UK Patent Applications
For UK inventors normally the first application filed is at the UK Intellectual Property Office. The main initial cost arises from the patent attorney’s time spent
writing the application, thus the cost depends upon the complexity of
the invention, but are typically in the range of £500 to £3000+VAT.
Filing a first application for an invention generates a ’priority date’ (i.e. the date of filing) and provided that applications for overseas protection are filed within 12 months of the priority date then the overseas applications can be backdated to the priority date. Thus, a first filing in the UK can notionally protect you worldwide for 12 months.
Search, Examination, Publication and Grant
As part of the application process the UKIPO must do a search and an examination to try to determine whether or not the claimed invention is new and inventive, and therefore worthy of patent protection.
The
examination is a comparison between what has been done before and the
claimed invention in the application to try to determine whether or not
the invention is ‘new’ and ‘inventive’, the two main criteria for patent
protection to be granted. In the examination the UKIPO will raise any
objections they have to the grant of a patent.
Once the
examination report has been issued there is the opportunity to argue
against these objections and make any amendments to the application as
necessary. However, please note that any amendments made must have basis
in the application as filed.
If examination is not requested on
filing then the examination report will currently not be issued for
around 4 years from filing, owing to a large backlog of patent
applications at the UKIPO.
Publication of the application occurs around 18 months from the its priority date, which for first UK filings is its filing date.
If a patent is granted then it must be renewed every year by payment of renewal fees to UKIPO. The maximum life of a patent is 20 years from filing.
UK Patent Filing Options
There are three choices on filing the application:
1. Simply file the application.
2. File the application and request the official search.
3. File the application and request the official search and examination.
Each of these options is discussed in more detail below.
Filing Option 1 - Simply File the application
If the application is simply filed then this will keep the application pending for as long as possible, and delay the costs incurred with work after filing, which may be beneficial if the chances of obtaining a patent are low, as the applicant can have ‘patent pending’ for as long as possible, which can deter competition.
With this option the search must be requested within 12 months from filing and the examination requested within around 24 months from filing.
Filing Option 2 - File the application and request the official search
If the official search is requested on filing then the search results will be issued within around 4 months. The search results will give us a good idea as to whether or not a patent is likely to be granted. Thus, we would recommend requesting the search on filing if you are considering overseas protection.
This is because any applications for overseas protection should be filed within 12 months of filing the UK application so that they can ‘claim priority’ from the UK application. Claiming priority means that the overseas applications will be backdated to the date of filing the UK application.
Filing Option 3 - File the application and request the official search and examination.
This option is normally the fastest way to obtain a patent in the UK.We would recommend this option if you are seeking investors, or are considering licensing the patent application and any subsequent patent. This is because any potential investors or licensee is likely to want to know the chances of a patent being granted before entering into a commercial agreement.
If search and examination is requested on filing then a combined search and examination report can be issued within around 4 months. We can then respond to the examination report arguing against any objections and amending the application as necessary.
This means that a patent can be put in order for grant even before it is published.
Please contact us for a free consultation or more information on UK patent applications.