Presentation by Sarah Whitehead, patent examiner at the Intellectual Property Office, to Leeds Inventors Group on 22 September 2012.

1. Introduction to Patents and
the Patent Application
Process
Dr Sarah Whitehead
Patents Directorate
19th September 2012
Sarah.whitehead@ipo.gov.uk

2. What this talk will cover:
What a patent is and why you might want one
What a patent isn’t
Other options
Requirements for a patent
Patent spec
The application process - inc priority.
Costs
Tips
International protection
Acceleration
Resolving disputes

3. What is a patent
•Intellectual Property right which protects new inventions
•Covers how things work, what they do, how they do it, what they
are made of and how they are made.
•Gives the owner the right to prevent others from
making, using, importing or selling the invention without permission
• Lasts up to 20 years in the UK – as long as it is renewed!
• Country specific i.e. patent protection in the UK only works in the
UK.

4. A deal between the state and the inventor
Exclusive Rights
20 years
State Inventor
Fees
Technical Description

5. Why would you want a patent?
Stops others from copying, manufacturing, selling, and importing
your invention without permission
The right to take legal action to stop them exploiting your invention
and to claim damages
You can also:
•Sell the invention and all the intellectual property (IP) rights
•License the invention to someone else but retain all the IP rights
•Discuss the invention with others in order to set up a business
based around the invention.

6. What a patent isn’t
A guarantee of commercial success
Something the police or government will enforce on your behalf –
patent infringement is a civil rather than criminal offence; it is your responsibility to
enforce your patent
Valid in counties other than those where it has been granted
Necessary in order to manufacture or sell a product (it just means
you can stop others doing the same)
Freedom to operate - doesn’t mean you won’t infringe anyone
else’s patent.

7. Other options
•Trademarks
•Copyright
•Design rights
•Company names
•Reputation/branding
See our website www.ipo.gov.uk

8. Requirements for a patent
Your invention must:
be new
not published, disclosed or made public (anywhere in the world) before the filing
date.
have an inventive step
not obvious to someone with knowledge and experience in the subject
be capable of industrial application
must be technical/practical such as apparatus or device, product such as a new
material or an industrial process or method of operation and not against the laws of
physics
not be excluded

9. Exclusions
a scientific or mathematical discovery, theory or method
a literary, dramatic, musical or artistic work
a way of performing a mental act, playing a game or doing business
the presentation of information, or some computer programs
an animal or plant variety
a method of medical treatment or diagnosis
against public policy or morality.

10. Patent application
Description
Must contain enough information for others to carry out the invention.
Drawings
Optional. Helps to understand the description.
Abstract
Short summary including most important technical features. Included on the front page when
published.
Claims
Defines in words the invention that is protected. Defines the scope of the monopoly and can be
crucial to the commercial exploitation of the invention.
Main claim should list all the main technical features of the invention including those that distinguish
it from what already exists. Subsidiary or preferred features are set out in dependent claims.

11. Timeline
File + Prelim. Exam
Search (4 months)
Publish (18 months from filing)
Exam (+36 months from filing)
Amend
Grant (<4 ½ years from filing)
Publish

12. The application process
1 2 3 4
Prepare a File form 1 We issue a File form 9A and
patent and one copy filing receipt fee within 12
specification of your confirming your months of the
specification application filing or priority
Description
number and date
Form 7 will be
Drawings filing date
required if the Formalities
Claims applicant is examination
not the
Abstract PAU examination
inventor
(if unrepresented)

13. Priority date
Once you have filed, if you file a new application to the same
invention within a year you can claim the filing date of the earlier
application
UK and/or abroad
e.g. file in UK get search results (we are quick!) decide whether you
want to proceed and or file abroad as well
Or add new developments in new applications
Once filed can’t add new info to an application!

14. The application process
5 6 7 8
We carry If formal You file form 10 We examine your
out a requirements and fee no later application and
novelty have been met than six months inform you if
search to your from publication anything needs
assess your application is amendment
invention published at Once all objections
and issue a 18 months have been
report overcome we will
4 months grant your patent
after form 9 Can be around 4.5
filed years from filing

15. Search – look for docs which demonstrate that the
invention as defined in the claims is not novel or inventive.
Inform applicant
Publication – we publish the information in the application.
This means that others can see the information and use it
in any country where there isn’t a valid patent preventing
it’s use.
Exam - explain in more detail why we think citations are
relevant. Explain if application doesn’t meet other legal
requirements (clarity etc). Can have multiple rounds of
amendment and exam before grant.

16. How much does it cost?
Total application is GBP £230 - £280 up to grant. Cheaper if file
online.
Paper filing
•GBP £30 (application fee) for a preliminary examination
•GBP £150 for a search
•GBP £100 for a substantive examination
Electronic filing/web-filing service
•GBP £20 (application fee) for a preliminary examination
•GBP £130 for a search
•GBP £80 for a substantive examination
Renewal fees
Increase each year. Up to £600 year 20
Enforcement
Can be expensive. Worth considering before applying

17. Tips:
Consider carefully before applying – do you need a patent? Do you need
further advice? Will a granted patent do what you need?
If patent is important to the commercial success of your business get legal
advice
The better drafted the application and the more details there are about the
invention the more likely it is to get something granted (more ways of
amending in light of examiner’s comments)
Would you be able to enforce your patent (can be expensive)?
Read guidance on our website carefully
Ring our information centre if you have any questions before filing
Meet deadlines
Consider your market – would anyone want to buy your product?

18. Applying abroad
Do you want to sell your invention abroad? Now or in the future?
Do you want to license your patent abroad?
UK patent granted by the IPO only valid in the UK.
Apply to individual national patent offices = protection in individual
countries. Can apply in a single country, including the UK, and apply
later elsewhere using the first application to claim priority (12 months).
Patent Co-operation Treaty (PCT) = countries worldwide
European Patent Convention (EPC) = countries in Europe

19. Obtaining Patent Protection Abroad
Separate National Filings
UK France Germany US Japan
Search Search Search Search Search
“A” Pub “A” Pub “A” Pub “A” Pub “A” Pub
Exam Exam Exam Exam Exam
GRANT GRANT GRANT GRANT GRANT

20. GB application European application International application
Filing Filing Filing
Application
process until
examination Nominate
Application process at
Application essentially the states (up to
EPO -essentially the
process: same as UK 145)
same as in the UK
search, publicatio International
n, substantive Nominate states in phase
examination... which the patent will be
granted (up to 38)
National
phase
Enter national Enter national
phase in UK phase in other
states
Application
Grant of Grant of Opposition process
UK EP at EPO* essentially the National processing at
patent patent same as UK individual offices
post exam
Grant of
Bundle of Patent national
national Revoked patent
Maintain, sell, licenc
patents
Grant of Grant of
e, amend, litigate at EPO UK national
etc in the UK patent Grant of
patent
EP(DE)
national
EP(FR) ETC
EP(UK) *After a European patent patent
has been granted it may
be opposed by third
Maintain, sell, licenc parties who believe it
e, amend, litigate should not have been Maintain, sell, licenc
etc in each granted. Notice of e, amend, litigate
individual state opposition can only be etc in each
filed within 9 months of
the grant being
Individual state
mentioned in the
European Patent Bulletin.
In each case the granted patent(s) can be maintained for up to 20 years from the date of filing (providing renewal fees are paid)

21. Combined Search and Examination
• Not an acceleration as such but starts examination
process sooner
• Request search and exam at the same time
• Doesn’t require a reason
• Receive search and examination report within 4
months

22. Accelerated search/pub/exam
• Reason required for accelerated search or exam
• Reason must be should be specific to the particular
application – Fast Grant Guide gives examples
• Early publication available on written request (but
beware disadvantages)
• CSE can also be accelerated
• Timeliness targets

23. Overview of fast track to grant
Filing Date Application filed with accelerated CSE and early
publication requested- adequate reasons for wanting
accelerated processing provided
3 months CSE report issued
5 months Application published with search report
Amendment
Rounds
8 months Three months for third party observations
9 months Application sent for grant

24. Green Channel
• Invention must relate to a “green” or
environmentally-friendly technology
• Request should provide reasonable assertion of
some environmental benefit
• Can be used to accelerate any or all of the
application process
• Requests refused if clearly unfounded
• More info and FAQs available from
www.ipo.gov.uk/p-green

25. Green Channel
Area of technology, 2010/11 Area of technology, 2011/12
Wind Wind
6% 4% Water
Other Water Other 10% Recycling
21% 8% 10%
5%
Solar
Recycling
4%
10%
Solar
Vehicle 8%
18% Vehicle
42%
Energy
Energy Saving
Saving 25%
29%
Acceleration options are also provided by the Patent Prosecution
Highway and PCT (UK) Fast Track, each of which allows the Intellectual
Property Office (IPO) to make use of work already conducted on related
applications at other offices.

26. Resolving disputes
Hearings
Dispute between yourself and the office
Between yourself and a third party
Opinions
Infringement and validity
Mediation
Talk about dispute and come to an agreement with out court action
Court Proceedings

28. Thank you for your attention
Any questions?
Sarah.whitehead@ipo.gov.uk
Info centre: 0300 300 2000
information@ipo.gov.uk
Website: www.ipo.gov.uk