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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 (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.

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 for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit.

Grace period

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

The United Kingdom provides a six-month grace period in very limited circumstances where information is disclosed:

  • that was obtained unlawfully or in breach of confidence; or
  • by the inventor at an international exhibition.

Oppositions

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

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

How can patent office decisions be appealed in your jurisdiction?

UK 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 from application 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 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.

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