The UK patent application procedure

This is a brief summary of the UK national patent application procedure. Patents can also be obtained in the UK through the European patent application procedure, or by filing an international patent application under the Patent Cooperation Treaty and entering the UK national phase or European regional phase.

Filing a new UK patent application

In order to obtain a UK patent it is necessary first to file an application. A complete application includes a patent specification which has a description of the invention and drawings, claims which set out the scope of protection sought, and an abstract. If the application is to claim priority from one or more applications filed in the preceding year the application numbers and filing dates of the earlier applications are given.

The application form names the applicant(s) for a patent. The applicant(s) may be people, limited companies, LLPs, etc.

Filing a search request

Once an application has been filed, the next step in the application procedure is to file a search request. A search request can be made on filing. However, the filing of a search request can be delayed for up to one year after the application has been filed (or at most one year from the filing date of the earliest application from which priority is claimed, if applicable). It is also possible to request “combined search and examination” to speed up the examination procedure and this is discussed further below.

About six months after a search request has been filed, the Patent Office will issue a search report. This lists any documents identified by the Patent Office as relevant to the patentability of the invention, and can be used to assess whether an invention is patentable i.e. is new and not obvious over everything previously known to the public anywhere in the world.

Formal drawings

It is sometimes necessary to submit formal drawings prepared by a draftsman to replace the informal drawings which were filed with the application. If this is required, the deadline for filing formal drawings is usually 15 months from the filing date of the application (or at most 15 months from the filing date of the earliest application from which priority is claimed, if applicable).

Declaration of inventorship

Unless each inventor is also an applicant in a personal capacity, it is necessary to file a declaration of inventorship within 16 months of the filing date of the application (or at most 16 months from the filing date of the earlier application from which priority is claimed, if applicable). The declaration of inventorship names the inventors and also gives brief information as to how the applicant(s) derive title from the inventor(s), for example, by virtue of a contract of employment.

Publication

A pending application will be published with the search report not earlier than 18 months after the filing date of the initial UK application (or 18 months after the filing date of the earliest application from which priority is claimed, if applicable).

It is possible to request early publication. Publication is sometimes late. However, it is not possible to request that publication is deferred. Publication can only be prevented by withdrawing the application. In order to prevent publication, it is necessary to withdraw the application before the UK Intellectual Property Office (IPO) complete their preparations for publication of the application which is usually a number of weeks before the publication date.

Requesting examination

An examination request must be filed by no later than 6 months from the date of publication (i.e. usually around 24 months from the filing date, or the filing date of the earliest application from which priority is claimed).

There is usually a delay of between 6 months and several years from the filing of an examination request before the application is examined. It is possible to file an examination request early, but this does not speed up the examination process.

Combined search and examination

One way to speed up the application procedure is to request examination at the same time as the original search request. This is called “combined search and examination”. In that case, the application is searched and examined at the same time and a combined search and examination report is issued after about six months. Although a combined search and examination report usually gives a relatively long response deadline it is possible to reply promptly and potentially substantially speed up the application procedure. Disadvantages of combined search and examination include bringing forward costs and potentially also paying examination fees twice if the first application is used as the basis for a priority claim and then abandoned.

Examination

In due course, the IPO examines the patent application. They may issue a notification of intention to grant straight away, without requiring amendments to the application. However, it is normal to instead receive an examination report which raises objections to the patentability of the invention and sets a response deadline.

The most common objections are that the claims cover subject matter which is not new, or which is obvious, but there are other bases on which objections may be raised. Examination reports include a response deadline. Responses to examination reports include arguments in favour of the patentability of the invention and frequently include amendments to narrow the scope of the claims. It is common to receive multiple examination reports.

Ultimately, there is a deadline by when the IPO must either grant a patent or refuse the application. This deadline (“the compliance period”) is initially set at four years and six months from the filing date of the application (or at most four years and six months from the filing date of the earlier application from which priority is claimed, if applicable) although it can be extended, for example if there is a delay in issuing the first examination report.

Notification of intention to grant

If a patent application is found allowable, the IPO issues a notification of intention to grant. This letter states that the patent application will be sent for grant shortly after a specified date. This notice period is deliberate, to allow the applicant(s) a period of time to make voluntary amendments or to file a divisional application (if the time limit for doing so has not otherwise expired), should they have cause to do so. It is possible to ask for the application to proceed to grant without further delay.

Grant

The IPO then issues a further letter, entitled notification of grant whereupon a patent is granted and the application procedure is finished. Grant of the patent is announced in the Patents Journal and a certificate is issued.

Renewal fees

Once a UK patent has been granted, it is necessary to pay renewal fees annually from the end of the month including the fourth anniversary of the filing date if the patent is to be kept in force. The renewal fees increase annually for the duration of the patent. If a UK renewal fee is not paid in time, it may be paid late within a “grace period” of up to 6 months, on payment of a surcharge which increases with each month.

It is sometimes necessary to pay one or more renewal fees shortly after grant, if the patent application procedure has taken around four years or more and the first one (or more) fees are already due.