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Intellectual property

 

Patents

This section contains:

Introduction

History

Government initiatives

Patents in UK

Patent legislation

Criteria for grant of patent

Term and renewal

Application procedure

Inventor and owner

Employee inventions

International

Introduction

The basic purpose of the patent system is to encourage innovation and the improvement of industrial techniques. In return for the disclosure of his invention, the inventor is given a form of monopoly in the use of it for a period of 20 years after which time it passes into the public domain.

The obtaining of a patent is not the only way to protect a new invention. The inventor may instead choose to keep the details secret and disclose it to others only under the terms of a confidentiality or non-disclosure agreement (see Confidential information and knowhow).

Not all technical developments are patentable. ‘Tricks of the trade’, detailed process specifications and modes of operation which do not involve an inventive step7 may, therefore, be unpatentable, although they are capable of protection as trade secrets or know-how. Discoveries, scientific theories and mathematical methods are not patentable. Products whose novelty resides in the design and not in the function are not patentable but may be protected either as a registered or unregistered design or by means of copyright.

To obtain protection of patent rights outside the United Kingdom, an application must normally be made to the national offices in the individual countries. Protection can be obtained throughout Europe by application to the European Patent Office under the European Patent Convention and may be facilitated in many other countries through the Patent Co-operation Treaty.

History

Patents giving monopolies for new inventions were first granted in England by Elizabeth I to encourage the establishment of new industries within the realm. The power to grant such monopolies was abused by the Stuarts and in 1623 Parliament secured the passing of the Statute of Monopolie1623 (part of which is still in force) which restricted monopolies already granted and prohibited the granting of new monopolies, except to the true and first inventors of a manner of new manufacture, which others at the time of the grant were not using.

Modern patent legislation dates from the establishment of the Patent Office in 1853 and the Patents, Designs and Trade Marks Act 1883. This Act established the practice of examination by the Patent Office of the patent specification before grant. The official search through prior specifications to establish novelty dates from the Patents and Designs Act 1907. The Patents Act 1949 was a major recasting of the statutory provisions. The next major revision was the Patents Act 1977 which has been amended by the Copyright, Designs and Patents Act 1988 and the Patents Act 2004 among other measures.

Government initiatives

The Technology Strategy Board was established in October 2004 to advise the government on business research, technology and innovation priorities for the United Kingdom, the allocation of funding across priorities and the most appropriate ways to support them. In 2007 the Technology Strategy Board was recast as a non-departmental public body. It is sponsored and funded by the Department for Business, Innovation and Skills (BIS).

The Technology Strategy Board is responsible for a wide range of innovation programmes and mechanisms including Knowledge Transfer Partnerships, Knowledge Transfer Networks, Collaborative Research and Development, Smart (formerly Grant for Research and Development), Innovation Vouchers and the new network of Catapult centres. It also champions SBRI, the Small Business Research Initiative.

Patents in the UK

The UK Intellectual Property Office (IPO) has extensive information on the system for granting patents to protect inventions including details on the application process and information on applying for patent protection in Europe and internationally.

The patenting of inventions in the UK is covered by legislation and procedures similar to those of most other developed countries. UK law is harmonised with that of other European countries and takes into account the terms of the various international conventions to which the UK subscribes.

It is also possible to get patent protection in the UK via an application at the European Patent Office (EPO), or following the filing of an international application, under the Patent Cooperation Treaty.

The process of researching the ‘prior art’, defining the ‘claims’ and submitting an application for a patent involve specialist skills and in practice in most cases an inventor or other applicant for a patent should instruct a specialist professional such as a patent attorney who is a member of the Chartered Institute of Patent Attorneys.

Patent legislation

The principal legislation is the Patents Act 1977 (PA 1977) as amended which incorporates terms dealing with the effects of the European Patent Convention 1973 (EPO) (EPC) and the Patent Co-operation Treaty (WIPO) (PCT) (see below).

The principal statutory instrument is the Patents Rules 2007, SI 2007/3291.

The IPO is the government agency responsible for the patent system and for the promotion of patent and other intellectual property law and policy. The practical application of patent law is subject tointerpretation by the IPO and UK courts. The UK’s membership of the EPC means that decisions of the Boards of Appeal of the European Patent Office may also have an impact.

