The articles underpin Gowling WLG's contribution to Chambers' Global Practice Guide on Patent Litigation 2017, for which Gordon Harris and Ailsa Carter wrote the UK chapter.

Introduction

In the United Kingdom, inventions may be protected pursuant the patent system. In addition, for information with the necessary quality of confidence, the tort of breach of confidence may assist in protecting against unauthorised use.

Supplementary Protection Certificates (SPCs) enable a limited extension of patent term in respect of pharmaceutical or plant protection products in qualifying circumstances.

The grant of a patent covering the UK

In basic terms, there are two systems pursuant to which a patent may be granted covering the UK: the national system and the European system. Either system may be preceded by, or may provide the receiving office for, an application under the international system.

National patent system

Under the national system, an application is made to the UK Intellectual Property Office (UKIPO), for a 'GB' patent which covers the UK. The grant of a GB patent is governed by the UK Patents Act 1977 (the "Patents Act" or "PA") and associated legislation, with details of procedures set out in the Patents Rules 2007 (as amended) and the Manual of Patent Practice ("MPP") and guidance notes.

Any natural or legal person may apply for a patent in the UK, either alone or jointly with another, provided they are the inventor(s) or otherwise entitled to the property in it (PA s.7). The first step in the procedure for obtaining a patent is to file an application (which may declare a priority filing), thereby obtaining a date of filing. The patent application includes a written description of the invention, drawings if referred to, and (optionally at filing, failing which within 12 months) claims and an abstract. Preliminary examination, search, publication, substantive examination, grant and publication follow, assuming procedural and substantive requirements are met and the requisite fees paid. The term of patent protection is 20 years from the date of filing the application, provided renewal fees are paid.

It is possible for third parties to make observations in writing to the Comptroller-General of Patents, Designs and Trade Marks (the "Comptroller") about the patentability of a published application before grant (PA s.21). The UKIPO recommends that any observations be filed within three months of the publication of the application, as a patent may be granted after this period. The observations must be duly considered and in the usual course a copy of them must be provided to the applicant. A person does not become a party to any proceedings by making observations.

Appeal against a refusal by the UKIPO to grant a national patent lies to the Patents Court (a specialist list within the Chancery Division of the High Court of England and Wales) or, where applicable, Scotland's Court of Session (PA s.97).

It is permissible to apply for a national patent without using a professional representative but this is not recommended. The application process usually takes approximately three to five years from the date of filing the application, but can be considerably quicker than this if some fees are paid early and correspondence from the UK is responded to promptly.

For processing the application through to grant, UKIPO fees are usually in the region £230-300. Additional costs may be incurred by the applicant in professional services for drafting, translation and representation. These will vary greatly in accordance with the relevant circumstances.

European patent system

The European patent system (including the European Patent Office (EPO)) was established by the European Patent Convention 1973 (EPC), an international treaty made outside the remit of the European Union. It provides for the centralised application, prosecution and grant of patents (as a...