Scope and ownership of patentsTypes of protectable inventions
Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?
A patent for the UK can be obtained by two routes: either directly by filing at the UK Intellectual Property Office (UKIPO) or via a European patent application that designates the UK. A patent may be obtained for any invention that is new, involves an inventive step, and is capable of industrial application, except the following are not considered to be inventions to the extent the patent application relates to these things as such:
- a discovery, scientific theory or mathematical method;
- a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
- a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
- the presentation of information;
- methods of treatment or surgery for, or methods of diagnosis practised on, the human or animal body
- the mere discovery of a gene sequence, unless the industrial application of that sequence is disclosed;
- the human body or one of its elements; processes for cloning human beings or modifying their germ line; the use of human embryos for industrial or commercial purposes; processes for modifying the genetic identity of animals where this is likely to cause suffering without substantial medical benefit; and this
- animal or plant varieties, or any essentially biological process for their production; and
- inventions whose commercial exploitation would be contrary to public policy or morality.
Computer programs and business methods as such cannot be patented, but if a computer-implemented invention involves a technical contribution (applying the UKIPO’s test) or technical effect (applying the European Patent Office (EPO) test) that goes beyond mere computer automation, then the invention may be patentable. Since a vast number of technical problems are solved using computer software, a correspondingly vast number of computer-implemented inventions are patentable at the UKIPO and at the EPO. However, software that has a business purpose – eg, marketing or advertising and financial applications – and text processing software is considered not to make a technical contribution or produce a technical effect and are not patentable. It therefore remains difficult in Europe to protect, for example ‘fintech’, software except where a technical problem (such as a security enhancement) has been solved in the implementation. The EPO has confirmed that computer simulation, which can be used to solve technical problems, can provide the technical effect required for patent protection and will be assessed in the same way as other computer-implemented inventions (confirmed by EPO Enlarged Board of Appeal decision G1/19 in 2021 – se para 41), and this is consistent with UK case law (the use of simulation in the design of improved drill bits was confirmed to be patentable in 2012). The UKIPO and the EPO are both granting some patents for inventions using AI technologies, with both patent offices planning to consult further on AI patenting in 2021. The EPO’s current guidance for users (as of 1 March 2021) is that claims directed to computer-implemented algorithms should be functionally limited to a specific technical purpose or, if the algorithm design is specifically adapted to the system on which it will run, the claims should be limited to that specific technical implementation.
With respect to medical methods – for example, treatments, diagnosis or surgery – it is possible to patent the use of substances or compositions (eg, drugs, pharmaceutical formulations, etc) for use in such methods, using appropriate claim language.
Patents for inventions concerning human stem cells that are not derived from human embryos, such as induced pluripotent cells and adult stem cells, may be granted. Thus, stem cells derived from parthenogenesis may be patentable on the basis that, according to current scientific understanding, they do not have the inherent capacity of developing into human beings.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?
In the UK, an invention made by a company employee in the normal course of their employment will be owned by the company. In addition, where an employee – for example, a senior member such as a director – has a special obligation to further the interest of the company, any patent will be owned by the company. Aside from this, the patent is owned by the inventor, unless an agreement is made to the contrary. Parties are free to agree ownership between them. Thus, an independent contractor, or each party to a joint venture, may or may not own the patent, depending upon what is agreed between them.
Where there are multiple inventors, the patent will be jointly owned by them unless the employment considerations noted above apply.
Patent ownership is recorded in the UKIPO patent register. Ownership may be transferred by assignment, and this must be in writing, and at least be signed by, or on behalf of, the party making the assignment.
Patent office proceedingsPatenting timetable and costs
How long does it typically take, and how much does it typically cost, to obtain a patent?
In the UK, it typically takes between three and four years from filing to obtain a granted patent based on a first-filed UK application, although acceleration options are available and can sometimes achieve patent grant in less than two years. Without acceleration, UK filings under the Paris Convention or PCT national phase may take five years from UK filing before being granted; the UK Intellectual Property Office (UKIPO) is working to reduce this. The UKIPO requires that a patent must be in order for grant within four-and-a-half years from filing (or priority), unless examination by the UKIPO has been delayed. Drafting and filing costs, including official and attorney fees, are typically between about £3,500 to £7,000 depending on complexity. Prosecution costs through to grant typically add between about £2,500 to £5,000, again depending upon complexity.Expedited patent prosecution
Are there any procedures to expedite patent prosecution?
