UK: Patents - Practice And Procedure

Last Updated: 9 July 2009
Article by Jacqueline Needle

Patents provide protection for inventions, and in particular provide a right to prevent third parties making, using, selling, or otherwise commercially exploiting the invention which is defined by the claims of the patent. New products, and articles which function in a new way are patentable, as are machines, methods, processes, compounds and compositions. However, the item to be patented has to be new and unobvious at the date of the application for the patent.

First Steps

An initial patent application is filed with a specification, which is intended as a document of record, to establish a priority date for the invention for which a patent is sought. The specification must, essentially, include a description of the invention and be accompanied by drawings. It is our recommendation to include claims, which define the scope of protection being sought by way of the patent, at the outset.

Any patent granted, in due course, in pursuance of the application will not be invalidated by a subsequent disclosure of the subject matter disclosed in the specification. Therefore, once the first application is on file, the applicant is free to take steps to commercialise the invention. This may involve manufacturing and selling goods, or otherwise making details of the invention public. In contrast, such steps taken before the application has been filed can result in the application being invalid.

The country in which the first application is filed is generally chosen in accordance with cost and convenience. A first application filed at the United Kingdom Intellectual Property Office (UKIPO) requires the payment only of low official fees and will also provide an early search from a UKIPO Examiner. Where it is particularly important for clients to obtain patent protection in the United States of America, it can be advantageous to make the first filing in the US.

It is a skilled job to draft a patent specification. It has to describe an invention in sufficient detail to enable someone skilled in the art to perform the invention. The claims, which have to be supported by the description, define the scope of the protection, and therefore need to be as broad as possible without covering prior art. As inventions are frequently protected in more than one country, it is also necessary to ensure that the final documents do not offend against the differing requirements of various countries.

We are skilled and experienced at drafting. In consultation with inventors, we will produce a patent specification for filing in the chosen jurisdiction which is sufficiently robust to withstand the citation of relevant prior art and is generally in accordance with requirements worldwide, despite regional differences.

The Priority Year

Within one year of making the initial application, a decision must be made as to the future of the first application, and as to where protection might be required.

Under various international agreements, a first patent application automatically provides a basis for claiming priority in practically all the countries in the world. This means that further applications in respect of the invention can effectively have the same date as the initial application provided that those further applications are filed within twelve months of the first application date. This twelve month priority period is not extensible.

Typically, an applicant filing in the UK in the first instance might choose to continue that UK case. However, within the priority year applications in countries outside the UK might be filed, to claim the UK priority date, and to provide protection for the invention in those other countries.

We often recommend that any subsequent patent applications be filed accompanied by a final specification which has been amended since the first application was filed. For example, the specification could include details of all improvements and modifications made to the invention since the first patent application was filed.

The Procedure For Applications In The UK

A request that the invention be searched, and the relevant official fee paid, must be filed within the first twelve month period from the filing of the first application. As indicated above, when the first filing is made at UKIPO, we often request search on filing. Thereafter an official search is carried out by the UKIPO to determine whether the invention is new and unobvious. The results are typically available within three months from the date on which the search request is filed.

At a date approximately eighteen months after the filing date of the first patent application in the UK, the final specification as filed is published by the Patent Office. A request for substantive examination has to be filed, and the relevant official fee paid, within six months of that publication. We determine with the applicant, at that time, whether to continue with the application having seen the result of the official search.

The next stage is that the specification is examined in detail by an examiner in UKIPO who will assess the novelty and inventiveness of the invention and will raise any relevant objections to the application. When all such objections have been overcome by negotiation with the examiner, the patent is granted and the specification is published in its final, accepted form

The maximum term of the patent is twenty years from the filing date of the final specification in the UK.

Annual renewal fees are payable to the UKIPO in respect of the fifth and subsequent years of the term. Non-payment of a renewal fee will result in the patent ceasing to be in force after the date on which the relevant fee was due.

Protection Overseas

There are three main routes for obtaining patent protection both in the UK and overseas. These are:

  • an individual national application in any country required,
  • a European application at the European Patent Office (EPO), and
  • an International application under the Patent Cooperation Treaty (PCT).

National Patent Application

Clearly, a national patent application can be filed at the respective national patent office of each country where protection is required.. Each patent office thereafter conducts its own processing of the application and, if the application succeeds, a national patent is granted.

There is, of course, an individual cost for filing each patent application, and this can be quite substantial if the specification has to be translated into the local language. There are also costs in each country for prosecuting the application. These prosecution costs, and the length of time from filing to grant, vary enormously from country to country and from application to application. In countries such as South Africa there are virtually no prosecution costs whereas in the more expensive countries, for example Japan or USA, both filing and prosecution costs can be substantial. In many countries there are additional fees upon grant.

European Patent Application

A single European patent application can be filed at the European Patent Office (EPO). The European patent application is prosecuted before the EPO and, if successful, results in the grant of a European patent which is subsequently registered in some or all of the originally designated countries. Currently there are 36 member countries of the European Patent Convention (EPC) which can be designated in a European patent application. These 36 countries include all 27 member countries of the EU and 7 others. Post grant registration is a mere formality and there is no further examination by the national patent offices.

On filing a European patent application, a search fee is payable to the EPO. Eventually, a search report is issued and then published. Six months after the publication of the search report, the examination fee and a flat designation fee has to be paid.

For European patent applications, maintenance fees must be paid to keep the application pending. There will also be attorney fees to pay during the prosecution of the application. Once the Examiner has indicated that the application can proceed to grant, grant formalities have to be completed at the EPO. The applicant then registers the patent in a selection of the originally designated countries. There is no requirement to register in all those countries initially designated; a selection can be made at the end of the prosecution. National renewal fees will then become payable in each country in which the European patent is validated in order to maintain the national patents in force.

There is likely to be a cost saving in following the European route rather than the national route where protection is required in three or more countries However, the EPO are particularly slow in dealing with applications, and are "raising the bar" to prevent grant of increasing numbers of applications. The European system also provides post grant opposition, enabling competitors to seek to revoke the patent for all countries.

International Patent Application

A single International patent application under the Patent Cooperation Treaty (PCT) can be filed to potentially provide protection in any of 141 countries.

The International application is subjected to a search, and the search

report is issued about four to six months after filing. There is also an opinion issued as to the patentability of the invention.

Within a term which is generally 30 months from the earliest priority date, it is necessary to convert the International application into national and regional patent applications at the local patent offices concerned.

There are two major advantages of the PCT. First, the result of the search of the International application is available before a decision has to be made concerning the filing at the national or regional patent offices. If an unfavourable search report is received, then the cost of these filings can be avoided. The second advantage is that the costs involved in making the national or regional filings are deferred for eighteen months. The system also provides a means to keep open the option of filing the application in countries for which no final decision has yet been made as to whether to seek patent protection.

We determine, with our clients, the best route to choose to obtain patent protection, taking into account the nature of the invention and the clients' commercial needs.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Jacqueline Needle
In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions