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Patents: the basics

This guide is based on UK law. It was last updated in January 2012.

What is a patent?

A patent gives an inventor the right for a limited period to stop others from making, using or selling an invention without the permission of the inventor. In return for the disclosure of his invention the inventor is given a short term monopoly in the use of it for a period of 20 years after which time it passes into the public domain. The basic purpose of the patent system is to encourage innovation and the improvement of industrial techniques.

Patents are generally intended to cover products or processes that possess or contain new functional or technical aspects; patents are therefore concerned with how things work, what they do, how they do it, what they are made of or how they are made. Most patents are for incremental improvements in known technology evolution rather than revolution. The technology does not have to be complex.

A patent can be of value to an inventor as well as protecting his business, as they can be bought, sold, mortgaged, or licensed to others. They also benefit people other than the inventor since large amounts of information can be learnt from other people's patents; whilst they can stop you from reinventing things that infringe a valid patent, they do enable you to monitor what your competitors are doing. Patents can also spur you or others on to develop your idea further by giving you a monopoly over your invention for a period of time. Once the term of the patent expires however, it can be freely performed by anyone, which benefits the public and the economy.

What can be patented?

The UK's criteria for patentability are adopted from the European Patent Convention. For an invention to be patentable, certain criteria must be met:

1. It must be new,
2. It must involve an 'inventive step', and
3. It must be capable of industrial application.

The invention must not form part of the 'state of the art' – that is to say, the sum total of human knowledge which has at any time been made available to the public anywhere in the world in any way. If the invention does not appear to be already part of the state of the art, or if is not possible to infer that it was implicitly part of the state of the art, the invention is new.

The invention must not simply be something which has not previously existed, but it must also owe its existence to the exercise by the human intellect of a creative thought-process. According to the Patent Act 1977 an invention shall be taken to involve an innovative step if it is not obvious to a person skilled in that area.

Patents are about functional and technical aspects of products and processes, therefore an invention must be capable of being made or used in some kind of industry, including agriculture. However good an idea is, or however elegant its explanation, it cannot be patented unless it is a thing which can be made (i.e. a product) or a means of making a thing, or of achieving a concrete end result (i.e. a process). Industry is meant in the broadest sense as anything distinct form purely intellectual or aesthetic value.

It is not mandatory to obtain a patent in order to protect a new invention; the inventor may instead choose to keep the details secret. Indeed, not all technical developments are patentable. As a matter of public policy, discoveries, scientific theories and mathematical methods are not patentable. Products whose novelty reside in the design and not in the function are not patentable but may be protected either as a registered design or by means of copyright or by means of unregistered design right.

When considering whether or not to apply for a patent, a key part of the rationale will be deciding whether the value of your invention can be better protected by confidentiality. The issue here is how easily your invention can be reverse engineered.  If it is easy to reverse engineer, then you cannot protect your invention effectively with confidentiality.  This points towards patent protection instead.  You do need to bear in mind that your patent application will normally be published even if it is not granted, potentially destroying your competitive advantage.  A good patent attorney can help you through this process and advise on patentability.

Legislation and jurisdiction

The current legislation relating to patents consists primarily of the Patents Act 1977 amended and supplemented by the Copyright, Designs and Patents Act 1988 and the Patents Act 2004 and the Patents (Compulsory Licensing and Supplementary Protection Certificates) Regulations 2007. The principal effect of the Patents Act 1977 has been to draw UK patent law closer to its major European trading partners, in accordance with the provisions of the European Patent Convention (EPC). The patents legislation has effect throughout the United Kingdom and the Isle of Man, subject to modifications in its application to Scotland (so far as old patents are concerned), Northern Ireland and the Isle of Man.

UK patents are granted either by the UK Intellectual Property Office (IPO) as a result of a patent application filed appropriately or by the European Patent Office as a result of a patent application filed under the European Patent Convention. The IPO also acts as a receiving office for applications under the EPC and the Patent Cooperation Treaty (PCT). Details of IPO procedure are in large part laid down by the Patents Rules 2007. In addition, certain agreements relating to patents are covered by the Restrictive Trade Practices Act 1976 and certain provisions of the EEC Treaty.  Since the Patents Act 2004 came into force, the IPO has been given the added authority to provide non-binding opinions on the validity or infringement of patents, enabling it to settle disputes without parties having to resort to expensive litigation. See Out-Law's guide to Opinions of the UK Intellectual Property Office.

A UK patent only gives the owner rights within the UK. For a protection overseas, it is necessary to apply to patent offices in individual countries or through the international patent system, known as the Patent Cooperation Treaty. Or, you can get patent protection in most European countries by filing an application under the European Patent Convention, and designating the relevant countries which subscribe to the EPC.

Registration process

A patented invention is recorded in a patent document. A patent document must have:

1. Description of the invention, possibly with drawings, with enough detail for a person skilled in the area of technology to perform the invention.
2. Claims to define the scope of the protection. The description is taken into account when interpreting the claims.

The basis of a UK patent application is a legal document called a specification. Its contents determine whether a patent can be granted. To file an application for a patent you should prepare a patent specification, including drawings if these are useful in describing the invention. The specification should contain a full description of your invention. It is absolutely vital that you put all the necessary information about your invention in the description. You cannot make any changes to your specification once you have filed your application. It may include claims and abstract or these may be supplied later. If they are supplied later they must not add information to what was originally supplied.

You must also complete a Patents Form 1/77 "Request for Grant of a Patent". You should then take or send these documents to the UK Intellectual Property Office (IPO).

Once a patent is granted, the owner needs to make sure they pay the yearly renewal fees to keep the patent in force. If renewal payments are not made, the patent rights will end. If the owner of a patent discovers that someone is infringing their rights, it is up to the patent owner to take appropriate action.

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