Comparative Guides
Welcome to Mondaq Comparative Guides - your comparative global Q&A guide.
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Results: 4 Answers
Patents
3.
Obtaining a patent
3.1
Which governing body controls the registration procedure?
 
UK
First, an application can be made to the UK IP Office (UK IPO). Under this route, examiners from the UK IPO will examine the patent application and decide whether the patent should be granted.

Second, an application can be made to the European Patent Office (EPO), designating the United Kingdom as one of the member states for which protection is sought. Under this route, examiners from the EPO will examine the patent application and decide whether the patent should be granted. If granted, the patent will have the same effect as a UK patent granted by the UK IPO and responsibility for it will be passed to the UK IPO.

In either case, patent applications can be filed as part of an international application under the Patent Cooperation Treaty.

For more information about this answer please contact: Sarah McFarlane from Powell Gilbert
3.2
What is the cost of registration?
 
UK
The fees payable to the UK IPO up to and including the grant of a UK patent are around £300. If the application is made to the EPO (most likely covering the United Kingdom and other jurisdictions), the fees payable up to and including the grant of a European patent are approximately €6,000.

If a patent attorney is engaged to prepare the patent application on the applicant’s behalf, the total fees are likely to be approximately £3,000 to £6,000, depending on complexity.

Once granted, annual renewal fees are payable to the UK IPO, which currently amount to approximately £5,000 over the lifetime of the patent.

For more information about this answer please contact: Sarah McFarlane from Powell Gilbert
3.3
What are the grounds to reject a patent application?
 
UK
Sections 1(1) to 1(4) of the Patents Act 1977 set out the requirements of patentability in the United Kingdom, which are based upon and are intended to have the same effect as corresponding provisions in Articles 52 to 57 of the European Patent Convention (EPC). In summary, the invention must:

  • be new;
  • involve an inventive step;
  • be capable of industrial application; and
  • not be excluded subject matter.

In addition, a patent application must disclose the invention in a manner which is sufficiently clear and complete for the invention to be performed by a person skilled in the art. The claims must:

  • define the matter for which the applicant seeks protection;
  • be clear and concise;
  • be supported by the description; and
  • relate to one invention or to a group of inventions which are so linked as to form a single inventive concept.

Patent applications not meeting these requirements will be rejected by the UK IPO. In addition, the applicant must follow the procedural rules set by the UK IPO (eg, the form of the patent application and the fee payable).

There are analogous provisions in the EPC for applications made to the EPO.

For more information about this answer please contact: Sarah McFarlane from Powell Gilbert
3.4
What programmes or initiatives are available to accelerate or fast track examination of patent applications?
 
UK
The UK IPO has three types of accelerated service for fast tracking patent applications:

  • combined search and examination;
  • accelerated search and/or examination; and
  • accelerated publication.

Combined search and examination is available on request. The examination process is started at the same time as the search and a combined search and examination report will be issued. No reasons are needed for wanting to use this service and usually the search and examination report is produced within six months of the request.

Accelerated search and/or examination allows a patent applicant to request that its search and/or examination (or combined search and examination) be completed more quickly than normal. This is not available as of right – the applicant must demonstrate to the UK IPO either why it is important for these steps to be accelerated or that the invention relates to a ‘green’ technology.

Accelerated publication is available as of right and will result in the patent application being published approximately six weeks from the date on which the request is received, provided that the search has been conducted and the necessary formal requirements have been met (as opposed to 18 months for normal applications from their filing or priority date).

It is also possible to request accelerated prosecution of European patent applications at the EPO.

For more information about this answer please contact: Sarah McFarlane from Powell Gilbert
3.5
Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?
 
UK
Patents cannot be granted by the UK IPO or the EPO for inventions consisting of methods of treatment of the human or animal body by surgery or therapy, or methods of diagnosis practised on the human or animal body. However, patents can be granted for inventions consisting of a substance or composition for use in any such method. The reason for this is one of public policy: namely, that medical and veterinary professionals should be free to perform diagnoses and give treatment without fear of being held liable for patent infringement.

There are also restrictions in the UK IPO and the EPO in relation to biotechnological inventions. For example, patents cannot be granted for processes for cloning human beings, processes for modifying the germ line genetic identity of human beings or uses of human embryos for industrial or commercial purposes.

For more information about this answer please contact: Sarah McFarlane from Powell Gilbert
3.6
Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?
 
UK
Supplementary protection certificates (SPCs) are available for medicinal products and plant protection products. The purpose of an SPC is to compensate the patent owner where the term of the patent monopoly has been significantly eroded due to the time taken for the grant of marketing authorisation. The SPC takes effect upon expiry of the ‘basic’ patent and covers the product for up to an additional five years.

In addition, a six-month extension to the duration of an SPC for a medicinal product is available when certain requirements are satisfied. The purpose of this is to incentivise the industry to investigate and develop medicines for children.

For more information about this answer please contact: Sarah McFarlane from Powell Gilbert
3.7
What subject matter is patent eligible?
 
UK
In addition to being in respect of an invention that is new, involves an inventive step and is capable of industrial application, the invention must not fall within certain categories of technology which are not deemed patentable.

The following (among other things) are considered not to be inventions (to the extent that a patent or application relates to these things as such):

  • discoveries, scientific theories or mathematical methods;
  • literary, dramatic, musical or artistic works, or any other aesthetic creations;
  • schemes, rules or methods for performing mental acts, playing games or doing business;
  • computer programs; and
  • the presentation of information.

In addition, patents may not be granted for the following inventions:

  • inventions whose commercial exploitation would be 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, not including inventions consisting of a substance of composition for use in any such method; and
  • inventions that are not patentable under the Biotechnology Directive.
For more information about this answer please contact: Sarah McFarlane from Powell Gilbert
3.8
If the patent office does not grant a patent, is an appeal available and to whom?
 
UK
If the comptroller of patents at the UK IPO rejects the patent application, the patent applicant can appeal this decision to the Patents Court.

If the examining division of the EPO rejects the patent application, the patent applicant may file an appeal with the EPO. This may be allowed by the examining division; but if not, it will then be considered by the Boards of Appeal.

For more information about this answer please contact: Sarah McFarlane from Powell Gilbert