UK Patents by Oleg N.

Patents: Basic Facts

If you invent something that could be commercially successful, you may be interested in applying for a patent.

UK Intellectual Property Office is an operating name of the Patent Office

All information contained in this document was correct at the time of going to print, and is available in alternative formats on request. For further information please visit our website at:- www.ipo.gov.uk or contact us on:- 08459 500 505 >p...We use this symbol when there is more information on the page number shown.

Introduction: If you invent something that could be commercially successful, you may be interested in applying for a patent. This booklet provides an introduction to the UK patent system that should help you decide whether or not to apply. If, when youâ&#x20AC;&#x2122;ve read this booklet, you decide you would like to apply, we publish two other booklets â&#x20AC;&#x201C; Patents: Essential Reading and Patents: Application Guide, as well as a range of factsheets that you may find useful >p15.

Contents

Patents

Applying for a patent

Successful applications

What is a patent? 6

Who grants patents? 9

Can a UK patent protect an invention in another country? 6

How to apply 9

What happens after a patent is granted? 12

Who can own a patent? 6 What kind of things do patents cover? 6 Is a patent the best way to protect your invention? 7 Is a patent the only way to protect an invention? 7 Can all inventions be patented? 8 How can you check to see if your invention is new? 8

When to apply 9 Where to get professional advice 9 How necessary is it to get professional advice? 9 How much does it cost to apply for a patent? 9 How long does it take? 9 A summary of the UK application process 10

Who enforces patent rights? 12 What happens if patent rights are infringed? 12 Is there a patent mark? 12 Is it possible to make money from a patent? 12 What are invention promotion companies? 13 More information 15 Contacts 16

Is your idea a secret?

Professional help

By far the most common mistake made by people new to the world of patents is to reveal their invention too early.

The basis of a UK patent is a legal document called a ‘specification’. Its content decides not only whether a patent can be granted, but also exactly what the rights of any patent granted cover.

I f you reveal your invention in any way – by word of mouth, demonstration, advertisement, article in a journal or any other way – before you apply for a patent, you are making your invention public. This could mean that you lose the possibility of being granted a patent.

You can prepare a specification and apply for a patent yourself, but if you do not know a lot about patent issues, you should use a chartered patent agent. Patent agents have the legal skills needed to prepare an application for you and some will give you initial advice free of charge. So, make sure you are well prepared before any initial consultation. We are not allowed to recommend any particular adviser. However, a list of patent agents is available from the Chartered Institute of Patent Attorneys ( >p16) and most classified directories list local patent agents.

Any conversation you have with patent agents, solicitors or our staff is confidential, so anything you say will not count as revealing your invention early. During the application process, you may be contacted by an invention promotion company. If you are, be very careful what you agree to >p13. 5

Patents What is a patent? A patent is an intellectual property right, granted by a country’s government as a territorial right for a limited period. Patent rights make it illegal for anyone except the owner or someone with the owner’s permission to make, use, import or sell the invention in the country where the patent was granted. As long as renewal fees are paid every year, a UK patent has a life of 20 years and provides protection throughout the UK, but no further.

Can a UK patent protect an invention in another country? No, a UK patent only gives the owner rights within the UK. For protection overseas, you need to apply to patent offices in individual countries or through the international patent system, known as the Patent Co-operation Treaty (PCT). Or, you can get patent protection in most European countries by filing an application under the European Patent Convention (EPC).

We can offer advice on completing EPC and PCT applications, but applying overseas can be both complicated and costly so we advise anyone deciding to take this route to get professional advice from a patent agent.

Who can own a patent? The owner can be the inventor, the inventor’s employer or someone else who has got the patent rights. If you made your invention while employed by someone else, even if it was in your own time, ask a lawyer to check your employment circumstances carefully as your employer may have some rights to your invention.

What kind of things do patents cover? Patents generally cover products or processes that contain ‘new’ functional or technical aspects. They are concerned with:

• how things work; • how they are made; or • what they are made of.

Patents Is a patent the best way to protect your invention?

Is a patent the only way to protect an invention?

Applying for and renewing a patent can be expensive and take a long time. You need to consider how commercially successful your invention is likely to be and how quickly you will be able to get it on the market. You should also think about the likely costs of developing, manufacturing and marketing your invention. It may be worth considering one or more of the other ways of protecting your invention mentioned in the next column.

No. You could consider protecting different aspects of your product or process using one or more of the following.

However, being granted a patent creates an intellectual property right which you can sell, market yourself or lease to others and collect royalties – although it does not mean your invention will automatically be commercially successful.

• Registered design • Registered trade marks • Unregistered design right and copyright

• Private agreements For more information about these different forms of intellectual property, visit our website or contact our Central Enquiry Unit >p16.

You should also think about the likely costs of developing, manufacturing and marketing your invention.

Patents Can all inventions be patented? No. An invention can only be patented if it is:

• new – not already known to the

public before the date a patent is applied for;

• inventive – not an obvious

modification of what is already known; and

• capable of industrial application,

that is, can be made or used in any kind of industry.

In other words, your invention must make a technical contribution. This means you can’t, for example, patent a business method unless it involves some technical innovation. Inventions relating to computer software may be patentable, but only if they involve something more than just software running on a computer in a technically ordinary way. Other ideas that cannot be patented are:

• scientific or mathematical

discoveries, theories or methods;

• literary, dramatic, musical or artistic works;

• schemes, rules or methods for performing a mental act; and

• methods of medical treatment. If you are not sure if your invention is or isn’t excluded, contact the office or ask a patent agent >p16. 8

How can you check to see if your invention is new? It can be disheartening and costly to discover, after months of effort and investment, that your patent application is not allowed because your invention is not new. To avoid this, you should carry out a search through published patents and other documents such as trade catalogues before applying. You can either:

• carry out a search yourself – see

our booklet Patents: Essential Reading – although the results might not be as comprehensive as you would want; or

• pay an organisation to do a search for you, such as a patent agent or our Search and Advisory Service >p16.

Applying for a patent Who grants patents?

Where to get professional advice

UK patents are granted either by us as a result of a patent application filed with us or by the European Patent Office as a result of a patent application filed under the European Patent Convention (EPC). We also act as a receiving office for applications under the EPC and the Patent Co-operation Treaty (PCT). For our details >p16.

We can offer general advice but cannot help prepare a patent application. Chartered patent agents can give you advice and some do not charge for the initial consultation >p5.

How to apply Getting an invention patented can be complicated so we advise that you use a chartered patent agent. If you decide to go ahead on your own, we produce two booklets and a range of factsheets that should give you the basic information you need >p15.

When to apply As long as the invention is a secret, you can apply at any time. It is up to you to decide the best time to apply. However, professional advice from a patent agent can be very helpful because:

â&#x20AC;˘ if an application is made too soon

there is a risk that the product may not be fully developed or the market may not be ready for the product; or

â&#x20AC;˘ if the application is delayed, there is a risk that someone else might come up with the same idea and make a patent application themselves.

How necessary is it to get professional advice? It is not strictly essential but the strength of a patent is affected by how well it has been drafted, and as it is both a technical and legal document, it should be drafted by an expert.

How much does it cost to apply for a patent? Our fees for processing a UK patent application are normally ÂŁ200. For a list of current fees, contact our Central Enquiry Unit >p16. As well as our fees, if a patent agent is involved, typical professional fees for securing a UK patent can be several thousand pounds, while making an international application in several countries can cost tens of thousands of pounds over several years.

How long does it take? From the time an application is filed, the UK patent application process usually takes between three and four years. There are ways to speed the process up, but these may not be in your best interests. 9

It’s your invention: Protect it

A summary of the UK application process The steps below cover a typical single UK patent application, filed on or after 1st January 2005. They do not cover more complicated variations.

 Step 1 Step 1 You prepare a ‘patent You prepare a ‘patent specification’ which specification’ which includes: includes: • a written ‘description’ of a written ‘description’ of your invention (allowing your invention (allowing others to see how it works others to see how it works and andhow howititcould couldbe bemade); made); ‘drawings’ (to(to illustrate your ‘drawings’ illustrate description); your description); • ‘claims’ ‘claims’(precise (preciselegal legal statements statementsininthe theform formof of single singlesentences sentencesthat thatdefine define your yourinvention inventionby bysetting setting out out its distinctive technical its distinctive technical features); and features); and • an an‘abstract’ ‘abstract’(a(asummary summary that thatincludes includesall allthe theimportant technical aspects ofaspects your important technical invention). of your invention). 12 10

 Step 2 Step 2 You fill in and file form 1 You fill in and file form ‘Request for grant of a 1/77 ‘Request for grant of patent’ with us, together with a patent’ with us, together your patent specification. with one copy of your patent specification. (Also, if you or anyone else applying are not the (Also, if you or anyone inventor, youare willnot need else applying theto fill in form 7 –will ‘Statement inventor, you need to fill inventorship and of right inofform 7/77 – ‘Statement grant of a patent’ and oftoinventorship and of–right us why have the totell grant of a you patent’ – and right beyou granted patent. tell us to why haveathe Thistoform can be filed up to right be granted a patent. 1 months after This form can beyour filed‘filing up to date’ or priority date,‘filing if there 16 months after your is one.) date’ or priority date, if there is one.)

 Step 3 Step 3 We respond by issuing a We respond by issuing a filing receipt which includes filing receipt which includes an application number and an application number and confirms the ‘filing date’ of confirms the ‘filing date’ of your application your application.

 Step 4 Step 4 You fill in and file form 9A You fill in and file form 9A/77 with us, together with the with us, together with the appropriate fees, asking for appropriate fees, asking for ‘a ‘a search’. You must do this search’. You must do this by a by a given date – usually given date – usually within 12 within 12 months of your months of your filing date – to filingyour date – to avoid your avoid application being application being terminated. terminated. You also need to pay You also need to pay the the application by given the given application feefee by the date. date. your application includes If Ifyour application includes declaration of priority, a adeclaration of priority, the the deadline filing 9Ais deadline forfor filing formform 9A/77 2 months yourdate filing 2 is months from from your filing or 12 months your ordate 12 months from yourfrom priority priority date, whichever is date, whichever is later. later.

It’s your invention: Protect it

A summary of the UK application process

 Step 5 WeStep carry5 out a preliminary We carry out a preliminary examination to make sure examination make sure your applicationtomeets your application meets certain formal requirements certain formal requirements and search through and search through published patents and other published patents and other documents for material documents for material against which we can assess against which we can assess whether or not the invention whether or not the invention you have claimed is new you have claimed is new and inventive. We aim to and inventive. We aim to issue our search report to issue our search report to you within four months of you within four months of receiving your form 9A. receiving your form 9A/77.

 Step 6 Step 6 your patent We publish We publishshortly your patent application after shortly after 18application months from your filing 18 months from your filing date (or priority date if there date (or priority date if there is one), as long as you have is one), as long as you have met the formal requirements, met the formal requirements, filed form 9A together with filed form 9A/77 together with the appropriate fees and not the appropriate fees and not asked us to withdraw your asked us to withdraw your application. application.

 Step 7 Step You fill7in and file form 10 Youus, fill together in and filewith formthe 10/77 with with us, together with the appropriate fee, asking for appropriate fee, asking for ‘a substantive examination’ ‘a substantive examination’ no later than six months no later than six months after publication to avoid after publication to avoid your application being your application being terminated. terminated.

 Step 8 Stepexamine 8 We your We examinelet your application, you know application, let youneeds knowto what, if anything, what, if anything, needs to be amended and the period be amended and the period of time you have in which to of time you have in which to respond. respond. If your application meets all the requirements of the If your application meets Patents Act 1977, we will all the requirements of the grant your patent, publish Patents Act 1977, we will your application in its grant your patent, publish final form and send you a your application in its certificate. final form and send you a certificate.

13 11

Successful applications What happens after a patent is granted? 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.

Who enforces patent rights? The owner does. Many people believe that patents are in some way ‘policed’ by us or the state. This is not the case.

What happens if patent rights are infringed? If the owner of a patent discovers that someone is infringing their rights, it is up to the patent owner to take appropriate action. These cases can be complicated and costly, so you should ask a patent agent or a solicitor for advice.

Is there a patent mark? There is no specific mark and no legal requirement for a product to be marked, although marking your product could help stop others unintentionally infringing your patent rights. However, it is an offence to mark a product as patented or the subject of a patent application if it is not or when a patent is no longer in force.

Is it possible to make money from a patent? A patent is a form of intellectual property and the owner of a patent can generally decide how it is used. They can:

• make the product themselves; • subcontract the manufacturing and receive revenue from selling the product;

• sell the patent rights to another person; or

• license the patent rights in

exchange for royalty payments.

We cannot offer business advice or financial support to inventors. However, the Government provides several schemes and resources that may be of interest. You can find details in our booklet Patents: Essential Reading.

Successful applications What are ‘invention promotion’ companies?

Some unreliable firms promise to evaluate your invention for a fee of a few hundred pounds.

Some invention promotion firms may offer you free information on how to patent and market your invention. Some unreliable firms promise to evaluate your invention for a fee of a few hundred pounds, then tell you that your invention has great market potential. They may offer to promote your invention to manufacturers if you pay a fee of several thousand pounds up front. Once you have paid up, they may do little or nothing for you. Reputable companies will carry out the research and provide a genuine market evaluation giving you an honest review of your invention’s potential. They don’t use bogus research and mass-produced positive reports, or charge large fees up front, as some unreliable companies do. They will recommend what research should be carried out to evaluate your invention and, if the outcome is positive, how they would market it. They will give you an estimated breakdown of what the costs will be at each stage of the process and the level of risk involved.

Successful applications No-one can guarantee your invention’s success.

If an invention promotion firm approaches you, take great care and question their claims and assurances that your invention will make money. No-one can guarantee your invention’s success. Entering into a contract with one of these companies is no different to any other major financial arrangement. Make sure your contract contains all the terms you have agreed to and be sure to get independent legal and financial advice. The Consumer Direct website at www. consumerdirect.gov.uk gives more information. You can also get a step-by-step guide to using invention promotion companies from our Central Enquiry Unit >p16. If you have a complaint about one of these companies, you should put it to the Office of Fair Trading at www.oft.gov.uk or phone them on 08457 22 44 99.

More information The following booklets on patents are available from our website or from our Central Enquiry Unit >p16.

Patents essential reading Provides general advice on patents, information you need to consider before committing yourself to applying for a patent, a summary of the patenting process, renewing, enforcing and exploiting patent rights as well as information about applying for patents overseas.

Patents application guide Provides detailed information on how to apply for a UK patent.

The following booklets on patents are available from our website: www.ipo.gov.uk

Contacts UK intellectual Property Office Central Enquiry Unit

Patent Information Centres (PATLIBs)

For general enquiries

PATLIBs are European libraries and information centres that provide information about patents, trade marks, copyright and design rights. Many offer guidance on how to make the best use of patent databases so you can assess whether your invention is new.

www.ipo.gov.uk enquiries@ipo.gov.uk 08459 500505 text 0845 222 250 Concept House, Cardiff Road Newport, South Wales NP10 8QQ

Patent Search and Advisory Service For a fee-based search service commercialsearches@ipo.gov.uk If you would like to visit us in person, either in Newport or London, please call our Central Enquiry Unit first to arrange an appointment.

Patent agents We cannot recommend any particular patent agent, but you can get a list of all the patent agents registered in the UK from the address below. Local patent agents are usually listed in most classified directories. The Chartered Institute of Patent Attorneys www.cipa.org.uk 020 7405 9450 95 Chancery Lane, London WC2A 1DT 16

Some PATLIBs in the UKâ&#x20AC;&#x2C6;hold clinics where you can have a free consultation with a patent agent or a business advisor. For details of your nearest PATLIB centre visit http://patlib.europeanpatent-office.org/directory/display_ centres.pl?ccode=GB or contact our Central Enquiry Unit >p16

The British Library The Business and Intellectual Property Centre at the British Library gives you access to the information you need to develop and market your ideas. Free clinics to help you search patents are held at least once a month. For more information, visit the British Libraryâ&#x20AC;&#x2122;s website at www.bl.uk/business or phone 020 7412 7903.

Other Publications Patents

PATENTS: Essential Reading

PATENTS: Application Guide

1. Patents: Essential Reading

Patents: Basic Facts This booklet provides information you need to consider before committing yourself to applying for a patent, a summary of the patenting process in the UK and abroad.

2. Patents: Application Guide

This guide is all about how to apply for a UK patent. Before you apply, there are two important issues you need to consider – the need to keep your invention secret and the importance of getting professional advice.

If you invent something that could be commercially successful, you may be interested in applying for a patent.

3. Patents: Basic Facts UK Intellectual Property Ofﬁce is an operating name of the Patent Ofﬁce

UK Intellectual Property Ofﬁce is an operating name of the Patent Ofﬁce A DTI SERVICE

Designs

UK Intellectual Property Ofﬁce is an operating name of the Patent Ofﬁce

How to Apply to Register a Design

4. How to Apply to Register a Design

Designs: Basic Facts This booklet will help you apply to register a design in the United Kingdom. It also includes information about applying to register a design outside the UK.

5. Designs: Basic Facts

This leaflet provides basic information on some areas of design protection.

UK Intellectual Property Ofﬁce is an operating name of the Patent Ofﬁce

Trade Marks 7. Trade Marks: Essential Reading

Trade Marks: Basic Facts This booklet, together with the booklet ‘Trade marks: application guide’, will help you apply to register a trade mark in the UK.

8. Trade Marks: Application Guide 9. Trade Marks: Basic Facts

Trade Marks: Application Guide

Trade Marks: Essential Reading

This booklet, together with the booklet ‘Trade marks: essential reading’, will help you apply to register a trade mark in the UK.

Concept House Cardiff Road Newport NP10 8QQ Tel: 08459 500 505 Minicom: 08459 222 250 Fax: 01633 817777

This leaflet provides basic information on some areas of trade marks. It is not a reference book and has no legal authority.

www.ipo.gov.uk For copies in alternative formats please contact our Central Enquiry Unit. When you no longer need this booklet, please recycle it. Revised: Feb 07

UK Intellectual Property Ofﬁce is an operating name of the Patent Ofﬁce

UK Intellectual Property Ofﬁce is an operating name of the Patent Ofﬁce CUSTOMER SERVICE EXCELLENCE

UK Intellectual Property Ofﬁce is an operating name of the Patent Ofﬁce

T DES IG

TEN PA

TR A DE S KS M RK AR MA

COPYRIGH T

Additional

Search and Advisory Service

10. Search and Advisory Service Concept House, Cardiff Road, Newport, NP10 8QQ Tel: 08459 500 505 Minicom: 08459 222 250 Fax: 01633 817777 www.ipo.gov.uk For copies in alternative formats, please contact our Central Enquiry Unit.

Revised: April 07

CUSTOMER SERVICE EXCELLENCE

DDU/P300

UK Intellectual Property Ofﬁce is an operating name of the Patent Ofﬁce

Phone: 01633 811010 Fax: 01633 811020 E-mail: sas@ipo.gov.uk

Search and Advisory Service Concept House Cardiff Road Newport NP10 8QQ

UK Intellectual Property Office Publications order form Name:

Address:

Phone number:

Fax number:

E-mail:

Any other comments you may wish to add:

All Publications are available through the UK Intellectual Property Office Website: www.ipo.gov.uk or by phoning our Central Enquiry Unit on 08459 500 505 To order any of the publications overleaf, please tick the box next to the ones you want, fill in your name and address, and return the form to: Central Enquiry Unit , Concept House, Cardiff Road, Newport, NP10 8QQ.

Concept House Cardiff Road Newport NP10 8QQ Tel: 08459 500 505 Minicom: 08459 222 250 Fax: 01633 817 777 www.ipo.gov.uk For copies in alternative formats please contact our Central Enquiry Unit. When you no longer need this booklet, please recycle it. Revised: December 07

CUSTOMER SERVICE EXCELLENCE

PATENTS: Application Guide

This guide is all about how to apply for a UK patent. Before you apply, there are two important issues you need to consider â&#x20AC;&#x201C; the need to keep your invention secret and the importance of getting professional advice.

UK Intellectual Property Office is an operating name of the Patent Office

Introduction This guide is all about how to apply for a UK patent. Before you apply, there are two important issues you need to consider – the need to keep your invention secret and the importance of getting professional advice. Other factors that may affect your decision to apply for a patent can be found in our booklet “Patents: Essential Reading” which you should read before preparing your application.

Content Itâ&#x20AC;&#x2122;s your invention

Preparing a UK patent specification

Request for grant of a patent

Request for a search

Publication

Forms and fees 8

You file form 1 22 Our response and your options 23

You file form 9A 24

Publishing your application and your options 27

Description 8 Drawings 10

Our response and your options 25 Example of a search report 26

Claims 11 Abstract 12 Example specification 13 A completed example of form 1 20

Request for a substantive examination

Alternative steps

Next steps

You file form 10 29 Our response and your options 30

Filing forms 9A and 10 together 31

Successful applications 33

Speeding up the process 31

Filling in form 1 34

Filing a fresh application 32

Form 1 37 Contacts 40 Other Publications 41

Withdrawing your application before or after publication 28

Is your idea a secret?

What are ‘invention promotion’ companies?

By far the most common mistake made by people new to the world of patents is to reveal their invention too early.

Some invention promotion firms may offer you free information on how to patent and market your invention.

If you reveal your invention in any way – by word of mouth, demonstration, advertisement, article in a journal or any other way – before you apply for a patent, you are making your invention public. This could mean that you lose the possibility of being granted a patent.

Beware who you talk to If you feel the need to talk to someone before you apply, such as a potential business partner, you should ask them to sign a confidentiality agreement before you talk to them. This means they have to treat what you tell them in confidence. A solicitor or patent agent can prepare this type of agreement for you. Any conversation you have with patent agents, solicitors or our staff is confidential, so anything you tell them will not count as revealing your invention early.

Professional advice The basis of a UK patent is a legal document called a ‘specification’. Its content decides not only whether a patent can be granted, but also exactly what the rights of any patent granted cover. You can prepare a specification and apply for a patent yourself, but if you do not know a lot about patent issues, you should use a chartered patent agent. Patent agents have the legal skills needed to prepare an application for you and some will give you initial advice free of charge. So, make sure you are well prepared before any initial consultation. We are not allowed to recommend any particular adviser. However, a list of patent attorneys is available from the Chartered Institute of Patent Attorneys (CIPA) (>p40), and most classified directories list local patent agents.

Some unreliable firms promise to evaluate your invention for a fee of a few hundred pounds, then tell you that your invention has great market potential. They may offer to promote your invention to manufacturers if you pay a fee of several thousand pounds up front. Once you have paid up, they may do little or nothing for you. Reputable companies will carry out the research and provide a genuine market evaluation giving you an honest review of your invention’s potential. They don’t use bogus research and mass-produced positive reports, or charge large advance fees up front, as some unreliable companies do. They will recommend what research should be carried out to evaluate your invention and, if the outcome is positive, how they would market it. They will give you an estimated breakdown of what the costs will be at each stage of the process and the level of risk involved. If an invention promotion firm approaches you, take great care and question their claims and assurances that your invention will make money. No-one can guarantee your invention’s success. Entering into a contract with one of these companies is no different to any other major financial arrangement. Make sure your contract contains all the terms you have agreed to and be sure to get independent legal and financial advice. The Consumer Direct website at www.consumerdirect.gov. uk gives more information. You can also get a step-by-step guide to using invention promotion companies from our Central Enquiry Unit >p40. If you have a complaint about one of these companies, you should put it to the Office of Fair Trading at www.oft.gov.uk, or phone them on 08457 22 44 99.

Applying for a UK patent We process all applications for UK patents. A typical application takes three to four years to complete (see the summary overleaf), although it is possible to speed up certain aspects of the process. If you are applying without the help of a patent agent, it is important to follow the advice in this guide carefully. Many applications run into problems because they have not been well prepared, so it is worth looking at some examples of published applications before you prepare your own. There is a straightforward example on page 15, and you can find more examples on the espacenet database by going to the website at www.espacenet.com 5

1 Step 1 You prepare a ‘patent specification’ which includes: • a written ‘description’ of your invention (allowing others to see how it works and how it could be made); ‘drawings’ (to illustrate your description); • ‘claims’ (precise legal statements in the form of single sentences that define your invention by setting out its distinctive technical features); and • an ‘abstract’ (a summary that includes all the important technical aspects of your invention).

2 Step 2 You fill in and file form 1 ‘Request for grant of a patent’ with us, together with one copy of your patent specification. (Also, if you or anyone else applying are not the inventor, you will need to fill in form 7 – ‘Statement of inventorship and of right to grant of a patent’ – and tell us why you have the right to be granted a patent. This form can be filed up to 16 months after your ‘filing date’ or priority date, if there is one.)

3 Step 3 We respond by issuing a filing receipt which includes an application number and confirms the ‘filing date’ of your application.

4 Step 4 You fill in and file form 9A with us, together with the appropriate fees, asking for ‘a search’. You must do this by a given date – usually within 12 months of your filing date – to avoid your application being terminated. You also need to pay the application fee by the given date. If your application includes a declaration of priority, the deadline for filing form 9A is 2 months from your filing date or 12 months from your priority date, whichever is later.

5 Step 5 We carry out a preliminary examination to make sure your application meets certain formal requirements and search through published patents and other documents for material against which we can assess whether or not the invention you have claimed is new and inventive. We aim to issue our search report to you within four months of receiving your form 9A.

6 Step 6 We publish your patent application shortly after 18 months from your filing date (or priority date if there is one), as long as you have met the formal requirements, filed form 9A together with the appropriate fees and not asked us to withdraw your application.

7 Step 7 You fill in and file form 10 with us, together with the appropriate fee, asking for â&#x20AC;&#x2DC;a substantive examinationâ&#x20AC;&#x2122; no later than six months after publication to avoid your application being terminated.

8 Step 8 We examine your application, let you know what, if anything, needs to be amended and the period of time you have in which to respond. If your application meets all the requirements of the Patents Act 1977, we will grant your patent, publish your application in its final form and send you a certificate.

1 Preparing a UK patent specification Preparing a UK patent specification:You prepare a ‘patent specification’ – a written description of your invention with drawings, ‘claims’ and an ‘abstract’. Preparation Before applying, you or your patent agent will need to check the following. • Does your invention belong to you? If you had your idea while employed by someone else, even if it was in your own time, ask a lawyer to check your employment circumstances carefully as your employer may have some rights to your invention. • Is your invention new? This is a basic requirement for any successful patent application. If you are applying without the help of a patent agent, we strongly advise you to carry out an exploratory search to see if your invention is new and inventive and to make an honest assessment of the financial commitment your idea will need – see our booklet “Patents: Essential Reading”. A large percentage of applications fail to be granted because the idea proves not to be new, and many applications are discontinued because there is not enough commercial interest in the idea.

Forms and fees You can get a list of fees and copies of all forms from our website or from our Central Enquiry Unit >p40.

Description DOs Do type or print your description in English or Welsh, in black ink, on one side only of white A4 paper (21 x 29.7cm), with margins of at least 2cm so we can make good-quality copies. The Office will provide a translation of any material filed in Welsh. Do number each sheet of paper in order, at the top of each page (but below the margin) in the middle. Do explain your invention fully – this is important as information cannot be added after you file your application. Do make sure your description contains enough information so other people can carry out your invention, otherwise we cannot grant a patent.

DON’Ts At the time of printing this booklet, the main forms and fees for processing a patent application are: 1

No fee required

£100 for a search, £30 for the application fee

£70 for substantive examination

Description Most successful patent applications have detailed descriptions in the specification that are several pages long, describe different versions of the invention and refer to a set of drawings showing these other versions. The exact style and content varies according to the subject matter. For instance, complicated machinery, electronic equipment and chemical processes need many more pages of description and drawings than a straightforward item with few parts.

Don’t include any information that is not relevant to your invention. Don’t include the inventor’s name, a trade mark, fictitious words or the word ‘patent’ in the title. Don’t give away essential details of your invention in the title because the title is published in the ‘Patents and Designs Journal’ on our website very soon after you apply.

1 Preparing a UK patent specification The following example uses a very simple invention to show how you could structure your description.

Title Create a title that describes in general terms the subject of your invention.

Example

Example The rotation of the flowerpot stand will make sure that the plant grows straight and evenly. Preferably, the stand has a base unit with at least one solar-energy panel. Preferably, the base unit is fitted with flexible supports to absorb vibration.

