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Applying for a patent

Patentability
What are the criteria for patentability in your jurisdiction?

To be patentable, an invention must be new, involve an inventive step and be capable of industrial application.

What are the limits on patentability?

The following are excluded from patentability:

  • discoveries, scientific theories or mathematical methods;
  • literary, dramatic, musical or artistic works;
  • schemes, rules or methods for performing mental acts, playing games or doing business;
  • some computer programs;
  • presentation of information;
  • methods of treatment for, or methods of diagnosis practised on, humans or animals;
  • the discovery of a gene sequence, unless the industrial application of the discovery is disclosed;
  • use of human embryos for industrial or commercial purposes; and
  • animal or plant varieties, or any essentially biological process for their production.

To what extent can inventions covering software be patented?

Under UK patent law, computer programs as such are expressly excluded from patentability. However, computer programs may be patentable if the invention involves a technical contribution outside the excluded subject matter. 

To what extent can inventions covering business methods be patented?

Under UK patent law, business methods are expressly excluded from patentability. However, like computer programs, business methods may be patentable if the invention involves a technical contribution outside the excluded subject matter.

To what extent can inventions relating to stem cells be patented?

The use of human embryos for industrial or commercial purposes is excluded from patentability. This includes any embryo-derived human stem cells that are “capable of commencing the process of development of a human being”. On the other hand, stem cells derived from parthenogenesis may be patentable since current scientific evidence suggests that they cannot develop into an embryo in the absence of paternal DNA.

Are there restrictions on any other kinds of invention?

Inventions whose commercial exploitation would be contrary to public policy or morality are excluded from patentability – for example, processes for cloning humans or modifying the genetic identity of animals that are likely to cause harm without substantial medical benefit.

Grace period
Does your jurisdiction have a grace period? If so, how does it work?

No grace period exists in the United Kingdom.

Oppositions
What types of patent opposition procedure are available in your jurisdiction?

There is no opposition available against UK patent applications (although third-party observations challenging patentability may be filed with the IP Office after publication of the application and before grant). However, the validity of European patents (which may be designated in the United Kingdom) may be challenged in opposition proceedings at the European Patent Office within nine months of grant. 

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

It is possible to request an opinion from the Patent Office on the validity or infringement of a patent in a written procedure. The opinion is not binding and the Patent Office cannot award damages or revoke a patent which it considers invalid. The validity of a patent may be challenged in revocation proceedings before the Patent Office or in court proceedings.

How can patent office decisions be appealed in your jurisdiction?

IP Office decisions rejecting the grant of a patent (or supplementary protection certificate) can be appealed before the Patents Court (part of the UK High Court). 

Timescale and costs
How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

It normally takes three to four years for a UK patent to be granted. However, it is possible to shorten some of the stages in the prosecution of patent applications by requesting accelerated prosecution. The cost to file a patent in the United Kingdom (including patent agent fees) is approximately £3,000 to £6,000, depending on the complexity. For patentees that want their applications to be progressed quickly, the IP Office has a range of provisions available. Requests may be made for accelerated search and examination procedures – particularly where the applicant intends to use the Patent Prosecution Highway Scheme to accelerate examination pending in other cooperating jurisdictions. Acceleration is also available specifically for patent applications involving green technologies.

Enforcement through the courts

Strategy
What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

The Patents Court or the IP Enterprise Court hears claims for patent infringement. The IP Enterprise Court provides a streamlined and more cost-effective forum to hear lower-value and less complex IP claims than the Patents Court.

What scope is there for forum selection?

There is normally a £500,000 cap on damages and a £50,000 cap on legal costs that a successful party can claim in the IP Enterprise Court. Claims exceeding £500,000 or those requiring complex evidence are normally heard in the Patents Court. If either party in a Patents Court or IP Enterprise Court case believes that the other court is a more appropriate forum, it can apply for the dispute to be transferred (although the case will be transferred only if it is appropriate in the circumstances). 

Pre-trial
What are the stages in the litigation process leading up to a full trial?

No pre-action procedure exists. After filing and serving the claim form, the particulars of the claim and infringement are served. The defendant may file a counterclaim for revocation with its defence. In the Patents Court, these documents are brief, containing assertions and brief facts relied on in support. In IP Enterprise Court proceedings, the parties must set out their case and the arguments relied on more fully.

Once a claim is filed, the parties will be expected to attend a case management conference, where the court will order tailored directions to trial. In the Patents Court, the directions will normally provide for:

  • disclosure (ie, discovery, which the Patents Court generally seeks to limit to that which is necessary to dispose of the case justly and proportionately);
  • experiments (if appropriate);
  • an exchange of facts and expert evidence; and
  • increasingly, the exchange of statements of case between the parties, setting out their respective positions on the issues in dispute.

In the IP Enterprise Court, the availability of, and the ability to rely on, experimental evidence and expert and fact witness cross-examination is more limited, and the directions provide a correspondingly shorter timetable of no more than one to two days.

