How to patent an idea in the UK
What can be patented in the UK?
For an invention to be eligible for a patent, the claimed invention must, in the opinion of a patent examiner, satisfy three criteria:
- it must be novel;
- it must involve an inventive step; and
- it must have industrial application.
If all three are met, then the idea is considered to be an invention and a patent will be granted. A patent is effectively a contract with the state: if an inventor teaches the world how to solve a technical problem in a new and inventive way, the state grants the inventor a monopoly of up to 20 years (in exchange for publication of the invention) to exploit the invention within the territory. However, in any territory where patent protection is not sought, the invention will be available to use by anyone without restriction.
Fundamentally, it is important to remember that a patent grants the owner the right to stop others from using their invention. The 20-year monopoly is important for companies, especially for SME’s, as it gives time for the applicant to commercialise their invention with limited competition, and to potentially recoup their R&D investment in order to help fund future R&D projects.
What is the test for novelty in a patent application?
Firstly, the test for novelty is absolute and requires that the claimed invention is unique and not been made available to the public at the time of filing. If the combination of technical features in the claim can be found within published material anywhere in the world prior to the filing date, then the innovation is not considered new and the invention, as claimed, may be rejected.
What is the test for inventive step in a patent application?
Secondly, the test for inventive step addresses the hypothetical question of whether a person ‘skilled in the art’ would arrive at the same combination of technical features, as claimed, to address the same problem. In other words, are the technical features claimed and their combination obvious to a skilled person when considering the problem to be solved? If the patent examiner considers the technical features as claimed to be an obvious choice, or would be arrived at by routine experimentation, then the invention as claimed may be rejected.
What is the test for industrial application in a patent application?
Finally, the test for industrial application is more straightforward, in that the invention merely has to be useful and solve some technical problem without consideration of any economic factors, i.e. an invention can have industrial application whether or not there is an economic market in which to exploit it.
What is the timeframe for preparing a successful patent application?
If the company decides to proceed with filing a patent application, then it is recommended to hire a patent attorney to draft the application before filing it at the patent office. A brief overview of the patent application process is illustrated below.
After filing, the application will receive a search and initial examination report after approximately 6 months, which will provide an early indication of whether or not the examiner considers there to be any ‘prior art’ that is relevant to the invention as claimed. If the company wishes to seek patent protection outside the UK (for export or licence opportunities), a foreign patent application needs to be filed by the 12-month international filing deadline. This deadline is relatively strict. After this deadline, no foreign patents can be applied for that claims the same invention. The application remains secret until 18 months after filing, at which point it will be published and enters the public domain together with any foreign applications filed by the applicant covering the same invention. If the Search Report is not favourable then the decision may be taken to withdraw the original application before publication at 18 months, this way the innovation has not entered to public domain and it can subsequently be redrafted with more technical detail in light of the examiner’s feedback, and then be refiled as a fresh application.
Assuming the Search Report is favourable, and examination is requested then the application will enter the formal examination phase of the process. This part of the process can take some time, but the objective is to seek a granted patent within 2-3 years of the filing date. The examination step can take longer if the examiner considers there to be a lot of prior art in the field of the claimed invention. In this situation the patent attorney will often negotiate with the examiner and narrow the scope of the claimed invention to avoid the prior art. If the examiner is then satisfied, a patent will be granted for the claimed invention.
UK patent prosecution timeline
The approximate timeline to obtain a granted patent once a patent application is filed.
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