Flowerpot stand

Background Use the background to explain the particular problem your invention solves.

“Is your invention new? This is a basic requirement for any successful patent application"

Example This invention relates to a rotating flowerpot stand. When plants grow in a pot, they grow in a direction towards the source of light, such as the sun. This can mean that the shape of the plant can be distorted with all the leaves facing in one direction.

Statement of invention The ‘statement of invention’ is a summary of your invention and should only include the essential features. It can be used later to form the basis of your first ‘claim’ >p11.

Example To overcome this, the present invention proposes a rotating stand to support a flowerpot, the stand being rotated by an electric motor which is powered by solar energy.

Advantages Describe the advantages of your invention, including any preferable, but not necessarily essential, features.

1 Preparing a UK patent specification Introduction to drawings If you are going to include any drawings, introduce them before you begin any detailed description.

Example An example of the invention will now be described by referring to the accompanying drawings:

Specific features can be shown in the drawings using reference numbers or letters. These references can then be used in the description to refer to the relevant features. Make sure that your reference numbers or letters are used consistently in the drawings and description. (If you label a feature as 2 in figure 1, this feature should also be 2 if it appears in figure 2.)

Drawings DOs

• figure 1 shows a plant affected by light from a single direction; and • figure 2 shows a rotating stand according to the invention.

Detailed description The rest of your description can then describe in detail one or more ways in which your invention could be made or carried out. Important – do include as much detail as possible as new information cannot be added after the date you file your application. The reference numbers refer to features in the drawings.

Example A rotatable platform 4 is attached to a base unit 6 which is fitted with flexible supports 7 designed to absorb vibration. A number of solar energy receptors 5 are fitted around the surface of the base unit. The base unit contains a low voltage electric motor which drives a series of rotating members which make contact with the internal surface of the rotating platform, causing it to turn very slowly. The motor is driven by electrical energy supplied by the solar panels.

Drawings Good-quality drawings which reflect your written description always help. Each drawing sheet can contain several figures, and each figure should be labelled clearly – ‘Figure 1’, ‘Figure 2’ and so on.

Do use black, well-defined lines on one side only of white A4 paper (21 x 29.7cm), with margins of at least 2.0cm on the left-hand side, 2.0cm on the top, 1.5cm on the right and 1.0cm on the bottom, so we can make good-quality copies. Do number your drawing sheets in order, at the top of each page (but below the margin) in the middle. For instance, if you have two drawing sheets, they should be numbered 1 of 2 and 2 of 2. Do use reference numbers or letters, which must be at least 0.3cm high, to relate parts of your drawings to parts of your written description. Do join any reference numbers or letters to the corresponding feature using a clear, continuous line. Do produce extra drawings to show other versions of your invention.

DON’Ts Don’t use coloured or lined paper. Don’t use coloured ink or pencil. Don’t draw a frame to show the margins. Don’t put anything in the margins or use borders or frames. Don’t write descriptive text on the drawings. Don’t use too much shading. Don’t fold your drawings. Don’t create ‘engineering-type’ drawings showing construction lines, materials or dimensions.

1 Preparing a UK patent specification Claims

1/2

Drafting commercially successful claims is not easy. The following advice should help you write claims that will allow us to carry out a search (step 5). However, if your claims aren’t well written or thought out, the results of our search may not be as helpful as they could be. Poorly drafted claims can also lead to problems at step 7 when you ask for a substantive examination. Claims should clearly define the essential technical features of your invention. If a patent is granted, the claims set out exactly what is protected by the patent. If you are in any doubt about the effectiveness of your claims, consult a patent agent.

Claims DOs

Do type or print your claims in English or Welsh, in black ink, on one side only of white A4 paper (21 x 29.7cm), with margins of at least 2cm, so we can make good-quality copies. The Office will provide a translation of any material filed in Welsh.

Figure 1

Do number each sheet of paper at the top of each page (but below the margin) in the middle, heading the first page ‘Claims’. The page numbers should follow on from the last page of your description – so if the last page of the description is page 4, the first page of claims should be page 5.

2/2

Do number each claim.

Do use your ‘statement of invention’ (>p9) as a starting point for writing your claims.

DON’Ts Don’t include any technical feature which is not essential or too restrictive, especially in your first claim which will be used to define your invention. For instance, if ‘flexible supports’ were included in claim 1, then all versions of the invention must have flexible supports. By making your first claim as ‘broad’ as possible, you extend the legal scope of any patent granted. If your first claim is too restrictive, other inventors will simply work around it.

4 6

Figure 2 7

Don’t use a full stop in the middle of any claim as this would make it legally imprecise. Each claim must be a single sentence. Don’t include any statements in a claim relating to commercial or other non-technical advantages, such as ‘I claim that my invention is novel’, ‘I claim £250 for my rotating flowerpot stand’, ‘I claim to be the inventor of the rotating flowerpot stand’, ‘the rotating stand will make flowers grow better’ and so on.

7 11

1 Preparing a UK patent specification Example of a first claim

Abstract

1 A rotating stand to support a flowerpot, the stand being rotated by an electric motor which is powered by solar energy.

DOs

To help make your claims concise, later claims can refer to earlier claims. These later claims are known as ‘dependent claims’ and are considered to include all the information in the earlier claim or claims.

Do type or print your abstract in English or Welsh, in black ink, on one side only of white A4 paper (21 x 29.7cm), with margins of at least 2cm so we can make good-quality copies. The Office will provide a translation of any material filed in Welsh.

Do include preferred features in later claims.

Example of a dependent claim 2 A rotating stand according to claim 1, in which the stand has a base unit with at least one solar-energy panel. 3-A rotating stand according to claim 2, in which the base unit is fitted with flexible supports to absorb vibration.

Abstract An abstract is a brief summary of your invention. When an application is published, the abstract appears on the front of the document and is used by us and the public for search purposes. We may edit your abstract.

Do number the page at the top (but below the margin), in the middle, heading the page ‘Abstract’. The page number should follow on from the last page of your claims – so if the last page of your claims is page 5, your abstract should be page 6. Do include a title – this should match the title of your description. Do tell us which of your drawings you think best illustrates the abstract. Your abstract can include reference numbers or letters which refer to this figure.

DON’Ts Don’t use more than 150 words. Don’t provide a separate drawing for use only with your abstract.

Example Abstract Flowerpot stand A rotating flowerpot stand includes a rotatable platform 4 which is attached to a base unit 6. The base unit contains a low-voltage electric motor which drives the rotatable platform. The base unit may include one or more solar-energy panels 5 which power the electric motor. The base unit may have flexible supports 7 to absorb vibration. Use figure 2.

1 Preparing a UK patent specification Filing your claims and abstract

•

Legally, it is possible to file your application without any claims or an abstract in your specification. However, please remember the following.

If you don’t file your abstract or claims by the given deadline, we will treat your application as being withdrawn.

•

Your application cannot be ‘searched’ if it has no claims.

•

If you file your abstract or claims later, you cannot add any information that was not in your original description.

For these reasons, it is usually best to draft your claims and abstract at the same time as your description.

“it is usually best to draft your claims and abstract at the same time as your description.”

1 Preparing a UK patent specification Example specification The following pages show an example of a patent specification and filled-in form 1. The fictional applicant, Ann Other, has thought of a way of improving her child’s bicycle stabilisers using various types of shock absorber or cushioning. She can’t recall having seen anything similar to her idea in the shops, so she has decided to make a patent application herself before telling anybody else of her invention. If Ann had carried out a basic patent search herself using the espacenet database (on website www.espacenet.com) before drafting the specification, she would probably have found a number of earlier patent documents which show stabilisers similar to her own invention. For instance, a United States patent from 1992, US 5100163, shows a stabilising unit with an adjustable suspension strut. This US document, along with other documents showing similar devices, means Ann would not be able to get a patent for the invention defined in her claims because it is not new. The patent specification is not perfect, but it would provide enough information for us to perform a search if Ann asked for one. If Ann did decide to ask for a search (>p24), she would receive a search report (>p26) and copies of earlier documents which are relevant to her application. Ann could then decide whether or not to continue with her patent application.

Professional help If Ann decided to get professional help from a patent agent, as well as offering advice on the likelihood of achieving a commercially useful patent, they would have been able to help her draft her specification if she did want to continue with it.

“The patent specification is not perfect, but it would provide enough information for us to perform a search if Ann asked for one”.

1 Preparing a UK patent specification: Example specification

1 Bicycle stabilizer This invention relates to a device for stabilising a child’s bicycle. When children are learning how to ride a bicycle, an additional pair of stabilising wheels are often fitted either side of the bicycle’s rear wheel to prevent toppling of the bicycle. However, the use of conventional stabilisers can lead to a number of difficulties. If a rigid stabilising unit is fitted to a bicycle, the rider can become reliant on the unit and will not learn how to balance the bicycle using their own body weight. Furthermore, on uneven ground there is a risk that the bicycle will become immobilised if the rear bicycle wheel loses contact with the ground, or that the stabilising unit will cause jolting of the bicycle. To overcome these problems, the present invention proposes a bicycle stabilising unit with attachment means for attaching the unit to a bicycle, a groundengaging wheel which can freely rotate about an axis, and cushioning means such that the axis of the wheel can be displaced relative to the attachment means. The cushioning means is preferably provided by a damped suspension strut, although the cushioning means may also be provided by other means, such as a torsion bar or spring. The cushioning means may be adjustable so that the degree of cushioning can be modified to suit the terrain and the rider’s ability. The stabilising unit may be retractable so that the ground-engaging wheel may be stored in a non-ground-engaging position. The invention will now be described solely by way of example and with reference to the accompanying drawings in which: Figure 1 shows a pair of stabilising units, one fitted either side of the rear wheel of a bicycle, Figure 2 shows a stabilising unit with an alternative cushioning mechanism, Figure 3 shows a stabilising unit with another cushioning arrangement. In figure 1, a stabilising unit 1 includes a vertical member 2 which is attached to the side of a bicycle by mounting bolts 3, 4. The lower end of the vertical member is freely hinged to a substantially horizontal member 5 which carries a ground-engaging wheel 6. The wheel may be solid or may have an inflatable tyre. A strut 7 with a sprung shock-absorbing unit 8 is connected between the vertical and horizontal members, and this allows vertical displacement of the groundengaging wheel in order to cushion impacts from an uneven road surface. If two stabilising units are fitted, one either side of the bicycle’s rear wheel, then the rider will feel supported but will also develop confidence in leaning the bicycle over when negotiating a bend. The degree of cushioning can be varied by adjusting the compression of the shock-absorbing unit, using conventional adjusting means such as a screw-threaded end-stop.

1 Preparing a UK patent specification: Example specification

The shock-absorbing strut 7 may be permanently attached to the vertical and horizontal members 2, 5, for instance using welded connections. Alternatively, the shock-absorbing strut may be easily detachable from one or both members, for instance by using a quick-release mechanism, allowing the ground-engaging wheel and the horizontal member to be folded away if the rider is confident enough to travel without the assistance of the stabilising unit. Figure 2 shows an alternative embodiment in which the vertical and horizontal members 2 and 5 are rigidly attached to each other, for instance by using a rigid strut 9. The cushioning means is provided by mounting the ground-engaging wheel 6 in a sprung housing 10 on the outer end of horizontal member 5. The groundengaging wheel is therefore vertically displaceable relative to the rest of the stabilising unit. Figure 3 shows a further alternative embodiment in which the vertical and horizontal members 2 and 5 are connected via a hinge which includes a torsion spring 11. The torsion spring allows the horizontal member to rotate through a limited angle range.

1 Preparing a UK patent specification: Example specification

Claims 1. A bicycle stabilising unit comprising attachment means for attaching the unit to a bicycle, a ground-engaging wheel which can freely rotate about an axis, and cushioning means such that the axis of the wheel can be displaced relative to the attachment means. 2. A bicycle stabilising unit according to claim 1, in which the cushioning means is provided by a damped suspension strut. 3. A bicycle stabilising unit according to claim 1, in which the cushioning means is provided by a housing which supports the ground-engaging wheel, the housing including at least one slot which allows linear displacement of the wheel, perpendicular to its axis, the housing also having at least one spring which controls the displacement of the wheel. 4. A bicycle stabilising unit according to claim 1, in which the cushioning means is provided by a torsion bar or torsion spring. 5. A bicycle stabilising unit according to any of the preceding claims, in which the cushioning means is adjustable so that the degree of cushioning can be varied. 6. A bicycle stabilising unit according to claim 2, in which the damped suspension strut is detachable so that the ground-engaging wheel is stored in a non-ground-engaging position.

1 Preparing a UK patent specification: Example specification

2 Abstract Bicycle stabilising unit A bicycle stabilising unit 1, includes attachment means 3,4 for attaching the unit to a bicycle, a ground-engaging wheel 6 which can freely rotate about an axis, and cushioning means 8 such that the axis of the wheel can be displaced relative to the attachment means. Figure 1 to accompany abstract

1 Preparing a UK patent specification: Example specification

1 Preparing a UK patent specification: Example specification Patents Form 1 Patents Act 1977 (Rule 12)

Request for grant of a patent

Concept House Cardiff Road Newport South Wales NP10 8QQ

(An explanatory leaflet on how to fill in this form is available from the Office)

Application number GB 1. Your reference:

BS1

(optional)

2. Full name, address and postcode of the applicant or of each applicant (underline all surnames):

ANN OTHER 1 ANY STREET ANYTOWN AN1 1AA

Patents ADP number (if you know it):

3. Title of the invention:

BICYCLE STABILISER 4. Name of your agent (if you have one):

â&#x20AC;&#x153;Address for serviceâ&#x20AC;? to which all correspondence should be sent. This may be in the European Economic area or Channel Islands (see warning note below)

AS ABOVE

(including the postcode)

Patents ADP number (if you know it): Country

5. Priority declaration: Are you claiming priority from one or more earlier-filed patent applications? If so, please give details of the application(s): 6. Divisionals etc: Is this application a divisional application, or being made following resolution of an entitlement dispute about an earlier application? If so, please give the application number and filing date of the earlier application: 7. Inventorship: (Inventors must be individuals not companies)

(if you know it)

Number of earlier UK application

Date of filing (day / month / year)

(Please tick the appropriate boxes)

Are all the applicants named above also inventors?

