Patents : overview

If you have a new product idea invention and want to have the legal right to exclusively pursue it and protect it from being copied, you need to apply for a patent with the UK Intellectual Property Office (IPO).

What is a Patent

A patent is an intellectual property right granted by a country's government as a territorial right for a limited period. It’s a legal document that confirms legal ownership of the disclosed material e.g. product, invention, specification and grants an exclusive right to freely pursue it (without competition) within the territory.

In the UK, patent applications are made to and processed by the Intellectual Property Office (the IPO).

To apply for a patent, you need to file a patent application. However, before applying for a patent and proceeding to protect your new product idea invention, it’s crucial to conduct due diligence to determine if patent protection is suitable and the correct approach. Not all new products, ideas, or inventions are patentable, and or should be pursued.

A Patent application is made up of four parts

A written description, disclosing the technical aspects of the new product idea invention.
Accompanying drawings, corresponding with the description.
A list of claims, defining the distinctive technical features of the invention.
An abstract’, a summary of the technical aspects of the invention.

Applying for a Patent

Once the Patent application has been compiled, it can be filed with the UK Intellectual Property office (IPO). This can be done online or through the post.

Online filing : Go to the UK IPO website and file your application electronically.
By post : You can fill out form Form 1 (Patent Application) and send it to the UK IPO at Intellectual Property Office, Concept House, Cardiff Road, Newport, South Wales, NP10 8QQ.

The official IPO fee to apply for a patent on online is currently £60 (paid with the application) or £75.00 (paid at a later date).

Upon receiving the application, the UK IPO will issue a filing receipt that includes the application number and the filing date.

Nothing more needs to be done for 12 months. Unless you decide to accelerate the process.

Preliminary Search

Within 12 months of filing the application (should you wish the application to continue), a request for the Patent to be searched needs to be made. (Form 9A - Request for Search).

The official IPO fee to request a Preliminary Search is currently £150.00.

During the Preliminary Search, a Patent examiner performs a search of the invention to determine whether it is new and inventive. The search is usually based on the invention as set out in the claims, but may be based on the disclosure of the invention as a whole.

Extracting key technical features from the claims, classified material and online databases from around the world are searched (containing records of published patent specifications) looking for technical features of the invention that might be already be known or are obvious. The examiner may also search online product catalogues and technical journals.

Upon completion of the Preliminary Search (approx 6 months), the IPO will issue a Search Report. Highlighting (if any) previously published patents and documents they deem to be technically similar to the invention.

Publication of the application

Approximately 18 months after the filing date, the UK IPO will publish the patent application in the Patents Journal and IPSUM database (Online Patent Information and Document Inspection Service). At this stage, the application and all related correspondence becomes available for public inspection.

Requesting a Substantive Examination

Within 6 months of the publication of the application (should you wish the patent application to continue), a request for the application to be examined must be made. (Form 10 Request for Substantive Examination).

The official IPO fee to request a Substantive Examination is currently £100.00.

The Substantive Examination is a critical phase in the patent application process. In conjunction with the results of the Search Report, a thorough examination of the content of a patent application is carried out to determine whether it meets all the legal and technical requirements for patentability. The Substantive Examination goes beyond the initial formalities check and focuses more on the substance and technical features of the invention itself.

Novelty : Is the invention new, meaning it must not have been disclosed to the public before the date of the application.
Inventive step : Does the invention involve an inventive step that would not be obvious to someone with expertise in the relevant field.
Industrial applicability : Can the invention be capable of being used in some kind of industry.
Clarity : Are the claims and description clear and precise.
Support : Do the claims correctly support the description.
Excluded subject matter : Does the invention fall within excluded categories (such as scientific theories, mathematical methods, or aesthetic creations).

Examination Report

If the application passes the substantive examination, the examiner will inform you of any required changes before moving forward.

Should the examiner find the Patent application does not meet the patentability criteria, they will issue an Examination Report detailing the objections. An opportunity to amend the claims or provide arguments to overcome the objections is then provided within a specific timescale (typically 4 months).

Should a response to the Examination Report be provided, the examiner will assess the response and will issue a further report. An opportunity to amend the claims or provide arguments to overcome the objections is once again provided.

If the objections are not overcome or no response to the Examination Report is provided, the application will be refused.

Granting of the Patent

If the application meets all the necessary requirements, the UK IPO will issue a letter of "intention to grant" the patent. Shortly thereafter, the patent will be granted, and a certificate will be issued.

Details of the grant will also be published in the Patents Journal and added to the IPO's public records.

Subject to paying annual renewal fees, the Patent will remain in force for 20 years.