Criteria for an invention to qualify for grant of a patent

To be patentable, an invention must [PA 1977, s 1]:

* be new;

* involve an inventive step;

* be capable of industrial application;

* not be in an excluded category.

Novelty

An invention is new if it does not form part of the state of the art as of its earliest effective filing date. The state of the art includes anything made available to the public in any form, typically known as 'prior art' [PA 1977, s 2].

An application must be filed before disclosing the invention in any public or non-confidential manner. The invention is not new if prior to the application date there has been any non-confidential:

* disclosure (including by the applicant or inventor);

* publication;

* display, or

* use of an invention.

A valid application may be filed after such a disclosure only in a few very specific circumstances, such as breach of an obligation of confidentiality.

Inventive step

An inventive step is not obvious to a person of ordinary skill in the art, in the light of what is known from the state of the art. Either of the terms 'involving an inventive step' and 'unobvious' are used. Lack of inventive step is probably the most common reason for refusal of a patent application [PA 1977, s 3].

The person of ordinary skill in the art ('the skilled person') is:

* a hypothetical person;

* involved in the field of the invention, and

* assumed to be aware of all the prior art in this field, but

* incapable of invention.

Distinguish novelty and inventive step

The distinction between novelty and inventive step must be clearly made when considering the validity of a patent. Novelty is an absolute consideration. If the claimed invention can be found in the prior art, it is not novel.

Inventive step is a relative consideration that arises when there is a difference between the claimed invention and the closest prior art. If the difference would not have been obvious to the skilled person at the filing date of the application, the invention will involve an inventive step.

Industrial application

An invention will have industrial application if it can be used in any form of industry, including agriculture [(PA 1977, s 4]. There are two main areas in which this provision is used to reject patent applications, ie inventions that appear contrary to established physical laws, such as perpetual motion machines, and in biotechnology inventions where there is no specific use of the claimed invention beyond a general potential utility in the field of biotechnology research.

Specific exclusions from patentability

Patents cannot be granted for [PA 1977, s 1(2)–(4A)]:

* discoveries, scientific theories, mathematical methods;

* literary, dramatic, musical or artistic works, aesthetic creations;

* schemes, rules or methods for:

- mental acts;

- playing games;

- doing business;

- programs for computers;

- presentation of information;

- inventions contrary to public policy or morality;

- methods of treatment of the human or animal body by surgery or therapy, or

- methods of diagnosis practised on the human or animal body.

The mere involvement of one or other of these in an invention does not necessarily mean that a patent cannot be granted. The whole of the claimed invention must be considered. An invention falling wholly within one or other of these classes cannot be made patentable by mere cosmetic changes to the manner in which it is claimed.

In the case of programs for computers, the full context of the software in the scope of the invention must be considered to determine whether or not the invention is patentable.

What’s new items on this topic[go to What’s new? page or archive for more details]:

14/11/2014: Computer application not eligible for patent protection
Lantana Ltd v Comptroller General of Patents, Design and Trade Marks
[2014] EWCA Civ 1463 Hearing Date: 13 November 2014
Court of Appeal, Civil Division

Lantana Ltd (the applicant) invented a computer application invention relating to the retrieval of data from a remote computer to a local computer using email. The applicant applied for a patent for the invention.

Term and renewal of a patent

Basic term

 

The basic term of a UK patent is 20 years from its filing date. Where it is based on a European patent application, or an international patent application filed under the PCT, the term is calculated from the filing date of the application on which it is based [PA 1977, s 25(1)].

Supplementary protection certificate

Protection for pharmaceuticals patents can be extended by up to an additional five years by a supplementary protection certificate (SPC). SPCs are intended to compensate for the long time obtaining regulatory approval to market pharmaceutical products.

A patentee can apply for an SPC when the first marketing authorisation has been granted. The duration of the SPC is the difference between the filing date of the patent and the date of the first authorisation, less five years. The maximum duration is five years [PA 1977, s 128B, Sch 4A].