YES

If yes, are there any other inventors?

YES

8. Are you paying the application fee with this form?

(REV DEC07)

Application number

UK Intellectual Property Office is an operating name of the Patent Office

Patents Form 1

1 Preparing a UK patent specification: Example specification Patents Form 1 9. Accompanying documents: please enter the number of pages of each item accompanying this form: Continuation sheets of this form:

Description:

Claim(s):

Abstract:

Drawing(s):

If you are not filing a description, please give details of the previous application you are going to rely upon:

Country

Application number

Date of filing (day / month / year)

10. If you are also filing any of the following, state how many against each item. Priority documents: Statement of inventorship and right to grant of a patent (Patents Form 7): Request for search (Patents Form 9A): Request for substantive examination (Patents Form 10):

Any other documents: (please specify)

11. I/We request the grant of a patent on the basis of this application. Signature(s):

A. Other

12. Name, e-mail address, telephone, fax and/or mobile number, if any, of a contact point for the applicant:

Date:

20.08.03

ANN OTHER 01231 345 678 annother@email.com

Warning After an application for a patent has been filed, the Comptroller will consider whether publication or communication of the invention should be prohibited or restricted under section 22 of the Patents Act 1977. You will be informed if it is necessary to prohibit or restrict your invention in this way. Furthermore, if you are resident in the United Kingdom and your application contains information which relates to military technology, or would be prejudicial to national security or the safety of the public, section 23 of the Patents Act 1977 prohibits you from applying for a patent abroad without first getting written permission from the Office unless an application has been filed at least 6 weeks beforehand in the United Kingdom for a patent for the same invention and either no direction prohibiting publication or communication has been given, or any such direction has been revoked. Until such time or until the revocation of any direction, for any such application the address for service referred to at part 4 above must be in the United Kingdom. Although you may have an address for service in the Channel Islands, any agent instructed to act for you must reside or have a place of business in the European Economic Area or Isle of Man. Notes A leaflet on how to fill in this form is available from the Office. If you would like a copy of the leaflet it is available on our website at http://www.ipo.gov.uk/patent/info/fact01.pdf or alternatively you could telephone 08459 500505 or send an email to enquiries@ipo.gov.uk to request a copy.

(REV DEC07)

Patents Form 1 21

2 Request for grant of a patent Request for grant of a patent: You fill in and file form 1, ‘Request for grant of a patent’, with us, together with your patent specification. You file form 1

DOs

To begin the application process you need to fill in form 1 and send this to us along with one copy of your specification. For our address >p40.

Do check that your patent specification includes a detailed description, drawings (if appropriate), claims and an abstract as described on pages 8 to 13 of this guide.

If you are not the inventor, you will need to fill in form 7, ‘Statement of inventorship and of right to grant of a patent’.

Do make sure you have answered all the questions that apply to you and have signed the form. For instructions on how to fill in form 1 >p34.

We have included a copy of form 1 for you to use at the back of this booklet. If you need more copies or a copy of form 7, you can get them from our website or from our Central Enquiry Unit.

Do remember to make copies of everything you send to us for your own reference.

“To begin the application process you need to fill in form 1 in English and send this to us along with your specification”.

3 Request for grant of a patent Request for grant of a patent: We respond by issuing a filing receipt which includes an application number and confirms the ‘filing date’ of your application. Our response

Your options

We will acknowledge we have received your application by sending you a filing receipt which includes:

Once you file an application, you have a limited period of time to make some important decisions, such as whether you want to apply for similar patent protection in any other countries – see “Patents: Essential Reading” – and whether you need to improve your original application >p32. It may be in your best interests to get professional advice from a patent agent before making these decisions.

•

an application number; and

•

a ‘filing date’ – confirming the date we received your application.

“Once you file an application, you have a limited period of time to make some important decisions"

4 Request for a search Request for a search: You fill in and file form 9A with us, together with the appropriate fees, asking for ‘a search’. You file form 9A and the application fee To continue with your patent application you need to fill in form 9A, a request for a search, and send it to us with the appropriate fees. If you haven’t received form 9A you can get a copy from our website or from our Central Enquiry Unit.

DOs

If you do not file form 9A or pay the appropriate fees by the date we gave you when we received form 1, we will treat your application as if it has been withdrawn.

Do remember to make copies of everything you send to us for your own reference.

Warning: if your application includes a declaration of priority, the deadline for filing form 9A is the later of 2 months from your filing date or 12 months from your priority date >p32. You can file form 9A and form 10 (step 7) at the same time >p31.

“When a search is performed, an examiner looks for documents that will help us to decide whether your invention is new and inventive”.

Do make sure you have answered all the questions on the form and signed it. You can get instructions on how to fill in form 9A from our website or from our Central Enquiry Unit. Do contact us for the correct fees and ways to pay.

5 Request for a search Request for a search: We carry out a preliminary examination to make sure your application meets certain formal requirements and search through published patents and other documents for material against which we can assess whether or not the invention you have claimed is new and inventive. Our response Preliminary examination We aim to perform the preliminary examination and issue a report, if necessary, within one month of receiving the application fee. The preliminary examination checks to make sure your application meets the formal legal requirements of the Patents Act 1977 and Patents Rules 2007. Our report will identify any problems with your application and will provide guidance on how to proceed.

You can ask for more copies of the documents we find on form 9A. There is a fee for each extra set you ask for. We will categorise all the relevant documents found using internationally recognised codes as follows – X, Y or A. •

Category X – in general, used for documents that include all the main features of your invention, showing that your idea is not new.

•

Category Y – shows that a combination of features from two or more existing documents suggest that your idea is not inventive.

•

Category A – used for documents that show what has been done previously in the technical area of your invention. We have included these documents for your reference.

Search We usually carry out a ‘search’ within four months of receiving form 9A and the accompanying fee, although this may take a little longer in some areas of technology. When a search is performed, an examiner looks for documents that will help us to decide whether your invention is new and inventive. These documents may have been published anywhere in the world and may include published patent applications and technical journals. The examiner is looking to see if the technical features set out in your claims are already known. In some cases, we may search only some of the claims, especially if the claims define more than one invention. And in a few cases, we may not be able to perform a search at all. We will write to explain why a search of a particular claim is not possible.

Search report If we find any relevant documents, we will list these in our search report, which also identifies any particularly relevant passages in those documents – an example of a search report is shown on the following page. We will send a copy of this report to you or your agent, together with a copy of each of the relevant documents and a covering letter which gives more information about the search. If you are not using a patent agent, we will also send you a factsheet which will help you understand and respond to the report.

Your options When you receive the search report, you should study the report and the relevant documents carefully before deciding how to proceed. If your invention seems to have been described in any documents that were published before your application’s filing date or priority date, you may decide that it is not worth continuing with your application. On the other hand, you may decide that what you have invented is not the same as what has been described in the relevant documents and that you want to continue with your application. Another possibility worth considering is filing a new application with more information. This may be advisable if you realise that your first application did not contain enough detailed information. You can either file a new application within 12 months, claiming priority from your original application (>p32), or, as long as your application has not been published, you can withdraw your application (>p28) and make a new one. If you decide to continue with your original application, the next step is publication.

5 Request for a search Request for a search: Example of a search report The example below relates to the bicycle stabiliser application shown on pages 15 to 21. The examiner has listed six documents which are considered to be relevant to the â&#x20AC;&#x2DC;claimedâ&#x20AC;&#x2122; invention. Five of them are listed as X documents, which means they include information that show the invention is not new or is obvious. Two are listed as Y documents, which means that the information in these two documents could be combined to show that the invention defined in claim 6 is obvious.

6 March 2007

6 Publication Publication: We publish your patent application shortly after 18 months from your filing date (or priority date if there is one), as long as you have met the formal requirements, filed form 9A together with the appropriate fee and not withdrawn your application. We publish your application There are certain formal requirements that you must meet before your application can be published.

You can choose not to have your application published by withdrawing it (>p28), but we would advise you to speak to a patent agent before doing this. When we publish your application, we will:

If there are any formal objections set out in our preliminary examination report (see step 5 – our response), you must overcome these objections before your application can be published. If you do not overcome the formal objections, we cannot publish your application and it may be refused. If there are no outstanding formal requirements, your application will be published shortly after 18 months from the filing date. Along with our search report, your application will be published exactly as you filed it, together with the latest version of any new claims you have filed since then. All correspondence between us will be open to public inspection after the publication date, unless you have asked us to treat it in confidence. If you do ask us not to reveal any information you provide, we will need a valid reason, such as that it contains commercially sensitive information. If you have any information that you would rather not be made public (especially technical developments to your invention that were not included in your patent specification) do not include it in any correspondence to us. It could be made public and this may prevent you getting patent protection for those developments.

•

print and publish paper copies that anyone can buy or see at the office, or at the British Library; and

•

place a notice in the Patents and Designs Journal on our website to say that your application has been published.

You can get more detailed information about publication from our Central Enquiry Unit or from our website >p40. Your options Publication is an important landmark for many reasons. Even if there are no outstanding formal requirements to prevent publication, you should decide, before publication, if you want to withdraw your application or not >p28.

“When we publish your application, we will print and publish paper copies that anyone can buy or see at the office, or at the British Library"

6 Publication Withdrawing your application

Continuing with your application after publication

Common reasons for an application to be withdrawn are:

As a result of publication:

•

the invention is not new;

•

anyone can find out about your invention; and

•

there is not enough commercial interest; or

•

the idea needs further development.

anyone can send us comments on whether the invention should be patented or not. We will send you a copy of any comments we receive and take account of them when we examine your application.

If you ask to withdraw your application, you cannot have it reinstated later. So, it may be in your best interests to get professional advice from a patent agent before making any decisions.

Withdrawing your application to prevent publication If you decide to do more development work, you may not want anyone else to know what you have done or how far you have got, so publication may not be a good idea. If you decide to withdraw your application before publication, we must receive your written instruction before we complete our preparations for publication. You can send us your written withdrawal instruction by post or you can e-mail it to withdraw@ipo.gov.uk

Withdrawing your application after publication If your application is published before you withdraw it, publication can be used to prevent others being granted a patent for a similar invention, but beware, this also applies to any similar applications you make later yourself. It will also mean you have no rights or control over who can use your invention in the UK or in any other country where you do not have patent protection.

“Shortly after your application is published, you may be approached by invention promotion companies"

If your patent is granted, your published application may put off someone from making a similar product or using a similar process. It is possible to claim damages for infringing actions which happen between publication and grant, depending on how close the claims published at step 8 are to those published at step 6.

Important Shortly after your application is published, you may be approached by invention promotion companies. Before you respond or agree to any discussions, please read the advice on page 5.

7 Request for a substantive examination Request for a substantive examination: You fill in and file form 10 with us, together with the appropriate fee, asking for ‘a substantive examination’ no later than six months after publication, to avoid your application being terminated.

“If you decide that you want to continue with your application, you will need to fill in form 10 to have your application ‘examined’”.

You file form 10

DOs

If you decide that you want to continue with your application, you will need to fill in form 10 to have your application ‘examined’.

Do make sure you have answered every question on the form and signed it. You can get instructions on how to fill in form 10 from our website or from our Central Enquiry Unit.

You should send us your filled-in form 10 and the appropriate fee no later than six months from the date your application was published. If you haven’t received form 10, you can get a copy from our website or from our Central Enquiry Unit >p40.

Do contact us for the correct fees and ways to pay. Do remember to make copies of everything you send to us for your own reference.

If you do not file form 10 and pay the appropriate fee by the given deadline, your application will be terminated. You can file form 10 at the same time as form 9A >p31.

7 Request for a substantive examination Request for a substantive examination: We examine your application, let you know what, if anything, needs to be amended, and give you the period of time you have in which to respond. Our response

Your options

Requests for substantive examinations are placed in a queue. When your application reaches the front of the queue, a specialist examiner will thoroughly examine your patent application to see if it meets all the requirements of the Patents Act 1977.

You could respond to the report by filing amended pages to your application, for example a new set of claims, to try to overcome the objections in the report.

If your application meets all the requirements, you will receive a letter that explains when your patent will be granted. We cannot normally grant a patent until at least three months after the application is published. This gives people a chance to make comments and allows us to make sure that no similar patents with earlier application dates have been published since. If your application does not meet all the requirements, you will receive an examination report which explains our objections to your application. The report will give you a period of time to respond, usually four months. It’s at this point that the advantages of a well-drafted specification become clear.

You are not allowed to add new information to your application after the filing date, so it is common for claims to be amended by bringing one or more features from the description, or from later claims, into claim 1. However, you should consider your amendments to the claims very carefully because they will affect any patent that is granted. If you are in any doubt, contact a patent agent. It is possible that your amendments may lead to new objections being raised by the examiner. You could respond to the report by giving reasons why you think the examiner’s arguments are not justified. The process of amendment or discussion may be repeated until your application is either allowed or refused. If we think your application is likely to be refused, we let you know and you will have an opportunity to put your case to a senior official at the UK Intellectual Property Office.

A good specification should provide a number of ways in which the examiner’s objections can be overcome. If you have a poorly drafted specification, it may be impossible to amend the specification to meet the requirements of the Patents Act.

“If we think your application is likely to be refused, we let you know and you will have an opportunity to put your case to a senior official at the UK Intellectual Property Office”.

7 Alternative steps Filing forms 9A and 10 together

Accelerated search

If you send us forms 9A and 10 on the same day, we will assume that you want a combined search and examination. If you don’t want this to happen, you need to tell us in writing.

We process all searches as quickly as we can, which usually means they are performed within four months of your request. However, if you have a strong reason for asking for a search to be completed by a particular date, let us know the details and we will try to meet your needs.

Combined search and examination This means your application will be substantively examined at the same time as the search is performed. You will then normally receive a letter which includes a search report, accompanied by a report on any objections to your application. Receiving a combined report gives you the following advantages.

As long as the patent specification you include with your application contains at least one claim, you can file your search request (form 9A with the appropriate fees) at the same time as you send us your application (form 1), or immediately after your filing date.

Accelerated publication

• An early indication of your chances of having a patent granted.

Before asking for an accelerated publication, we strongly advise you to get advice from a patent agent.

• A chance to amend your specification, especially the claims, before publication.

