To protect your invention from being used, made or sold by someone else, a patent can provide legal protection for your intellectual property for a limited period of time.
The process of obtaining a patent is in itself protracted and can take up to five years from filing. After this initial period, annual renewal and payment is required for the next 15 years to keep the patent live and to allow the patent holder to exploit the commercial advantages of their invention.
What are patent rights?
As the patent holder, you can grant permission or license usage to a third party by forming mutually agreed terms.
The inventor, or a third party who owns the invention by agreement with the inventor, is able to apply for a patent. Depending on the circumstances, an employer may own the rights to employees’ inventions and any resulting patents for those inventions. Legal advice should be obtained to assess the legal position and ownership of the invention.
Patents are known as ‘territorial rights’ and generally only apply in the country or region where the patent was filed and granted. So if granted in the UK, your rights will only be enforceable in the UK. The patent will however extend to the import of the product into the UK.
For an international patent, you would submit a single PCT application to the Intellectual Property Office (IPO), European Patent Office (EPO) or World Intellectual Property Organisation (WIPO). This type of patent will protect your invention in many countries worldwide and is administered by the WIPO.
How to obtain a patent
To be patentable, your invention must be unique, recognisably progressive, industrially compatible and not excluded from patentability.
To obtain a patent, you will need to make an application to the relevant national patent office. In the UK, this is the Intellectual Property Office (IPO).
In simple terms, the UK patent process involves the following:
- Conducting searches to ensure your invention is unique
- Compiling a patent ‘specification’, including commercial claims
- Filing your application with the IPO
- Requesting a search report from IPO
- Preliminary search & examination by IPO
- Receipt of report & confirmation of pursuing application – usually 6 months after initial filing date
- Publication of your application – usually 18 months after initial filing date
- Requesting a ‘substantive examination’ – within 6 months of publication
- Responding to IPO’s comments of your substantive examination – this can take several years depending on the complexity of the application
- Your application is granted or refused
How long does a patent last?
Patents are finite and can last up to 20 years from the date of application, provided you continue to pay the annual renewal fee as set by the government.
Failure to pay the renewal fee will result in the patent lapsing, which will remove any legal protection or infringement rights you hold over the invention.
The process of obtaining a patent is in itself protracted and can take up to five years from filing.
After this initial period, annual renewal and payment is required for the next 15 years to keep the patent live and to allow the patent holder to exploit the commercial advantages of their invention.
How do I search for a patent?
Before you file, you need to ensure your application would not infringe on another party’s patent rights and that your invention has not been made public anywhere in the world.
Using the services of a professional IP attorney will ensure a thorough search through published patents is conducted, including trade catalogues.
This is rarely a straightforward process due to the complex nature of patent records.
Do I need to create non-disclosure agreements?
To be patentable, your invention must be new and outwith the public domain. To preserve patent eligibility and commercial advantage, it is advisable to take steps to ensure confidentiality.
Where you do need to discuss your idea with other parties such as potential manufacturers, consider using a well-drafted non disclosure agreement.
This will ensure the other party is aware of the confidential nature of the information and that they agree to be bound in adhering to this, or face legal action.
How do I enforce my patent rights?
Once your patent application has been filed, you will be able to exploit your invention for commercial benefit – provided, in doing so, you are not infringing on another party’s patent.
If your patent application is successful, and you subsequently suspect another party is infringing your patent rights, the IPO will not resolve this issue – you have to take action yourself through the courts. You will also have to fund this action.
Depending on the circumstances of the matter, you may be able to bring multiple claims against the party.
Do I need to renew my patent?
“How long does a patent last and will I need to renew it?” are questions often asked by patent applicants.
As a patent holder, you can renew your patent on the fourth anniversary of the date you made your application.
After that, you’ll need to renew every year to keep it live.
If your patent is granted later than three years and nine months after your filing date, your first renewal will be due three months after it was granted and you’ll need to pay the fee by the last day of that month.
Renewals come at a cost set by the Government, and generally increase on an annual basis.
To avoid missing the due date, you are able to renew your patent up to three months beforehand.
Every month missed will cost you £24 in addition to the renewal fee.
If you forget to renew on time, the IPO will send a postal reminder, using the address provided in your application. You should inform of a change of address.
What are the alternatives to patents?
A patent may not necessarily be suitable in all circumstances.
It depends entirely on your invention and your commercial plans; alternative forms of intellectual property may better suit your needs.
For example, use copyright to protect drawings of your product; registering a design to protect your product’s unique shape; trademarking your product’s name and logo.
These offer various degrees of protection and remedy in the event of infringement, and while some are automatically attained, others you have to apply for.
Take professional advice on your circumstances to assess the suitability of patenting, and whether any alternative forms of intellectual property protection may be more appropriate and less onerous to secure and maintain.
Should I take legal advice?
The patent application process can be drawn-out and costly, and is demanding on applicants. The quality and substance of the initial specification document and commercial claim information will determine the outcome of your application.
Professional advice can help ensure you build a thorough and robust application, and are following the filing process as required to avoid delays or a failed application.
A specialist IP attorney will be able to answer any questions you have about the patent application process, including how long a patent lasts and the steps you will need to take to compile a robust application that stands up to IPO scrutiny and ultimately secures your patent.