Renewal and restoration

Annual renewal fees must be paid for granted patents starting in the fifth year following the filing date. There are no renewal fees for pending applications. If the renewal fee is not paid the patent will expire. A renewal fee can be paid late within six months, with payment of a surcharge [PA 1977, ss 25(3), 25(4)].

Restoration: restoration of a patent is possible within 19 months of the missed renewal date if the patentee can show that it intended to pay the fee and the failure to pay was beyond the patentee’s control [PA 1977, s 28].

 

Application procedure

Any person can make an application, either alone or jointly [PA 1977, ss 7, 36].

Formal requirements

A written application document is filed with the IPO, setting out the scope of protection sought and describing at least one detailed embodiment of the invention.

Every patent application must contain:

* a request that a patent be granted;

* an identification of an earlier invention if the benefit of the filing of the earlier invention is claimed;

* a description of the invention, including drawings where appropriate, in sufficient detail to allow a person to perform the invention;

* one or more claims setting out the scope of protection sought;

* an abstract for information purposes;

* identification of the inventor

* if the applicant is not the inventor, the applicant’s derivation of the right to the patent.

The minimum requirements to obtain a filing date are:

* a description;

* an identification of the applicant;

* a request for the patent to be granted.

It is not necessary that these are all provided on filing. All other requirements can be completed after filing. All except the derivation of the right to the patent must usually be provided within 12 months after the filing date.

[PA, ss.13–15 and Patents Form 1]

Claims

The claims define the scope of legal protection. They must set out all of the minimum essential features of the invention. Claims are usually in the form of a set of multiple claims with one or more main claims, and a series of dependent claims which progressively add more features to the main claim (therefore limiting its scope) which provide fallback positions in case the main claim is invalidated.

Application fee

No official fee must be paid to obtain a filing date. An application fee of £30 must be paid within 12 months in order that examination of formal requirements can take place.

Preliminary examination

The application is subjected to examination on formal requirements and patentability, and the applicant is given the opportunity to correct deficiencies and/or argue against objections raised.

The IPO will advise the applicant of any deficiencies in writing and set a time period by which they must be rectified. Failure to deal with the deficiencies will lead to refusal of the application [PA 1977, s 15(A) and Patents Form 9A].

The applicant must request an official prior art search and pay the official fee of £100 within 12 months from the filing date [PA 1977, s 17].

If the application fee has not been paid, it can be done with the request for the search. Search results are typically available within six months, although the IPO may deal with a search request urgently if reasons to do so are submitted in writing. The search is conducted on the basis of the claims on file at the IPO. Therefore, it is necessary to file claims before requesting a search.

The IPO examiner will issue a written search report identifying the relevant prior art (usually published patent documents), the parts of the prior art considered to have relevant disclosure, and the claims to which this relates.

Publication

The application and the search report will be published 18 months from the filing date, for information purposes only. It does not give any enforceable patent rights. Publication can only be prevented by withdrawing the application. If the application is to proceed, it must be published [PA 1977, s 16].

Substantive examination

Following the official search, the application is subjected to substantive examination as to its patentability. A request for substantive examination and payment of the official fee of £70 must be made no later than six months following publication of the application.

The IPO examiner will issue one or more examination reports either allowing the application or setting out objections and giving a period for reply. The applicant can amend the application and/or argue against any objections. Amendments cannot introduce new subject matter into the application. This continues until the examiner indicates that a patent can be granted or that refusal is intended. In the latter case, the applicant is invited to attend a hearing at which the points can be argued and a final decision issued.

[PA 1977, s 18 and Patents form 10]

Appeal

Adverse decisions of the IPO can be appealed to the Patents Court, with subsequent appeal to the Court of Appeal and House of Lords.

Inventors and owners

The inventor is the person responsible for the concept covered in the claims of the application.

Where more than one person was responsible, the invention is a joint invention with more than one inventor. The invention is equally shared and not divisible [PA 1977, s 7(3)].

Irrespective of who makes the application, the inventor is, prima facie, entitled to the grant of the patent (Yeda Research and Development Co Ltd v Rhône-Poulenc Rorer International Holdings Inc and another [2008] 1 All ER 425 ).

The only ways in which someone other than the inventor can be validly entitled to the patent are:

* by transfer of the right from the inventor;

* if the invention was made by an employee;

* by inheritance following death of the inventor.