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

The UK courts take a proactive approach to case management and it is difficult for a party to delay proceedings without good reason. Parties may make submissions as to the directions and timing of the trial at the case management conference (or in subsequent applications), but unless there are exceptional circumstances, the court is unlikely to depart from normal practice. 

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

Revocation proceedings can be brought before the IP Enterprise Court or the Patents Court at any time and by anyone. There is no need to demonstrate standing in order to commence an action. Revocation proceedings are often met by a counterclaim for infringement by the patentee. Likewise, revocation proceedings may be brought as a counterclaim to infringement proceedings initiated by a patentee. 

At trial
What level of expertise can a patent owner expect from the courts?

The IP Enterprise Court and Patents Court are overseen by specialist IP judges who have a high level of technical and patent expertise. 

Are cases decided by one judge, a panel of judges or a jury?

IP Enterprise Court and Patents Court cases are decided by one judge and no jury. Cases may be appealed to the Court of Appeal, where three judges will decide the case (usually led by a specialist IP judge). 

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

There are no juries for patent trials in the United Kingdom.  

What role can and do expert witnesses play in proceedings?

Experts play a significant role in Patents Court proceedings. The parties will normally appoint one or two independent experts each, who will provide written evidence to the court and be made available for cross-examination at trial. Often, most of the evidence in a patent trial is in the form of expert opinions. The role of expert evidence in IP Enterprise Court proceedings is more limited in scope and confined to key issues determined in advance by the court.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

There is no doctrine of equivalents in the United Kingdom. However, the courts adopt a purposive rather than a literal approach to claim construction. 

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

Preliminary injunctions are available in the United Kingdom. The award of a preliminary injunction is at the court’s discretion, taking into account a number of principles, including whether:

  • there is a serious issue to be tried; and
  • granting or withholding an injunction is more or less likely to cause irremediable harm and to which party. 

In recent years preliminary injunctions have been awarded readily against generic pharmaceuticals that have been launched without first attempting to ‘clear the way’ of relevant third-party patents.

Where a patentee obtains a preliminary injunction, it will normally be expected to provide a cross-undertaking in damages, to compensate the counterparty for any loss suffered should it emerge that the injunction should not have been granted (ie, because the patent is later held to be invalid or not infringed at trial).   

How are issues around infringement and validity treated in your jurisdiction?

Where there are both infringement and revocation proceedings in relation to the same patent, the courts will normally hear them together as part of the same action.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

The courts will consider decisions from other jurisdictions – particularly where they relate to similar legal principles or the application of issues of European law. In particular, the courts will consider settled case law of the Technical Boards of Appeal of the European Patent Office.

Damages and remedies
Can the successful party obtain costs from the losing party?

The losing party normally must pay the successful party a significant proportion of its costs, which will be determined on an issue-by-issue basis.

What are the typical remedies granted to a successful plaintiff?

A successful claimant is typically granted a final injunction, damages, an order for destruction or delivery of the infringing goods and declarations of infringement and validity. 

How are damages awards calculated? Are punitive damages available?

A successful claimant may choose between:

  • damages (to compensate it for any loss it may have suffered as a result of the infringement); and
  • an account of profits (to recover any profits made by the defendant as a result of its infringement). 

There is no concept of punitive damages for patent infringement in UK patent law. The appropriate level of damages is often determined by considering the level of royalty that would have been paid by a willing licensee in comparable circumstances.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

In normal circumstances, the courts will grant permanent injunctions to successful claimants as a matter of course. However, injunctions are often stayed pending the outcome of appeals. 

Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?

The Patents Court seeks to bring cases to trial quickly – where possible, within 12 months of the claim being issued. Expedition is possible where the court considers it warranted. 

How much should a litigant plan to pay to take a case through to a first-instance decision?

A litigant before the Patents Court should expect to pay at least £500,000, and often considerably more where the issues are more complex. Single patent actions involving issues of infringement and revocation typically exceed £1 million in legal fees. If successful, a significant proportion of these fees can be recovered from the other side. However, if unsuccessful, the litigant will likely be ordered to compensate the other party for a significant proportion of its legal fees. Litigants before the IP Enterprise Court should expect to pay considerably less and costs awards are normally capped at £50,000.

Appeal
Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

Appeals can be made against IP Enterprise Court and Patents Court decisions in relation to issues of law. Permission to appeal must be sought from the first-instance judge or from the court to which the appeal is addressed (for IP Enterprise Court appeals, either the Patents Court or the Court of Appeal; and for Patents Court appeals, the Court of Appeal). The Court of Appeal aims to hear cases within 12 months and may expedite a hearing in appropriate circumstances.

Options away from court
Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

Parties are generally free (and indeed encouraged) to seek alternative means of dispute resolution, such as mediation or arbitration. In the United Kingdom, there is legislation formalising the procedure and enforceability of arbitration proceedings. However, alternative dispute resolution may not be suitable where substantive issues of patent law are likely to arise.