Introduction to Patents

This guide was last updated 01 March 2023.

A patent is an agreement between you and the state that can prevent others from exploiting your invention for up to 20 years, subject to annual renewal. In exchange for this monopoly, the state discloses your idea. Details of a patent application are made public around 18 months after it is filed.

You should not publicly disclose your invention or use or sell your invention before a patent application has been filed, as this will almost certainly invalidate any patent eventually granted.

To be granted a patent an invention must be:

• new
• inventive (not obvious)
• have practical (industrial) application.

The cost to draft and file a patent in the UK can range from approximately £6,500 to £9,500 depending on complexity, technology and industry sector. It can take several weeks to prepare an application, and two to five years for a patent to be granted, again depending on complexity, technology and industry sector.

Timeframes and costs may differ considerably depending on variables such as the complexity of your invention, its industry sector and challengers from competitors.

We endeavour at all times to balance an understanding of the law, complex methodological and/or scientific issues and the budget constraints of a business. For an indication of costs for your specific situation please contact us for more information.

It is possible to request that your UK patent be granted more quickly. This request may be approved if, for example, your invention relates to a "green" technology, if you are concerned about a potential infringer, or if you are trying to secure investment.

We work with you to describe your invention in broad terms to define the scope of the monopoly you hope to obtain ("the claims") and to prepare a description of the practical form(s) of your invention, usually with the aid of drawings.

Once filed, the UKIPO examines your application to ensure all formalities have been met. It is also possible to pay a fee for the UKIPO to carry out a search to see whether the invention is indeed new. From the search results we can advise you on the likelihood of obtaining a patent and whether the application is worth pursuing.

If it looks likely that your invention may be patentable, then you will need to consider whether you wish to pursue patent protection only in the UK or whether you wish to also seek protection in other countries.

Once your first application for an invention is filed at the UKIPO or indeed at any patent office, it is given a "priority date".

You will need to decide whether you want to pursue patent protection in other countries within 12 months of the priority date.

Within the 12-month priority period it is possible to update your patent application to include any further developments, preferred features or extra information about the information. However, if the development has proceeded to such an extent that you have in effect a further invention or inventions, then fresh patent applications may need to be filed.

We can help you to pursue patent protection in any country you need. To get overseas protection, ultimately a separate patent application is needed for each country. However certain international conventions exist between countries which help to reduce the burden upon applicants, by providing a centralised patent application and/or patent granting procedure.

Three such conventions are the Patent Co-operation Treaty (PCT), administered by the International Bureau in Geneva, the European Patent Convention (EPC), administered by the European Patent Office (EPO) in primarily the Hague and in Munich and the Unified Patent Court (UPC) and unitary patent (UP), which are, respectively, patent court and European patent systems open to member states of the European Union (EU).

It is worthwhile to stress that the PCT, EPC and UPC systems are complementary rather than alternative systems. Which system you select will depend on which countries you need patent protection in.

The PCT provides a centralised filing system. It includes over 150 jurisdictions worldwide, of which the EPO is just one. Some of the advantages of the PCT are listed below.

• By filing one patent application, it is possible to simultaneously seek protection for an invention in each of a large number of countries throughout the world.
• A number of formalities can be complied with in a centralised manner when preparing the application, in accordance with the international standards effective under the PCT.
• Extra time is given (at least 8 months more, but frequently 18 months more, compared with not using the PCT) to investigate the commercial possibilities of the invention.
• You have the option to get (in addition to an "international search report") an "international preliminary examination report". This requires payment of both a preliminary examination fee and a handling fee, and provides information about the patentability of the invention before you incur any costs associated with pursuing patent protection in any of the countries designated in the PCT application.

A brief outline of the timeline of events relating to the PCT system is shown below, starting from the filing of a priority application, with the "international phase" ending 30 months after this date. Following this, each "national phase" or "regional phase" of your choosing must be entered by a particular date with respect to the application’s priority date.

The EPO provides a centralised filing and granting system for patents in 38 European states, plus 10 extension states, which include all European countries as well as a number of non-European countries.

• By filing a single application in one of the official languages of the EPO (English, French or German) it is possible to secure granted patents in as many of the European Patent Convention (EPC) contracting states as you wish.
• A European patent affords the same rights in the validated contracting states as a national patent granted in any of these states.
• This route is a cost-effective, efficient and time-saving way of applying for patent protection in several different European countries.
• Every European patent has undergone substantive examination and can be obtained for certain countries which may otherwise operate only a registration system (for example, Hong Kong).