Accelerated publication could be advantageous if you are aware of possible infringement, as your application being published can be seen as a warning of future legal action. However, there is no guarantee that your application will lead to a valid patent and no guarantee that an infringement action would succeed.

• A chance to withdraw your application before publication if it becomes clear a patent is unlikely to be granted. However, a combined report has the following disadvantages. • If the documents on the search report clearly show that your invention is not new, you might regret paying the fee for the substantive examination.

The disadvantage of early publication is that it could cut short your investigation into the potential market and could alert other people to your activities, as once an application is published all the information in it is open to public inspection.

Accelerated examination • Relevant documents may not be available to the examiner at the search stage as they could still be in the publication process. This could mean important objections are made at a later stage when the relevant documents become available.

You need to provide a good reason for asking for an accelerated substantive examination. If we accept your request, we aim to perform the examination within eight weeks.

Separate search and examination If you write to ask for a separate search and examination and the search reveals documents that show that your application will not be successful, as long as the examination report has not been issued, you can withdraw your form 10 and receive a refund. We can also give you a refund if you change your mind about a request for a search, as long as you tell us in writing before the search report is issued.

Speeding up the process There are several ways the application process can be speeded up.

7 Alternative steps Filing a fresh application There are various reasons why you may decide your initial application is not good enough. You may have: • developed your invention and realised your initial specification does not protect the new development; • decided your own attempt at a specification is not good enough and you want to invest in a professionally drafted one; or • received a search report which shows that your invention is not new. You could choose to withdraw your application and start again >p28. However, this may not be the best option. If it is less than 12 months since you filed form 1, you could consider making a new application with a declaration of priority from your original one by filling in section 5 of form 1. Declaring priority from an earlier application means any information in your later application that is also in your earlier one is treated as if it has the same filing date as the earlier application. This earlier filing date is then known as the ‘priority date’. However, it is important to realise that this priority date only applies to the information that is common to both applications. Any new information will be given the filing date of the later application. The advantage of claiming priority is that the information repeated in your later application takes the date of your earlier application, which may be important if someone else has filed a similar application after your first but before your second application. The disadvantage of claiming priority is that some important processing dates for your later application will arrive more quickly. For example, if you file a new UK application which includes a declaration of priority from an application filed exactly 12 months earlier, form 9A and the associated fees would have to be filed within 2 months of the new filing date. The deadline for filing claims and an abstract would also be earlier. Also, your new application would be published just six months after the new filing date, instead of 18. If you want to file a fresh application, with a declaration of priority from an earlier one, it is crucial that you make your new application before the anniversary of the filing date of the first application. As with all decisions about patents, it is best to consult a patent agent.

“As with all decisions about patents, it is best to consult a patent agent."

7 Next steps Successful applications If your application meets all the requirements in the Patents Act 1977 and Patents Rules 2007, we will grant your patent, publish your application in its final form and send you a certificate.

Important A UK patent gives the owner rights within the UK over an invention for up to 20 years – but only if the patent is kept in force by paying renewal fees every year. If you do not pay your renewal fees, your patent rights will end.

For most UK patents, the first renewal fee is due on the last day of the calendar month in which the fourth anniversary of the filing date falls. The filing date is the date your application was filed (not the date the patent was granted). For example: if the application was filed on 15 April 2004, the first renewal fee would be due on 30 April 2008. Renewal fees are then due every year on the same date for the next 15 years. There is more information about patents and renewal fees in our booklet patents essential reading. For a copy, visit our website or contact our Central Enquiry Unit >p40.

“If your application meets all the requirements in the Patents Act 1977 and Patents Rules 2007, we will grant your patent”

7 Filling in form 1 Filling in form 1: After you have prepared your patent specification, you need to fill in form 1 – a copy is included opposite for you to use and there is a completed example on pages 20 and 21. Please fill in all sections that apply to your application in English, using black ink and BLOCK CAPITAL letters. Do read the notes at the end of the form carefully. If you have any questions, please contact our Central Enquiry Unit >p40. Section 1

Section 6

You can either leave this space blank or enter any reference you would like us to quote on our letters to you.

Section 2

You should only fill in this section if you are filing a divisional application – this can happen if you have already filed an application which includes more than one invention - or in very rare circumstances following an entitlement dispute.

Enter the full name, address and postcode of the person applying, underlining the surname.

Section 7

If there is more than one applicant, please give details for every applicant, continuing on a separate sheet of paper if necessary.

If you answer ‘No’ to the first question, you will need to fill in form 7. You will also need to fill in form 7 if one of the applicants is a company or organisation or if you answer ‘Yes’ to the second question.

If the applicant is a company, enter the country of incorporation, including the province or state for Canadian or US companies.

We will send you a copy of form 7 if you need one. Copies are available from our Central Enquiry Unit or from our website >p40.

We will enter the ADP number – this is the name and address reference we give to each applicant and agent.

Section 8

Section 3

If you send the application fee (currently £30) with form 1, we will carry out a preliminary examination. You may prefer to pay the application fee with form 9A.

Enter the same title as on your specification.

Back of form 1 (page 38) Section 4 If you give the name of an agent, you are authorising that person to act for all of the applicants. You must supply an address for service (an address in the European Economic Area (EEA) for us to write to). This can be the same as an applicant’s address. If you do not give an ‘address for service’, we will send our initial letter to the first address given in section 2.

Section 5 You need to fill in this section only if you are declaring priority from one or more previous applications. In most circumstances, you can declare priority only from one or more applications filed within the last 12 months. See ‘Making a fresh application’ >p32. If you are declaring priority, you must give the country, filing date or dates and application number or numbers of the previous application or applications.

Section 9 Enter the number of each type of page you are sending – don’t count copies of the same page or document.

Section 10 Explain here anything else you have included with your application and why.

Section 11 All applicants, or your agent if you have one, must sign the form here.

Section 12 Please fill in this section as fully as possible so that we can contact you if we need to.

7 Form 1

Form 1

Blank Page

Patents Form 1 Patents Act 1977 (Rule 12)

Request for grant of a patent

Concept House Cardiff Road Newport South Wales NP10 8QQ

(An explanatory leaflet on how to fill in this form is available from the Office)

Application number GB 1. Your reference: (optional)

2. Full name, address and postcode of the applicant or of each applicant (underline all surnames):

Patents ADP number (if you know it):

3. Title of the invention:

Additional copies of this form are available from our website or Central Enquiry Unit

4. Name of your agent (if you have one):

â&#x20AC;&#x153;Address for serviceâ&#x20AC;? to which all correspondence should be sent. This may be in the European Economic area or Channel Islands (see warning note below) (including the postcode)

Patents ADP number (if you know it): Country

Application number (if you know it)

Number of earlier UK application

Date of filing (day / month / year)

(Please tick the appropriate boxes)

Are all the applicants named above also inventors?

YES

If yes, are there any other inventors?

YES

8. Are you paying the application fee with this form?

(REV DEC07)

UK Intellectual Property Office is an operating name of the Patent Office

Patents Form 1

Patents Form 1 9. Accompanying documents: please enter the number of pages of each item accompanying this form: Continuation sheets of this form: Description: Claim(s): Abstract: Drawing(s): If you are not filing a description, please give details of the previous application you are going to rely upon:

Country

Application number

Date of filing (day / month / year)

(please complete for your reference)

Any other documents: (please specify)

11. I/We request the grant of a patent on the basis of this application. Signature(s):

Date:

(REV DEC07)

Patents Form 1

Date form sent to the Office

12. Name, e-mail address, telephone, fax and/or mobile number, if any, of a contact point for the applicant:

Blank Page

Contacts UK Intellectual Property Office

Patent Information Centres (PATLIBs)

If you need help with any aspect of the application process, or need information on current fees and filling in any of our forms, visit our website or contact our Central Enquiry Unit.

Central Enquiry Unit www.ipo.gov.uk enquiries@ipo.gov.uk 08459 500 505 text 0845 222 250 Concept House, Cardiff Road Newport, South Wales NP10 8QQ

Some PATLIBs in the UK hold clinics where you can have a free consultation with a patent agent or a business advisor. For details of your nearest PATLIB centre, visit http://patlib.european-patent-office.org/directory/display_ centres.pl?ccode=GB or contact our Central Enquiry Unit >p40.

If you would like to visit us in person, either in Newport or London, please call our Central Enquiry Unit first to arrange an appointment.

The British Library

Where to send filled-in forms

The Business and Intellectual Property Centre at the British Library gives you access to the information you need to develop and market your ideas. Free clinics to help you search patents are held at least once a month.

•

The Comptroller Cardiff Road, Newport, South Wales NP10 8QQ

or •

The Comptroller Harmsworth House, 13–15 Bouverie Street, London EC4Y 8DP

Patent agents We cannot recommend any particular patent agent, but you can get a list of all patent agents registered in the UK from the address below. Local patent agents are usually listed in classified directories.

The Chartered Institute of Patent Attorneys (CIPA) www.cipa.org.uk 020 7405 9450 95 Chancery Lane, London WC2A 1DT

For more information visit the British Library’s website at www.bl.uk/business or phone 020 7412 7903.

Other Publications Patents

PATENTS: Essential Reading

PATENTS: Application Guide

1. Patents: Essential Reading

Patents: Basic Facts This booklet provides information you need to consider before committing yourself to applying for a patent, a summary of the patenting process in the UK and abroad.

2. Patents: Application Guide

3. Patents: Basic Facts

If you invent something that could be commercially successful, you may be interested in applying for a patent.

UK Intellectual Property Office is an operating name of the Patent Office

Designs

How to Apply to Register a Design

4. How to Apply to Register a Design Designs: Basic Facts

5. Designs: Basic Facts

This booklet will help you apply to register a design in the United Kingdom. It also includes information about applying to register a design outside the UK.

This leaflet provides basic information on some areas of design protection.

UK Intellectual Property Office is an operating name of the Patent Office

Trade Marks Trade Marks: Essential Reading

Trade Marks: Application Guide

7. Trade Marks: Essential Reading 8. Trade Marks: Application Guide

Trade Marks: Basic Facts This booklet, together with the booklet ‘Trade marks: application guide’, will help you apply to register a trade mark in the UK.

This booklet, together with the booklet ‘Trade marks: essential reading’, will help you apply to register a trade mark in the UK.

9. Trade Marks: Basic Facts This leaflet provides basic information on some areas of trade marks. It is not a reference book and has no legal authority.

UK Intellectual Property Office is an operating name of the Patent Office

COPYRIGH T

Additional

T DES IG

TEN PA

TR A DE S KS M RK AR MA

Search and Advisory Service

10. Search and Advisory Service

UK Intellectual Property Office is an operating name of the Patent Office

All Publications are available through the UK Intellectual Property Office Website: www.ipo.gov.uk or by phoning our Central Enquiry Unit on 08459 500 505 To order any of the above publications, please tick the box next to the ones you want, fill in your name and address over the page, and return the form to: Central Enquiry Unit, Concept House, Cardiff Road, Newport, NP10 8QQ. 41

UK Intellectual Property Office Publications order form

Name:

Address:

Phone number:

Fax number:

E-mail:

Any other comments you may wish to add:

After filling in your information, please tear this page off and return it to: Central Enquiry Unit Concept House Cardiff Road Newport NP10 8QQ. www.ipo.gov.uk

CUSTOMER SERVICE EXCELLENCE

PATENTS: Essential Reading

This booklet provides information you need to consider before committing yourself to applying for a patent, a summary of the patenting process in the UK and abroad.

UK Intellectual Property Office is an operating name of the Patent Office

All information contained in this document was correct at the time of going to print, and is available in alternative formats on request. For further Information please visit our website at:- www.ipo.gov.uk or contact us on:- 08459 500 505 >p...We use this symbol when there is more information on the page number shown.

Introduction This booklet provides information you need to consider before committing yourself to applying for a patent, a summary of the patenting process in the UK and abroad, and information about renewing, enforcing and exploiting your patent rights. Although this is not a complete guide, this booklet, together with our â&#x20AC;&#x153;Patents: Application Guideâ&#x20AC;?, should give you the information you need if you decide to go ahead and apply for a patent on your own.

Content It’s your invention

Look after it

Should you patent it?

Can you patent it?

Make the most of it!

Protect it

Is your idea a secret? 3 Beware who you talk to 3 Professional help 3 What are “Invention Promotion Companies? 3

What is intellectual property? 4 What is a patent? 4 What kind of things do patents cover? 4 Is a patent the best way to protect an invention? 4 Is there a patent mark? 4 Is a patent the only way to protect an invention? 5 Should you patent it? 6

Is it a new invention? 7 Is it the right kind of invention? 7 Are you entitled to a patent? 7

Can a patent make you money? 8 Design and prototypes 8 Financial implications 8 Financial support 8 Business strategy 9 Potential partners 10

When should you apply for a patent? 11 How necessary is it to get professional help? 11 Applying for a UK patent 11 Alternatives to the application process 11 Applying for an overseas patent 14 International applications 14 European applications 15 Individual national applications 15

It’s your patent

1 2 3 Don’t lose it

Exploit it

Enforce it

Renewals 16 Payment 16 Restoring patent rights 17

Making the most of your patent 18 Manufacturing your invention yourself 18 Subcontracting manufacture 18 Selling your patent 18 Licensing your patent 18 Licences of Right 19 Transferring your patent rights 19

Enforcing your rights 20 Glossary of patent terminology 22 Alternative solutions to litigation 20 Infringement 20 Other common areas of dispute 20 Legal action against you 21 Insurance against legal costs 21

Other information Other sources of information 26 Contacts 28 Other Publications 31

It’s your invention: Look after it Is your idea a secret?

What are ‘invention promotion’ companies?

By far the most common mistake made by people new to the world of patents is to reveal their invention too early.

Some invention promotion firms may offer you free information on how to patent and market your invention.

you reveal your invention in any way – by word of mouth, If demonstration, advertisement, article in a journal or any other way – before you apply for a patent, you are making your invention public. This could mean that you lose the possibility of being granted a patent.

Beware who you talk to If you feel the need to talk to someone before you apply, such as a potential business partner, you should ask them to sign a confidentiality agreement before you talk to them. This means they have to treat what you tell them in confidence. A solicitor or patent agent can prepare this type of agreement for you. Any conversation you have with patent agents, solicitors or our staff is confidential, so anything you say will not count as revealing your invention early.