Employee inventions

Where an employee makes an invention, the employer can be automatically entitled to its benefit without any further action. Not all employee inventions are automatically the property of the employer. To belong to the employer [PA 1977, ss 39–42 and LIFFE Administration and Management v Pinkava and another [2007] 4 All ER 981]:

* the invention must have been made in the course of employment;

* have been a foreseeable part of the normal duties of the employee;

* part of specific duties assigned to the employee or the inventor must have had a special obligation to further the interests of the employer.

The inventor must have been an employee at the time of making the invention. An employer cannot claim the benefit of an employee’s inventions made prior to or subsequent to employment.

If the criteria under PA 1977, s 40 are made out such that:

* the employee made the invention which is the subject of the patent;

* the invention and/or patent is of outstanding benefit to the employer, and

* it would be just in the circumstances to make an award of compensation

The amount of compensation will be assessed taking account of all the available evidence, to achieve a just and fair reward to the employee, which is not merely compensation for loss or damage, nor so much as might be due to an external patentee or licensor (Kelly and another v GE Healthcare Ltd [2009] All ER (D) 114 (Feb) and Shanks v Unilever plc [2009] All ER (D) 44 (Dec)).

The assessment of compensation under PA 1977, s 41 should be by reference to the bargain which would be made by a 'generic assignee' in the relevant market, and not by an unconnected purchaser with the characteristics of the actual exploiter of the IP.

For the employer, the effect cannot be reduced by inventive drafting as PA 1977, s 42 makes unenforceable any term in a contract which diminishes the employee's rights in the invention.

International patents

EU patents and patent protection in Europe

The grant of a patent in the UK will not protect the invention elsewhere in Europe.

In some cases, the inventor must request permission to apply for a patent abroad if the application contains information about military technology, or could harm national security or public safety.

European Patent Convention

To protect the invention patent in more than 30 countries in Europe, an application may be made under the European Patent Convention (EPC). An application may be made through the UK IPO or the European Patent Office (EPO) External Link, but the EPO will process all the applications. This is processed as a single application, but once granted it becomes separate patents in the countries designated in the application.

Protection in individual countries in Europe may be obtained by applying to the national office of each country. This may be advisable if protection is required in a limited number of countries.

Priority from an existing patent application may be obtained if application is made abroad within 12 months of the original application. The later application will be treated as if applied for on the same date as the original application.

Patents Co-operation Treaty

Protection in Europe using the Patents Co-operation Treaty (PCT) may also be obtained through the World Intellectual Property Organisation (WIPO) (see below).

EU Unitary patent protection and the Unified Patent Court

http://ec.europa.eu/internal_market/indprop/patent/index_en.htm

‘Classical’ European patents are granted by the European Patent Office (EPO) on the basis of a single application. Yet after grant, each European patents is in fact a bundle of national patents which need to be separately validated in each state.

Unitary patent protection in the EU

In 2012 Member States and the European Parliament agreed on the ‘patent package’– a legislative initiative consisting of two Regulations and an international Agreement, laying grounds for the creation of unitary patent protection in the EU. The patent package implements enhanced cooperation between 25 Member States (all Member States except Italy and Spain). Following the adoption of the two Regulations in December 2012, the contracting Member States will proceed with the signature and ratification of the Agreement on a Unified Patent Court – the third and last component of the “patent package” setting up a single and specialised patent jurisdiction. Once the Agreement and the Regulations enter into force, it will be possible to obtain a European patent with unitary effect – a legal title ensuring uniform protection for an invention across 25 Member States on a one-stop shop basis, providing cost advantages and reducing administrative burdens

The Agreement on a Unified Patent Court will be an international agreement between Member States. Its aim is to set up a single Court common to the Member States with exclusive jurisdiction (in particular for infringement and validity actions) for both the “classical” European patents and the European patents with unitary effect. The text was politically agreed by the participating Member States on 10 December 2012. The agreement will enter into force upon ratification by 13 Member States, including the 3 Member States with the highest number of European patents.

Official texts

* Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection

* Council regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements.

[Page updated: 25/11/2014]

 

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