Alongside the decision of whether or not to pursue patent protection in other countries, a decision is needed on how and whether to continue with the priority application. If the priority application was filed at the UKIPO and you have filed a European patent application, then you could choose to abandon your UK patent application. Furthermore, the UKIPO may decide to revoke your UK application if its claims define the same invention as those of the European patent application. However, there are often good reasons for maintaining your UK application as well as options to ensure the UK application is not revoked by the UKIPO, both of which we can discuss with you at the time.

Regional or national patent offices such as the UKIPO and EPO examine applications in detail to ensure that the inventions disclosed are new, non-obvious and have practical application.

They also examine applications to ensure they comply with other legal requirements. This process is often called "substantive examination". Often a fee must be paid to request substantive examination. As mentioned above, some patent offices (such as Hong Kong's) only operate a registration system, and so do not conduct substantive examination.

The patent offices will usually raise objections to the application at this stage. Hence, further costs can be incurred in overcoming the objections raised by the patent office. The specification may have to be amended in order to take into account the objections, for example the scope of the monopoly claimed may be too broad in view of any earlier documents found in the search.

When all objections raised by the patent office have been overcome, the specification will be granted and published in its finally accepted form.

The normal life of a patent is 20 years from the application or filing date - this is the date on which a particular application is actually filed. This date is not to be confused with the priority date, which is the date on which a first application for the invention is filed, and so may be up to 12 months earlier than the filing date. Annual renewal fees are payable in most countries to keep the granted patent in force. Some patent offices also levy renewal fees on pending applications. For a European patent application, renewal fees are paid to the EPO up until it has been granted and validated in the chosen EPC states. From this point, renewal fees are paid individually to the patent offices of those states.

Under the Patent Box scheme, a company can apply a lower rate of corporation tax to profits earned from its patented inventions.

This is an opt-in scheme that can reduce corporation tax payable from 25% to 10% on profits made by any company in the UK that can be attributed to qualifying patents.

If you hold eligible patents or patent applications or exclusively license patents, then you may be able to reduce your corporation tax bill by using the Patent Box. Eligible patents include among others, those granted by the EPO and UKIPO. As an opt-in scheme you must elect in in writing within two years of the end of the accounting period.

The profits on any product that has some part of it covered by a patent owned by you or exclusively licensed by you would be eligible for the scheme.

It may be appropriate to adjust your IP strategy to ensure that new products are covered by patents and that you record relevant information on any profits attributable to qualifying patents.

If you have patents that are due to expire or that you plan to sell, you need to elect into the Patent Box scheme while they are still valid and owned by you if you are to claim any relief from the profits of these patents.

Although relief is only available on granted patents, profits attributable to patent applications can be counted under the scheme retrospectively once the patent is granted. In order to do this you need to include the calculations of profits for the patent application in the tax returns for the relevant years.

If a patent is revoked any savings on corporation tax are not repayable.

It is important to note that your entire corporation tax will not reduce from 25% to 10% - only a certain proportion of your profits will be considered to be due to qualifying IP while other amounts (for example, due to marketing assets and routine profits) will be deducted from this proportion.

Having entered into force on 01 June 2023, the Unified Patent Court, together with the European patent with unitary effect (unitary patent or UP), represents the biggest change in the European patent landscape in more than 40 years.

The UPC is an international court for patent litigation in Europe for states which are both members of the European Patent Convention and member states of the UPC Agreement. It is a single court, comprising both first and second instances, with multiple locations.

It is the product of years of discussions and negotiations that were aimed at the objective of providing a single litigation forum for patent disputes in Europe. To that end, it has procedures and rules that are based on a combination of different European practices.

The UPC is the court for litigating European patents, whether or not as unitary patents, with effect broadly for member states of the European Union. This therefore necessarily excludes significant non-EU states like Switzerland, Turkey and Norway. Furthermore, although Spain and Poland are member states of the EU, they have not signed up to the UPC Agreement.

The UK, which was an original signatory of the UPC Agreement and indeed ratified the UPC in December 2016, has withdrew its ratification of the UPC Agreement and from the UP. This means the UK courts will have exclusive jurisdiction over European patents designating the UK. Therefore, although there is a possibility of harmonisation for litigating patents across Europe with the UPC, at present European litigation remains somewhat fractured without unitary harmonisation.