How patents work; the 10 stages of getting a U.K. patent

The patent system has a bit of a reputation for being opaque, perhaps even deliberately so (to keep us patent attorneys in work!). Although the substantive law can be very complex, the process of getting a patent granted in the U.K. is pretty straightforward. These are the main stages.

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Pre-filing

Stage 1 – searching

The process really starts well before a patent application is filed. It is important to confirm that the invention is still a secret i.e. that any disclosure to third parties was confidential. It’s also useful to consider a pre-filing search. If the inventor is working in a field in which he or she is unfamiliar, a private search can flag up any previously published information (“prior art”) which may show that the invention is either not new or not inventive, and save the inventor wasting his or her hard-earned cash on a patent application which is destined to fail.

Stage 2 – drafting

Patent applications are tricky things to prepare. I won’t discuss the detail here, but the key objectives are to make sure that the invention is adequately described and claimed. In most cases, the patent application is the combination of technical expertise (from the inventor) and legal knowledge (from the patent attorney). Once a patent application is filed, no new information can be added to it. Therefore, it is vital to ensure that the invention is fully described and claimed, disclosing all possible variants.

The application process

Stage 3 – filing

Once the application is ready, it is filed at the UK Intellectual Property Office (i.e. the Patent Office). The application receives a number and a filing date (this date is very important). From this day onwards, the applicant is free to publish the invention without affecting the application.

It’s usual to file a request for a search and pay the search and application fees at this point. In some cases, where the applicant wants to expedite the process, a request for examination can also be filed and the examination fee paid.

Stage 4 – preliminary examination

The IPO check to make sure that the application is in the correct format, and that the forms have been properly completed.

Stage 5 – search

A few months after filing, the IPO will provide a search report. This can be viewed as a preliminary opinion of patentability. The objective is to find any prior art which shows that the invention may not be new or inventive. No response is required.

Stage 6 – international filing

We’ll cover this in another blog article, but the thing to remember is that applications outside the U.K. must be filed by the anniversary of the filing date (known as the “priority” or “convention” deadline).

Stage 7 – publication

The application is published no earlier than 18 months from filing. This sets a deadline of 6 months to request examination and pay the fee (if not already done).

Stage 8 – examination

Once examination has been requested, an examiner from the IPO will review the search results and either indicate that the application is ready for grant, or issue a report detailing any objections he or she may have to the patentability of the invention. The applicant is usually given 4 months to respond, in which the applicant will either (i) argue against the objections or (ii) amend the application to overcome them (for example by narrowing the claimed scope of protection).

There may be more than one round of examination, depending on the objections raised and the applicant’s willingness to accept the examiner’s arguments.

Stage 9 – grant

Once the examiner is happy, he or she will send the application for grant. This can take 3-4 years from filing! Once the patent is granted, the applicant has the ability to enforce it against infringers.

Post-grant

Stage 10 – renewal fees

The patent will last for 20 years from the filing date as long as renewals are paid each year (starting on the fourth anniversary of filing).

In conclusion, it’s a fairly straightforward process. The complexity comes in the substantive law (particularly inventive step) and when protection overseas is required. Vault IP are experts in this field, so please get in touch if you have any questions or run into problems getting your UK patent granted!