Scope and ownership of patents

Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Patents covering the UK can be obtained either through the UK IP Office or by filing an application with the European Patent Office (EPO) for a European patent designating the UK.

To be a ‘patentable invention’, an invention must relate to patentable subject matter, be new, involve an inventive step and be capable of industrial application.

The following are excluded from patentability:

  • discoveries, scientific theories or mathematical methods;
  • literary, dramatic, musical or artistic works (which are covered by copyright);
  • schemes, rules or methods for performing mental acts, playing games or doing business;
  • computer programs as such;
  • the 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.

 

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.

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.

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.

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

Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

Parties have freedom of contract to determine patent ownership.

Ordinarily a company will own the inventions made by its employees in the normal course of their employment, or in circumstances where the invention might reasonably have been expected to result from carrying out their duties, or where the employee has a special obligation to further the interest of the employer.

Where there are multiple inventors the patent will be jointly owned.

Patent ownership is recorded in the patent register. Ownership can be transferred only in writing, signed by, or on behalf of, the transferor.

Patent office proceedings

Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

It normally takes three to four years from application for a UK patent to be granted. 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.

Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

It is possible to shorten some of the stages in the prosecution of patent applications by requesting accelerated prosecution. For patent owners that want their applications to be progressed quickly, the UK IP Office has a range of provisions available. Requests may be made for accelerated search and examination procedures. Acceleration is also available specifically for patent applications involving green technologies. No fees are payable when requesting accelerated prosecution.

Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

The invention must be disclosed in a manner that is sufficient for it to be carried out by a person skilled in the relevant art. The claims should define the matter for which protection is sought, and are required to be clear, concise and supported by the description.

Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

This is not generally required although the UK IP Office often requests that a patent owner give it a copy of the official search reports prepared by other patent offices considering the patent.

Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

It is possible to file divisional applications that claim inventions disclosed in the earlier filed application. A divisional application of a European patent designating the UK must be filed before the grant of the parent patent. A divisional application of a UK patent must be filed before the grant of the parent and three months before the end of the ‘compliance period’ of the parent. The compliance period ends four-and-a-half years after the date of filing or earliest priority document, or one year after the date of the first examination report

Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

UK IP Office decisions can be appealed to the Patents Court. 

European Patent Office (EPO) opposition decisions can only be appealed to the EPO Technical Board of Appeal.

Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

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

Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

The applicant with the earliest priority date will be granted the patent (it is a ‘first-to-file system’).

Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

It is possible to request an opinion from the UK IP Office on the validity or infringement of a patent in a written procedure. The opinion is not binding and the UK IP Office cannot award damages or revoke a patent that it considers to be invalid under this procedure.

The validity of a patent may be challenged in revocation proceedings before the UK IP Office or in court proceedings.

The UK IP Office or the court may amend the claims of a patent, on the application of the patent owner, during the course of revocation proceedings.

Patent duration

How is the duration of patent protection determined?

Patents are valid for 20 years from the filing date.

Supplementary protection certificates (SPCs) are available where a pharmaceutical product covered by the claims of the patent has been put onto the market. They are intended to compensate the patent owner for part of the patent term ‘lost’ during the approval process. An SPC has the effect of extending the patent owner’s monopoly over the pharmaceutical product by up to five years.

Law stated date

Correct on

Give the date on which the information above is accurate.

29 April 2020.