Patents

An invention is only patentable if it meets certain criteria. It needs to be novel, inventive, and industrially applicable. Another way of saying this is that an invention needs to be new, not obvious, and have a real world use. There are also certain exclusions to what can be patented (see Excluded Subject Matter). These are some of the hurdles that must be passed before a patent can be granted.

For more information, please see the following article relating to patentability. Alternatively, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

There are certain restrictions on what qualifies as ‘patentable’. In the UK, excluded subject matter can be considered to include: business methods, copyright material, abstract ideas, ways of presenting information, ways of playing games, and methods of treatment or diagnosis. Software is sometimes patentable in the UK, depending on the particular invention, but may be excluded if there is no discernable real world ‘technical effect’ resulting from the software.

Note that different countries have different rules about what may be patented, so it may be that a certain invention might be excluded in one country and allowable in another.

For more information, please see the following article relating to excluded subject matter. Alternatively, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

Generally, if an invention is known anywhere in the world before you file an application, it will not be patentable. If you are unsure whether your invention is new, it may be cost-effective to do pre-application searching. This might be as simple as a Google search, or may be a more in-depth analysis of past patents and patent applications. We offer various search packages at competitive rates.

Note that every a patent application submitted to the UK IPO has a mandatory search done by the UK IPO. This is separate to any previous searching you have commissioned privately.

For more information, please see the following article relating to pre-application searching. Alternatively, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

A patent specification is a carefully constructed document containing different sections, such as the claims and the description. The wording of each part of the specification needs to be deliberately chosen to support any changes, if required further down the line (known as amendment). For similar reasons, it is advisable to submit all of the required parts of a patent specification on filing an application, to avoid issues with ‘added matter’.

We offer competitive fixed fee deals for drafting patent specifications across a range of subject matter, including mechanical, chemical and software-related inventions. We also offer competitive rates for handling patent applications through to grant in any country.

For more information, please see the following articles relating to patent drafting and amendment. Alternatively, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

The examination procedure for patent applications is intended to ensure that granted patents are ‘valid’. In other words, patents are not granted for inventions which are later shown to have already existed, or which would have been obvious in retrospect, for example.

A patent may be invalid if it is not novel or inventive, but other reasons for invalidity exist. For example, if a granted patent can be shown to contain ‘added matter’, i.e. information that was not present in the application as filed, then it is likely to be revoked as invalid.

Issues concerning patent validity can arise during cases of patent infringement, where one party has alleged infringement and the other contends that the patent is invalid (and so unenforceable).

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

A patent can only be enforced once granted. If you own a granted patent, you have the right to stop another party from doing something that would fall within the scope of a claim in your patent (known as infringement).

For example, if you have a granted UK patent for a product or system, then you would have the right to stop another party making, using, disposing (selling), offering to dispose of (sell), importing into or keeping that product in the UK. Similar rights apply for the product of a patented process.

There is also the possibility of ‘contributory’ infringement, where a party does not infringe a claim in a patent but enables another party to do so.

For more information, please see the following article relating to infringement. Alternatively, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

Sometimes, patents may be granted for an invention that is not novel or inventive, for example. This can occur if a Patent Office does not find certain prior art during a search, and so does not raise corresponding objections.

Alternatively, a granted patent may contain information that was not present in the patent specification as filed (‘added matter’), or there may not be enough information in the specification to explain how to work the invention (a lack of enabling disclosure, or ‘insufficiency’).

In such cases, it is possible for a patent to be revoked, or partially revoked, by a court or by the relevant Office (e.g. the UK IPO or the EPO), in light of new prior art that pre-dates an application, for example.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

In order for a person to be granted a patent to an invention, they must have entitlement. In other words, they must be either the inventor, or have acquired the right to the patent from the inventor.

For example, a patent application may be filed in the name of a company. The company itself did not invent the invention, rather the inventor(s) did. If the inventors are employed by the company, the rights normally pass to the employer under UK patent law. However, in the case of a company Director, the relevant rights may not pass automatically, and an assignment may be needed to transfer the patent rights to the company.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

Renewal (or maintenance) fees are generally due annually to keep a patent in force, or to keep a patent application pending. Patents can normally be kept in force up to 20 years from their filing date.

In the UK, renewal fees are due for the fifth year onwards, but only need to be paid once the patent application has been granted. For a European patent application, renewal fees are due whilst the application is pending as well as post-grant.

In both the UK and Europe, renewal fees can be paid up to 6 months late, with a surcharge. The cost of renewal tends to increase each year. If a renewal fee is not paid, the patent will lapse.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

It is possible to license or transfer a patent from one person (or company) to another. Licensing permits another party to work the invention, e.g. making and selling the patented product, without infringing. In return, the patent holder can receive a royalty, for example. Assignment transfers the patent to another party, and the previous holder no longer owns the patent.

Different types of licenses are possible, and the terms can be negotiated according to the value of the patent (or patent portfolio). Patent assignments normally transfer all of the patent rights from one party (the ‘assignor’) to the other (the ‘assignee’). Licenses and assignments should be recorded at the relevant Patent Office once finalised.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

The UK government began the Patent Box in 2013, which provides corporation tax relief on profits related to patented inventions.

Note that certain restrictions will be placed on the Patent Box scheme from June 2016, although anyone benefitting from the current scheme may continue to do so until June 2021.

For more information, please see the following article relating to the Patent Box. Alternatively, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.