Yes, it is possible to accelerate at various stages of patent prosecution by requesting accelerated prosecution. No official fees are payable. There are three types of accelerated service at the UKIPO: combined search and examination, which causes an exam report to issue within the normal timeframe for a search; accelerated publication, which minimises the delay that is caused by grant being at least three months later than publication; and accelerated search or examination. The first two are available on request for UK first-filings, but accelerated search or examination generally requires a reason, for example, alleged infringement or to secure investment. In addition, if the invention relates to a ‘green’ technology, then accelerated search or examination will usually be available if requested via a UKIPO scheme known as the Green Channel. Where claims have been found to be allowable in the PCT phase, or by another intellectual property office, then acceleration is also available via the PCT (UK) Fast Track and the Patent Prosecution Highway (PPH). At the European Patent Office (EPO), acceleration is also available on request (via requesting entry into the EPO’s PACE programme) or via the PPH.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 typical skilled person or team working in that technical field, and the claims defining the invention must be clear and concise and supported by the description. The extent of disclosure required has varied depending upon the technology, but is starting to be more harmonised. In the chemical and life science area in particular, it is generally important to include a range of examples to support the invention across the scope of the claims (whereas one detailed example was often accepted for simple mechanical inventions). Any claimed utility, for example, treatment of a disease or medical condition, must be shown to be plausible. It is often useful to include comparative data with respect to the closest prior art, although this can also be supplied during prosecution. The EPO’s assessment of sufficiency has recently been more consistent between different technologies, and slightly stricter for electrical or mechanical and software inventions.Prior art disclosure obligations
Must an inventor disclose prior art to the patent office examiner?
There is no formal duty of disclosure at the UKIPO, so this is generally not required. During examination, the patent office examiner will frequently consult the search results produced by other intellectual property offices on corresponding applications, or may request the applicant to provide these.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?
Yes, it is possible to file one or more divisional applications with claims directed to inventions disclosed in an earlier application. In the UK, any divisional application must be filed before grant of the parent patent and three months before the end of the compliance period. The compliance period is set at four-and-a-half years after the earliest priority or filing date of the parent, or 12 months after the date of the first examination report on the parent. Any UK divisional application must be put in order for grant by the compliance period date, so it is advisable to file UK divisionals at an early stage. Divisional applications may also be filed out of European patents designating the UK. The European divisional must be filed before the date of grant of the parent case, but there is no time limit for putting the divisional European application in order for grant.Patent office appeals
Is it possible to appeal an adverse decision by the patent office in a court of law?
Yes, adverse decisions of the UKIPO may be appealed to the Patents Court, a division of the High Court of Justice. Adverse decisions against European patent applications or patents may only be appealed to the relevant board of appeal of the EPO.Oppositions or protests to patents
Does the patent office provide any mechanism for opposing the grant of a patent?
There is no formal opposition procedure in the UK for opposing a UK patent after grant. However, any person may file third-party observations during prosecution of an application, after its publication but before grant. Such observations may challenge the patentability of the invention based upon prior art found by the examiner, or may introduce further prior art. European patents (which may designate the UK) may be opposed after grant, up to nine months after the date of grant. Third-party observations may also be filed against European patents, both during prosecution of the application, or during any post-grant opposition or appeal proceedings, or both. However, the third- party does not become a party to any proceedings, so has no official standing unless they are also an opponent or appellant.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 UKIPO operates a first to file system, so the applicant with the earliest priority date will normally be entitled to be granted the patent. However, it is possible for a person other than the applicant to dispute ownership and bring entitlement proceedings before the UKIPO (which are usually then transferred to the Patents Court). This may occur because that person believes, and has evidence to show, they made the invention first and are entitled to be granted the patent in place of the applicant. European patent applications (which may designate the UK) also operate according to a first to file system, as in the UK.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 apply to the UKIPO to amend the specification of a patent after grant, although grant of any amendment is discretionary. Amendment of the patent claims may also be allowed by the UKIPO or the court during a lawsuit. European patents (which may designate the UK) may also be amended after grant under the central limitation procedure, upon application to the EPO. Any such amendments allowed by the EPO would apply to the UK part of the European patent.
There is no re-examination procedure before the UKIPO in respect of a granted UK patent. It is possible to request an opinion on the validity or infringement of a UK patent from the UKIPO, but any such opinion has no legal effect and does not lead to revocation of the patent, or an award of any remedy to the person requesting the opinion.
Revocation proceedings seeking to invalidate a patent may be brought by any person before the UKIPO or the court.Patent duration
How is the duration of patent protection determined?
The term of a patent is 20 years from the filing date, provided the patent is kept in force by payment of renewal fees. A UK patent expires at midnight on the day before the 20th anniversary of the filing date.
Supplementary protection certificates (SPCs) are available in respect of qualifying medicinal or veterinary products, and may provide an additional term of protection for the product of up to five years. This is to compensate the patentee for delays that may occur during the regulatory approval process, which may delay marketing of the product. Medicinal products may also be further protected by a paediatric extension, which extends the lifetime of an SPC by a further six months. To qualify for this further extension, a paediatric investigation plan (PIP) needs to be submitted.
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