Professional help The basis of a UK patent is a legal document called a ‘specification’. Its content decides not only whether a patent can be granted, but also exactly what the rights of any patent granted cover. You can prepare a specification and apply for a patent yourself, but if you do not know about patent issues, you should use a chartered patent agent. Patent agents have the legal skills needed to prepare an application for you and some will give initial advice free of charge. So, make sure you are well prepared before any initial consultation. We are not allowed to recommend any particular adviser However, a list of patent agents is available from the Chartered Institute of Patent Attorneys (CIPA) (>p29) and most classified directories list local patent agents.

Reputable companies will carry out the research and provide a genuine market evaluation giving you an honest review of your invention’s potential. They don’t use bogus research and mass-produced positive reports, or charge large advance fees up front, as some unreliable companies do. They will recommend what research should be carried out to evaluate your invention and, if the outcome is positive, how they would market it. They will give you an estimated breakdown of what the costs will be at each stage of the process and the level of risk involved. If an invention promotion firm approaches you, take great care and question their claims and assurances that your invention will make money. No-one can guarantee your invention’s success. Entering into a contract with one of these companies is no different to any other major financial arrangement. Make sure your contract contains all the terms you have agreed to and be sure to get independent legal and financial advice. The Consumer Direct website at www.consumerdirect.gov. uk gives more information. You can also get a step-by-step guide to using invention promotion companies from our Central Enquiry Unit >p29. If you have a complaint about one of these companies, you should put it to the Office of Fair Trading at www.oft.gov.uk or phone them on 08457 22 44 99.

It’s your invention: Should you patent it? What is intellectual property?

Is a patent the best way to protect an invention?

Intellectual property (IP) covers patents, registered trade marks, registered designs, design right and copyright. Like any other form of property or business asset, it can be bought, sold, rented or hired.

A patent could be just part of your intellectual property plan. Applying for a range of intellectual property rights can help strengthen your product’s position in the market and may even help keep its position when your patent runs out.

What is a patent?

For example, a registered design can protect your product’s appearance and a registered trade mark can set your product apart from others. However, please remember that a registered design only protects a single design, and a registered trade mark only protects the mark you endorse your product with.

A patent is an intellectual property right, granted by a country’s government as a territorial right for a limited period. As long as renewal fees are paid every year, a UK patent has a life of 20 years and provides protection throughout the UK, but no further. Patent rights make it illegal for anyone except the owner or someone with the owner’s permission to make, use, import or sell the invention in the country where the patent was granted. No state grants a patent lightly. There is a bargain – the state grants a patent in return for the information you reveal and the right for anyone to use your invention when the patent is no longer ‘in force’.

What kind of things do patents cover? Patents generally cover products or processes that contain ‘new’ functional or technical aspects. They are concerned with how things work, how they are made or what they are made of. Patents cover many different things such as electronics, medicines, agriculture and transport – anything in fact from a small detail in an electric switch to an entire power station.

Patents cover many different things such as electronics, medicines, agriculture and transport – anything in fact from a small detail in an electric switch to an entire power station.

Is there a patent mark? There is no legal requirement for a product to be marked although it could help stop others accidentally infringing your patent rights. The terms ‘patent pending’ and ‘patent applied for’ are sometimes marked on products by manufacturers to show that a patent has been applied for. It’s there to warn potential competitors that if a patent is granted and their product infringes the patent rights, the manufacturer will have the right to stop them making, using or selling the product. Not marking your patented product does not prevent you from taking action against people who copy it, but marking products to show that you have applied for a patent when you have not done so or when a patent has ended is a criminal offence and you can be prosecuted.

It’s your invention: Should you patent it?

It can take up to four and a half years to get a patent and part of the application process involves publishing the specification describing your invention for anyone to see before the patent is granted.

Is a patent the only way to protect an invention? It can take up to four and a half years to get a patent and part of the application process involves publishing the specification describing your invention for anyone to see before the patent is granted. Bearing in mind that you cannot take action against anyone until a patent has been granted, if it’s granted at all, a patent might not be the best answer. This is especially true if you need to market your invention quickly for competitive advantage. The following forms of intellectual property may be more suitable. • Registered designs – to protect the appearance of all or part of a product. • Registered trade marks – to protect a unique sign, mark or symbol, such as a word or logo, that distinguishes your products and services from other products and services and is registered with a Trade Marks office.

• Unregistered design rights – if you keep your idea to yourself for your own use it may be protected automatically under common law. Unregistered design rights in the UK protect the three-dimensional shape of a ‘new’ design for 10 years from the date the product made to the design is first marketed. There is a similar right in the European Community, with a life of three years. Although these rights are automatic and free, you have to prove that actual copying has taken place if you want to take action against anyone you suspect is infringing your rights. • Secrecy, private ‘know-how’ or confidentiality agreements drawn up by a lawyer may be more appropriate if your invention is a process or formula. Although these agreements are binding on the people involved, they may not be suitable in some circumstances. For example, once the product of a secret process is placed on the market, it is there for everyone to see and it may be possible to work out what the secret process is.

It’s your invention: Should you patent it? The coffee jar below is a good example of four different ways to protect your intellectual property:

• Trade marks

Nescafé, Gold Blend and the Nestlé bird are all registered trade marks, (as shown by the ® symbol.)

•

Registered designs The look and shape of the jar is registered – number 2052231. (This is shown by the wording ‘registered design’ near the bottom of the jar.)

• Copyright

The design and text of the labels is protected under copyright law and Nestlé’s ownership of copyright is shown by the © symbol on the label.

• Patents

Nestlé own many different patents related to various coffee subjects including freeze-drying and decaffeinating.

You can get more information about these different forms of intellectual property by visiting our website or by calling our Central Enquiry Unit >p29.

Nestlé own many different patents related to various coffee subjects including freeze-drying and decaffeinating.

It’s your invention: Can you patent it? Is it a new invention?

Is it the right kind of invention?

Your invention must be novel, that is, it must never have been made public in any way, anywhere in the world, before the date on which you file your application for a patent. You’ll probably be surprised how many inventions already exist, even though you have never seen or heard of them.Of the millions of patent applications filed around the world every year, many fail to be granted – normally because a similar invention has been published before. To find out if your invention, or something like it, already exists, you can carry out an exploratory search of your own. In the long run, it can save you the time and expense of applying for a patent that is unlikely to be granted. It can also help prevent you from unknowingly infringing another person’s patent rights.

As well as being ‘new’, an invention can only be patented if it is:

You can start a search by having a look through any relevant literature, such as:

•

• trade and specialist magazines; • sales brochures and journals; and • search engines and websites on the internet. If you can’t immediately find any ‘prior art’ – a legal term used to refer to anything recorded that is similar to your invention – you can search using online databases such as ‘espacenet’ (www. espacenet.com) Inventions are classified during the patent application process and classifications are listed on the front page of most published patent applications. To make your search easier, you can ask us or a patent agent which classification your invention falls into. This information is also available from the patents information section of the British Library or from any of the other PATLIB centres >p27. There are copies of published patent applications and granted patents on our website in the espacenet database. Other database addresses, along with more detailed information about carrying out your own search, are also available on our website or from our Central Enquiry Unit >p29. If your search reveals that your invention already exists, you may decide it is not worth trying to patent your invention. If you don’t find any prior art, it might still be safer to ask for a second opinion. You can do the following. •

Arrange for a ‘commercial search’ – our Search and Advisory Service (>p29) can carry out this search for you. However, we will charge you a commercial fee which is significantly more than the fee we charge for the statutory search we carry out once you have filed your patent application.

•

Ask a patent agent to carry out a specialist search on your behalf, although you will have to pay them for this service. Do get a written estimate before they start.

• inventive – not an obvious modification of what is already known; and

• capable of being used in any kind of industry. In other words, your invention must make a technical contribution. This means you can’t, for example, patent a business method unless it involves some technical innovation. Computer-related inventions may be patentable, but only if they involve something more than just software running on a computer in a technically ordinary way. Other ideas that cannot be patented are:

• scientific or mathematical discoveries, theories or methods;

• literary, dramatic, musical or artistic works; • schemes, rules or methods for performing a mental act; and

• methods of medical treatment. If you are not sure if your invention is or isn’t excluded, contact the office or ask a patent agent >p29.

Are you entitled to a patent? The applicant for a patent may be an individual or a corporate body, and people (whether individuals or corporate bodies) can make joint applications. But if you are not the inventor, you must identify the inventor and say how you have the right to the patent rather than the inventor. Whoever had the original idea is the inventor. The inventor has the right to apply for the patent unless:

• they have transferred their right to someone else; or • they made the invention in the course of doing something

they are or were employed to do, in which case the right may belong to the employer. However, this depends on the circumstances of employment, for example, whether the person applying was employed to make inventions or not. The invention will probably belong to the employee if they were not employed to come up with new ideas, otherwise it will probably belong to the employer. Even if you invent something in your own time, in your own home and using your own resources, ask a patent agent or a lawyer to check your employment circumstances carefully.

If a patent is granted to the employer, the employee may be entitled to compensation from their employer if the patent is considered to be of outstanding commercial benefit. Any employee who thinks they may be entitled to compensation should get professional advice from a patent agent or solicitor. However, compensation is not often awarded.

It’s your invention: Make the most of it! Can a patent make you money?

Financial implications

A patent can make you money, but only if your invention will be a commercial success for you or someone else. Do take the time to investigate the financial implications and commercial possibilities before you begin your application for a patent.

Before investing in a patent, assess the financial potential for your invention. Be realistic.

Design and prototypes

• How quickly will your product become out of date?

You should consider producing a good-quality working prototype of your invention so you can:

• Is it likely to compete successfully with alternative or

• satisfy yourself that your invention really works;

• What will it cost to develop, manufacture and market your

• demonstrate your invention’s potential to possible investors and business partners; and

• make sure it meets any product or industrial standards. If discovered later, these can add considerably to your costs if you decide to manufacture your invention yourself.

Getting the right design for your product can also be crucial to its success. Your invention may have enormous potential but a poor design could ruin its chances. If you are not skilled in design, employ a specialist designer who may not only make the product more attractive but may be able to help you produce a design that suits your manufacturing process better. Don’t forget to ask anyone involved to sign a confidentiality agreement.

• What is the size of the market for your product? • How long is that market likely to remain buoyant?

similar products? invention?

• What are the costs of applying for a patent? • How much will the patent cost to maintain (renewal) and to defend (against infringement)?

• Can your product sell at a price that will cover your costs and make a reasonable profit?

Sometimes, inventors fail to appreciate that what may be an excellent product is too difficult and expensive to manufacture. Even if it has the potential to be commercially successful, you may decide that licensing or selling your patent rights outright is a better option.

Financial support Although we cannot provide financial support to inventors, you may be surprised at just what is available. Any of the organisations listed on page 24 will give you information and advice on what you are entitled to, such as:

• grant schemes – national, regional and local ones; • local authority enterprise support schemes; • rent and rate relief; • tax relief; • export insurance; and • awards. There are also many European Union schemes that are designed to provide financial help to new and existing enterprises. There are also many sources of private finance available, including:

• banks and other traditional lending organisations; • individual investors; and If you are not skilled in design, employ a specialist designer who may not only make the product more attractive but may be able to help you produce a design that suits your manufacturing process better.

• financial institutions.

It’s your invention: Make the most of it! Business strategy To fully realise the potential of your idea, it may help if you prepare a ‘business plan’. This can be a valuable tool as it provides a structured approach to prioritising and helps you focus on what needs to be done. You are almost certain to need one if you hope to borrow money or attract investors and business partners.

• manufacturing plans, including site, machinery, employee and other resource needs;

• marketing and distribution plans; • a pricing scheme and sales predictions; • a risk assessment; and

A business plan is important because it looks ahead and will help you plot a path towards sensible, realistic and achievable goals. It can be as simple or complicated as you like, but should cover:

• an implementation programme with fixed targets.

• spending, income, profit and cash flow;

Do remember that a UK patent will only protect your invention in this country. You can apply through the office for a European or international patent or directly to individual patent offices in other countries. Again, consider the potential size and success of your invention when selecting countries overseas, and remember to include any extra costs, such as translation. For more information >p14-15.

• sources of funding; • market research and development testing, including producing prototypes;

There is a list of organisations that can give you business advice, information or contacts >p26.

A business plan is important because it looks ahead and will help you plot a path towards sensible, realistic and achievable goals.

It’s your invention: Make the most of it! Potential partners Don’t forget to keep your invention secret when you are developing your idea before applying for a patent. There will be situations where a contractual or confidentiality agreement is important, for example between you and:

• a person or company investing in your idea; or • a person or company supplying professional advice

– except patent agents and solicitors who are covered by professional rules and so owe you a legal duty of confidentiality.

Don’t forget to keep your invention secret when you are developing your idea before applying for a patent.

Do agree at the start who will own the patent rights that result from any collaboration. A patent agent can either help or refer you to a solicitor with the appropriate experience to draft a suitable contract for the particular circumstances – don’t forget to ask for a written estimate of the fees they will charge for this service. If you are approached by, or consider working with, an invention promotion company, we strongly advise you to take professional advice before you give them any information or make an agreement >p3.

It’s your invention: Protect it When should you apply for a patent?

Alternatives to the application process

There are no rules on when to apply, except that your idea must be secret on the day we receive your application – the ‘filing date’.

Some aspects of the process can be speeded up. For example, you can hand in forms 9A and 10 together, and some aspects can be processed more quickly.

While applying early may make sure you are ahead of anyone else who might come up with the same idea, there may be commercial reasons for waiting until you have a prototype and are ready to market your product.

Costs

Also, if you apply too early and then decide to make changes to your invention, it will not be possible to alter the original description, although you could file a fresh application within a year and keep the original filing date, which is called the ‘priority date’, for the material common to both applications – see our “Patents Application Guide”. It is up to you to decide the best time to apply, but professional advice from a patent agent can be very helpful.

How necessary is it to get professional help? It is not strictly essential but the strength of a patent is affected by how well your application has been drafted. As it is both a technical and a legal document, it is best for an expert, such as a patent agent, to draft it. The greater the potential commercial value of an invention, the more advisable it is to get professional help.

A UK application costs:

• the official office application fees; and • possibly patent agents’ fees. Our fees for processing a UK patent application are normally £200. Typical patent agents’ fees for securing a UK patent can be several thousand pounds, while making an application in several countries can cost tens of thousands of pounds over several years. A patent agent only charges for professional services. They will not take a stake in your patent. If you are not able to afford these fees, you could try to find a partner or licensee to help meet the cost. If a patent is granted, you will also need to pay renewal fees each year you want the patent to remain in force. There is a list of up-to-date fees on our website or from our Central Enquiry Unit >p29.

It is up to you to decide the best time to apply, but professional advice from a patent agent can be very helpful.

It’s your invention: Protect it



Step 1 You prepare a ‘patent specification’ which includes: a written ‘description’ of your invention (allowing others to see how it works and how it could be made); ‘drawings’ (to illustrate your description); ‘claims’ (precise legal statements in the form of single sentences that define your invention by setting out its distinctive technical features); and an ‘abstract’ (a summary that includes all the important technical aspects of your invention). 12

Step 2 You fill in and file form 1 ‘Request for grant of a patent’ with us, together with one copy of your patent specification. (Also, if you or anyone else applying are not the inventor, you will need to fill in form 7 – ‘Statement of inventorship and of right to grant of a patent’ – and tell us why you have the right to be granted a patent. This form can be filed up to 16 months after your ‘filing date’ or priority date, if there is one.)

Step 3 We respond by issuing a filing receipt which includes an application number and confirms the ‘filing date’ of your application.

Step 4 You fill in and file form 9A with us, together with the appropriate fees, asking for ‘a search’. You must do this by a given date – usually within 12 months of your filing date – to avoid your application being terminated. You also need to pay the application fee by the given date. If your application includes a declaration of priority, the deadline for filing form 9A is 2 months from your filing date or 12 months from your priority date, whichever is later.

It’s your invention: Protect it



tep 5 S We carry out a preliminary examination to make sure your application meets certain formal requirements and search through published patents and other documents for material against which we can assess whether or not the invention you have claimed is new and inventive. We aim to issue our search report to you within four months of receiving your form 9A.

Step 6 We publish your patent application shortly after 18 months from your filing date (or priority date if there is one), as long as you have met the formal requirements, filed form 9A together with the appropriate fees and not asked us to withdraw your application.

Step 7 You fill in and file form 10 with us, together with the appropriate fee, asking for ‘a substantive examination’ no later than six months after publication to avoid your application being terminated.

Step 8 We examine your application, let you know what, if anything, needs to be amended and the period of time you have in which to respond. If your application meets all the requirements of the Patents Act 1977, we will grant your patent, publish your application in its final form and send you a certificate.

It’s your invention: Protect it Applying for an overseas patent

International applications

The general principles of patent protection are recognised almost everywhere in the world. Even though particular conditions may vary considerably, international agreements need member countries to open their patent systems to people who live in other member countries.

To get protection abroad, you would normally have to make separate national applications in each country, which can be very complicated and expensive. However, the Patent Cooperation Treaty (PCT), which the UK has signed up to, aims to simplify filing on an international scale. By filing a single application under the PCT, you can get protection in a number of the member countries of the treaty. For an up-to-date list of member countries, visit the World Intellectual Property Organisation (WIPO) website >p29.

Because patents are territorial rights, a UK patent only gives you protection within the UK. However, if you are granted a patent in any country, including the UK, although it doesn’t stop others using your invention elsewhere, it does prevent people bringing a product the same as yours from a country where you don’t have patent rights and then importing it into the country where you do. Even if you only want to license others to manufacture and sell your invention in other countries, you should consider taking out protection in those countries to discourage unlicensed copying or use of your invention. Also, applying for patent protection abroad can improve the licensing potential of your patent by broadening the potential market base.

Important warning – national security requirement If you live in the United Kingdom and want to apply abroad for patent protection for an invention that may affect national security (e.g a weapons system), you should contact our Security Section (01633 813558) to check whether you need our permission before applying.

Important warning – timing As long as you file any foreign applications within 12 months of your UK ‘priority date’ (the filing date of your original UK application for the same invention), each foreign application is given the same ‘priority date’. This is important because if two patent applications claiming the same invention are filed on different dates, the patent will be awarded to the one with the earlier ‘priority date’. You also need to make sure that your foreign applications are filed before your UK application is first published (about 18 months after your original UK filing date). If you miss this deadline, any foreign applications you make (except to the USA which has different rules) will be invalid because your invention, due to publication in the UK, will be in the public domain. At present there is no such thing as a ‘world patent’. To get patent rights in other countries, you have to apply under the national patent laws of each country or take one of the following two routes for getting patents in a number of countries by filing a single application.

International applications under the PCT • You complete an application – the procedures are set out in our booklet PCT notes for private applicants and also in the booklet WIPO basic facts about the PCT, both of which are available from our Central Enquiry Unit >p29.

• We receive your application and send it to WIPO along

with a copy to an ‘international search authority’. In our case, this is the branch of the European Patent Office (EPO) at The Hague, where a search is carried out to see if your invention has been described by others before.

• WIPO publishes your international application, together with the search report, as soon as possible after 18 months from your priority date.

• After publication you can file a request for an ‘international preliminary examination’, which is carried out by the EPO. This examination is optional and you will have to pay a fee. However, it will give you an initial, non-binding opinion as to whether your invention is new and inventive (not obvious) and capable of being used in any kind of industry.

• At least 30 months after the priority date, your application enters what is known as the ‘national phase’. Each country processes your application as a national one, as long as you have paid their fees and supplied a translation of the application (if needed) within the set time limit.

You can use your PCT application to get a European patent – see the next column.

It’s your invention: Protect it Costs • Official PCT application fees. • Fees when the application enters the national phase in

each country, such as the examination fee, according to that country’s scale.

• Probably a professional representative’s fees. • Translation fees. • If a patent is granted, renewal fees every year to each country where you want the patent to remain in force.

European applications Most western European countries, including the UK, have signed up to the European Patent Convention (EPC). A single application filed under this Convention will allow you to get protection in the member countries. For an up-to-date list of member countries, visit the EPO website >p29.

European applications under the EPC • You complete an application – the procedures are set out in the booklet How to get a European Patent, available from the EPO >p29.

• You can send your EPC application to us and we will

send it to the EPO, which is responsible for processing the applications and granting European patents. Or, you can send your application and any fees directly to the EPO in Munich or The Hague as long as you meet the National Security requirement >p14.

• The EPO publishes your application, together with the

search report, as soon as possible after 18 months from your priority date.

•

As long as you meet the requirements in the EPC, the EPO will grant your European patent which will then become valid in the UK. If, however, your application was not published in English, you must provide us with an English translation.

Costs • The official EPO application fees and maintenance fees. • The fees of a single patent agent if you are using one. • If a patent is granted, translation fees if you want it to

be effective in countries where English is not an official language.

• Renewal fees every year to each country where the patent is eventually granted.

Individual national applications You may still need to make separate national applications if you want to protect your invention in countries which are not members of the EPC or PCT.

Costs The cost of each separate national application is as follows.

• The official fees of that country. • Probably, the fees of a professional representative in that country.

• Translation fees. • If a patent is granted, renewal fees each year you want the patent to remain in force.

The advantages of applying for a UK patent first Whichever route you use, if you decide to apply for protection abroad, remember that you can use your national application, filed in the UK, as a basis for claiming ‘priority’ for applications filed in most other countries, including the EPC and PCT. A ‘priority date’ is vital when considering whether the invention claimed in a patent application is new. If two patent applications claiming the same invention are filed on different dates, the patent will be awarded to the one with the earlier ‘priority date’. As long as further applications for the same invention are made in the other countries within 12 months of your UK ‘priority date’, each foreign application is given the UK ‘priority date’. So, the applicant ends up with a group of patents for the same invention in different countries, all with the same ‘priority date’. Another benefit of filing a UK application first is that you can use the search report to make an initial assessment of the likely success of your application before you begin the costly process of getting protection abroad.

Professional help Filing patent applications abroad, either direct with the patent offices in individual countries or under the EPC or PCT, can be quite complicated and we strongly advise you to use the services of a chartered patent agent.

1 It’s your patent: Don’t lose it Renewals

Renewing an overseas patent

Once your patent is granted, you will need to pay renewal fees to keep it in force so that protection continues. The amount you pay increases every year your patent is ‘live’. This is to avoid placing too much of a financial burden on you in the early life of your patent when you are likely to have other costs.

Renewing an overseas patent varies from country to country, so is not covered in this booklet. For more detailed information about renewing a patent in another country, you should contact the national patent office in that country or a chartered patent agent will be able to help.

If you decide to endorse your patent ‘Licences of Right’ (which means it will be available for the cost of a royalty payment for licensing to anyone who asks), the renewal fee you pay after endorsement will be half the normal rate.

UK renewal fees can be paid at any time during the threemonth period before the due date. You should send us the payment, together with a filled-in copy of form 12 which you can get from our website or from our Central Enquiry Unit >p29. The payment address is included on the form. You can pay by cheque, postal order, money order or banker’s draft, made payable to ‘UK Intellectual Property Office’ and crossed ‘Account payee only’. If you want to pay with cash, you need to visit us in person.

Throughout the 20-year life of a UK patent, you will need to make 16 yearly renewal payments. An up-to-date list of fees is available on our website or from our Central Enquiry Unit >p29.

Renewing a UK patent For most UK patents, the first renewal fee is due on the last day of the calendar month in which the fouth anniversary of the filing date falls. The filing date is the date your application was filed (not the date the patent granted). For example: if the application was filed on 15 April 2004, the first renewal fee would be due on 30 April 2008. Renewal fees are then due every year on the same date for the next 15 years. The only exception to this is the rare occasion when a patent is granted later than three years and nine months from the filing date. This is known as a ‘late granted’ patent. Then the first renewal fee is due on the last day of the third calendar month after the date the patent is granted. However, after this initial payment, the date for paying the renewal fee returns to normal, and so is the last day of the calendar month in which the anniversary of the filing date falls.

Renewing a European patent Renewal fees for a European patent are paid directly to the patent offices of each of the countries in which your patent became effective, unlike the fees before the patent is granted, which are payable to the European Patent Office. For example, if you had filed a European application on 25 May 1990 and your patent was granted on 10 January 1994 then, if it is effective in the UK, you would have started paying renewal fees to us on 25 May 1994 as this would have been the next anniversary of your filing date.

Payment

We will send you a certificate of payment confirming that we received your renewal fee and have renewed your patent for another year. It is up to you to make sure your renewal payments reach us on time. Do set up a reliable system to remind yourself when to pay your renewal fees. You could use a diary, employ a patent agent or pay one of the specialist renewal agencies to send you reminders (they will charge you for this service). If you don’t pay your renewal fee on time, about two weeks after your fee was due we will send you a reminder. This should give you enough time to pay the fee without having to pay extra fees for late payment, as long as you pay within one month of the due date. However, we can only send the reminder to the last known ‘address for service’ we have for you on our register, so it is very important that you keep us up to date with your address.

Late payment You can pay your renewal fee up to six months after the due date. However, if your payment is more than one month late, you will have to pay the renewal fee and any extra late-payment fees as well. Details of late-payment fees are available from our website or from our Central Enquiry Unit >p29.

Non-payment If you don’t pay your renewal fee within six months of the due date, your patent will end and your invention will not be protected.

1 It’s your patent: Don’t lose it Restoring patent rights If you do not pay your renewal fee on time and your patent lapses, it is possible to restore your patent – although this is by no means automatic. You will need to satisfy us that you intended to pay your renewal fee on time. You need to apply for restoration within 19 months of the due date of your missed renewal payment by filing form 16, together with the appropriate fee. You will need to include a statement explaining why you didn’t pay the fee in time on this occasion. This statement must be in the form of a statutory declaration, affidavit or witness statement, and should be accompanied by any evidence which supports your case. In some cases, we may need to ask you to provide more evidence if your original statement does not explain all the facts.

If your request for restoration is allowed, you need to file form 53, together with the renewal fees you owe. Forms are available from our website or from our Central Enquiry Unit >p29.

Restored patents Once restored, your patent continues to fully protect your invention. However, if someone else has started to do something that would have infringed your patent rights, they are allowed to carry on even if your patent is restored. This exception will only apply if the person started to do this between the end of the six-month extended period that you had to pay your renewal fee and the date that your request to restore your patent was published in our Patents and Designs Journal.

If we are not satisfied with your reasons, we will write to let you know. You will have one month to ask for a ‘hearing’, where you can present your case to one of our senior officials known as a ‘Hearing Officer’. The Hearing Officer will then decide whether or not to uphold the view not to restore your patent.

“We will send you a certificate of payment confirming that we received your renewal fee and have renewed your patent for another year.”

2 It’s your patent: Exploit it Making the most of your patent

Selling your patent

Because a patent is a type of property, as with a physical property, the owner of a patent can generally decide how it is used. The most common ways of benefiting from patent rights are:

• deciding to manufacture the patented invention yourself;

You could sell your patent outright to another person or organisation. Transferring your patent rights is known as assignment. However, once you have transferred ownership, the new owner can stop you using your invention unless you negotiated a licence for this use when you made the transfer agreement.

• subcontracting the work to a manufacturer and taking the

Licensing your patent

revenue from selling the product;

• selling the patent outright for a one-off payment; and • licensing the patent rights to someone else in exchange for royalty payments.

There may be other ways that a professional advisor can help you manage your patent to make a profit. Profiting from a patent can be a complicated business, so it’s good to get as much advice as you can. For a list of organisations that may be able to help >p26&p27.

Manufacturing your invention yourself

A licence is a contractual agreement under which, while still owning your patent, you transfer to someone else the right to use or sell your patented product or process in return for a royalty payment. It can be very useful if you do not have the knowledge or resources to manufacture and market your idea yourself. The licence document should set out the terms and conditions that apply to using the patent, including any payment or royalties to be made by the person using the patent (‘the licensee’) to you (‘the licensor’) in return for using your rights. The licence should also show the geographical area and field of use in which a licensee may sell your product and how long the licence will last.

This may be the most profitable way of making money from your invention, but it also has the most potential risks. If you haven’t run a business before, you need to think carefully before making any commitment. You will need to educate yourself in various business disciplines, for example, raising finance, manufacturing, selling and distribution. You will also need to be organised, determined and prepared to devote a considerable amount of time to the business. Success does not come easy. For who to contact for advice on launching a new business >p26.

There are several different types of licences.

Subcontracting manufacture

• Sublicence – a licensee grants a licence to another person

Rather than making your invention yourself, another approach would be to subcontract this aspect of the work to an existing manufacturer so you can concentrate on other things like promoting and selling the product. Or, you could enter into a joint venture with an existing company which will have the necessary business experience to identify and overcome potential problems which a newcomer may not be aware of.

It is essential and in your own interest that your licence agreement covers all aspects as it is a legally binding document. You should consult a patent agent, licensing practitioner or solicitor who specialises in negotiating the terms and conditions of licences >p29.

• Exclusive – a single licensee has the right to use the patent.

• Sole – a single licensee and the patent owner have the right to use the patent.

• Non-exclusive – several licensees have the right to use the patent.

or company to use the patent.

Once a licence has been agreed, you or the licensee must tell us as soon as possible so we can record the licence agreement on the Register of Patents. You will need to file Patents Form 21, saying what kind of licence you have granted. As long as the patent owner signs the form, we will not need any supporting documents as evidence of the transaction.

2 It’s your patent: Exploit it Licences of Right

Transferring your patent rights

You can apply to us using form 28 for an entry to be placed on the Register of Patents that licences under your patent are available as ‘of right’. This means you cannot refuse to license the invention.

As with any other property, a patent may be bought, sold, transferred or inherited. If you decide to pass the ownership to someone else, a document transferring the rights must be signed by or on behalf of you (‘the assignor’) and the buyer (‘the assignee’) for the transaction to be valid.

After endorsing your patent ‘Licences of Right’, any renewal fees are half the normal rate so you can keep costs down while you try to benefit from your patent. You can later cancel the Licences of Right endorsement using form 30, but you will need to pay the balance of the renewal fees which you would have paid if you had not asked for the endorsement.

You or the assignee will also need to file form 21 to record the transfer of ownership. If you fail to do this, the transaction will not be completely effective. Also, if you don’t sign the form, we will need to see documentary evidence of the transaction before we record it on the Register of Patents.

If you decide to pass the ownership to someone else, a document transferring the rights must be signed by or on behalf of you (‘the assignor’) and the buyer (‘the assignee’) for the transaction to be valid.

3 It’s your patent: Enforce it Enforcing your rights Many people believe that we ‘police’ patents and sort out any problems. This is not true. If you suspect that someone is infringing your patent rights, it is up to you to take appropriate action. However, we would strongly recommend you get legal advice before making any contact with them because:

• if you make threats of legal action, it is possible they will

take action against you and seek an award of damages; or

• if you intend to sue for infringement, it is quite possible

that the other side will decide to challenge the validity of your patent. If you lose the case, your patent may be cancelled (revoked) by the judge and, in the UK, the losing side usually has to pay both sides’ costs which could be substantial.

Do think very hard before you commit to legal action.

Alternative solutions to litigation Before resorting to litigation (legal action), you could try to settle using an ‘alternative disputes resolution’ (ADR) process. Although it is rarely used in patent disputes, one of the most popular forms of ADR is ‘mediation’, where a trained independent mediator works to resolve the dispute. If mediation fails, the people involved can still take the issue before the courts or the Comptroller. The Lord Chancellor’s Department has published a useful booklet called Resolving disputes without going to court. To get a copy, send an e-mail to lscleafletline@direct.st-ives.co.uk or call 0845 3000343. Also, the Office’s opinions service allows anyone to ask the office for an opinion on an issue of patent infringment or validity. The service is designed to provide a quick low cost option for parties who wish to have an impartial assessment of the issues involved in a dispute. For more information, visit our website>p29

Infringement There are two basic defences against an allegation of infringement of a patent.

• The claims have not been infringed. • The claims themselves are invalid. If your claimed invention is a product, a person will have infringed your patent if they make, sell, offer for sale, use or import a product which is covered by the scope of the claims in your patent or keep it ready for sale in the UK without your permission. 20

If your claimed invention is a process, a person will have infringed your patent if they use the process covered by the scope of your claims or offer it for use in the UK knowing it would infringe your patent – also if they sell, offer for sale, use or import any product made by the process or simply keep these products ready for sale. You should talk to a patent agent or solicitor as infringement actions can become complicated. They will probably want to assess the entire position before they think about involving the other side. In particular, they will want to consider the alleged infringement in relation to the claims to see if there really is an infringement and secondly to consider a more detailed assessment of the validity of any infringed claims. If the alleged infringer decides not to stop the alleged infringement action, he or she may, as a defence, challenge the validity of your patent. This would then have to be decided in court. Infringement actions are brought before the Patents County Court or the Patents Court, which is a division of the High Court, Chancery Division. They can be brought before the UK Intellectual Property Office if both sides agree to it, but the Comptroller has limited power in infringement matters compared with the courts. You can get information on taking action before the Patents County Court, the Patents Court or the Comptroller General of Patents from the organisations listed under Litigation advice>p28.

Other common areas of dispute The following are the most common dispute actions brought before the Comptroller of Patents.

Ownership • Entitlement – disputes about who owns a patent or is entitled to apply for a patent.

• Inventorship – applications to add someone’s name to, or

remove it from, the record of inventors named on the patent application and the granted patent.

• Compensation – applications from employees who want

compensation for inventions they made but which belong to their employers who have benefited from the patent.

• Joint applicant disputes – disputes between joint applicants about how a patent application in their names will go ahead.

3 It’s your patent: Enforce it If you receive notice of legal proceedings against you, don’t panic. Get professional advice from a patent agent or solicitor but do nothing and say nothing yourself.

Licences

Legal action against you

• Applications to decide the terms of licences which can be

If you receive notice of legal proceedings against you, don’t panic. Get professional advice from a patent agent or solicitor, but do nothing and say nothing yourself.

• Applications for a compulsory licence under a patent –

A free booklet called Patents: Deciding Disputes provides useful guidance and information about taking disputes before the Comptroller. To receive a copy, contact either our Litigation Section or our Central Enquiry Unit >p29.

given under a patent – where the owner of the patent and the person who wants a licence cannot agree terms. requests that the patent owner be forced to grant a licence.

Technical issues • Revocation – applications to have a patent revoked (cancelled) because it is not valid.

• Amendment of patents – an application to amend

a patent made by the owner may be objected to by another person.

• Declarations of ‘non-infringement’ – applications asking

the Comptroller to confirm that a certain activity does not or would not ‘infringe’ a particular patent.

• Infringement – the Comptroller can decide on infringement, but only if the owner of the patent and the person who has allegedly infringed the patent agree that the matter should be referred to the Comptroller. The Comptroller’s powers on infringement proceedings are limited and because of this it is usual for civil actions for infringement to be brought to the Patents Court or the Patents County Court.

The Comptroller may decide to refer a dispute to the courts if it is considered that it would be more appropriately decided there. Also, you may appeal to the court against a decision made by the Comptroller.

Insurance against legal costs You can get insurance to cover legal costs if you need to take enforcement action against infringers. However, do make sure it gives you enough cover. Also, the earlier you take out a policy, the cheaper it’s likely to be. If you delay making a decision about insurance until your product is exposed to possible predators, insurance underwriters may not be prepared to cover the risk. The insurance premiums may seem expensive, but in some cases you could be liable for the other side’s costs too. For example, if a case about infringement of intellectual property rights goes to the Patents Court and goes against you, you may need at least £500,000 to cover all costs. This is an estimate of the costs involved and we would advise you to consider all other options before starting legal proceedings. If you feel that insurance would be a good idea, discuss it with a professional adviser, such as a patent agent or solicitor.

Important I f your patent application has not been published, do make sure your insurance adviser or underwriter has signed a confidentiality agreement before you reveal your invention to them. Like any other contract, you should get legal advice to make sure that the contract is effective. 21

Glossary of patent terminology Abandoned A patent application which the patent applicant did not proceed with or has withdrawn.

Citations Prior art identified in the search report produced by a patent examiner.

Abstract A brief summary of the invention, forming part of a patent application.

Claims A precise legal definition of what the patent will protect. Forms part of a patent specification. A main claim will define the invention in its broadest form, by including only its essential technical features. Further ‘dependent’ claims can then relate to other features of the invention.

Address for service The address to which we will send all correspondence relating to a patent or patent application. Alive Describes a patent which has been granted and is still ‘in force’. Amending The act of changing the wording of an application, such as to deal with an examiner’s objections. Amendment Refiled pages of an application that have been changed. An amendment must not add anything to the application or specification that was not present when the application was filed.

Combined search and examination Carrying out the search and examination process together. Compulsory licence A licence which is forced on the patent owner under certain legal conditions. Confidentiality agreement A legal agreement to say that confidential information will not be passed to others. Convention country A country which is a member of the Paris Convention. See Paris Convention.

Applicant The person or people applying for a patent. This does not have to be the inventor. Several people can apply jointly, as can organisations.

Copyright An automatic right allowing the originator of a work of art, such as an artistic, dramatic or literary creation, to control the copying of the original work by others.

Application A request for granting a patent that is made using form 1 and the accompanying technical description of the invention.

Description and drawings A full detailed explanation of an invention and how it works. The description can be accompanied by one or more drawings. It forms part of a patent specification.

Application fee A fee which must be paid by a given deadline. The fee can be paid using form 9A. Assignment Transferring a patent from the owner to another person or organisation. Certificate of grant A certificate setting out that a patent has been granted.

Enforcement Taking action to stop others from infringing your patent, for example, suing them in the Patents Court or Patents County Court. Entitlement The right to own a patent or to make a patent application. European patent application A single patent application which is searched, examined by the European Patent Office and, if accepted, granted under the European Patent Convention. Once granted, the patent is treated as a bundle of separate national patents.

Glossary of patent terminology European Patent Convention (EPC) The international convention governing the application for, processing of and granting of a European patent. European Patent Office (EPO) The office which grants European patents for member states of the EPC. Examination fee The amount of money you have to pay to have an application examined. Filing date The date when an application is considered to be received by us. This is an important date when considering if the invention in the patent application is novel and inventive. See also ‘Priority date’. Form 1 A form on which an application for a patent is made. Form 7 A form filed by an applicant which we send on to the inventor if they are not the applicant. Form 9A A form filed by an applicant to request a search. Form 10 A form filed by an applicant to request a substantive examination. Grant When we confirm that a patent application meets all the legal requirements. Hearing Officer A senior member of our staff who represents the Comptroller sitting as a tribunal to settle disagreements arising from matters relating to the Patents Act 1977. In force A patent which has been granted and is kept ‘alive’ by paying renewal fees every year.

Intellectual property The general term for property rights which are the result of mental effort. Patents, trade marks, registered designs and copyright are the main intellectual property rights. International patent application A single patent application made under the Patent Cooperation Treaty (PCT), asking for patent rights to be granted in a number of countries. Inventive step When an invention is not obvious to experts in the field and does not already exist in prior art. Lapsed A granted patent that has not been kept ‘in force’. Letter of grant A letter from us setting out that a patent is to be granted and giving the effective date of the patent. Licence How the owner of a patent gives permission to another person to carry out an action which, without this permission, would infringe the patent. A licence can allow another person to manufacture, use or sell an invention protected by a patent. In return, the owner will usually receive royalty payments. Licences of right A patent owner may indicate (through us) that licences under his or her patent are available to anyone who asks for one under reasonable terms. Renewal fees are reduced by 50% if licences of right apply to a patent. Novel If a patent is to be granted, the invention must be novel. This means that the invention must not have been publicly revealed anywhere in the world by word of mouth, demonstration, publication in an advertisement or journal (including patent journals) or in any other way, before the date the patent application is filed (or before the ‘priority date’ if the application has one). Obvious An invention that does not include an ‘inventive step’.

Infringement Making, using, selling or importing something which is protected by a patent without the patent owner’s permission. 23

Glossary of patent terminology Owner The person, people or organisation who own a patent or the rights to it.

Patents Court A court which is part of the High Court, and deals with patent and other intellectual property matters.

Paris Convention An international agreement which provides common rules between the member states for patents and other forms of intellectual property. A member state is often referred to as a ‘Convention country’.

PCT See Patent Co-operation Treaty.

Patent Originally called ‘letters patent’, it prevents anyone else doing what is claimed in the patent while it remains in force. Patentability The basic conditions of patentability, which an application must meet before it is granted, are that the invention must be novel (original), contain an inventive step (not obvious), be industrially applicable (capable of being used with existing technology) and not be in one of a number of excluded fields. Patent agent A person, qualified by examination, who can act on behalf of an applicant to draft a patent application and then take that patent application through the various stages needed to get a patent granted. A patent agent is also qualified to give general advice on enforcing a patent and can conduct litigation and address the Patents County Court. Some can also conduct litigation in the Patents Court. The titles ‘patent agent’ and ‘patent attorney’ (which mean the same thing) are protected by law and must not be used in the course of a business by anyone who is not on the register of patent agents. Patent Co-operation Treaty (PCT) A system through which a single patent application can be filed for a number of different PCT countries at once. A single application is filed initially at a Receiving Office. After a search and publication, the application is converted to a set of national or regional applications in different countries (or both). Patent pending A statement showing that the process of getting a patent is underway. Patents County Court A court set up as an alternative to the Patents Court for dealing with patent disputes.

Preliminary examination An examination to make sure that formal requirements are met. Prescribed period A time allowed in the Patents Rules for doing certain acts and for fulfilling certain requirements. Prior art Previous publications or products in the same technical field. Prior use Someone using the claimed invention before the priority date of the patent. Priority date The earliest date that the patent has. A UK patent application may claim as a priority date the filing date of an earlier related patent application as long as the earlier application was: filed in the previous 12 months; and filed in the UK or another member state of the Paris Convention. Priority document A copy of a previously filed patent application which provides a priority date for a later application. Private applicant A person or company applying for a patent by themselves without professional help. Publication A patent application which is successfully granted will be published twice – see steps 6 and 8 >p13. ‘A-publication’ is the first time and happens shortly after 18 months from the filing date (or the priority date if there is one). The application is generally published ‘as filed’ – a searched but unexamined patent application. ‘B-publication’ is the second time and happens when the patent is granted. The application is published in its final form.

Glossary of patent terminology Registered design A design registered with the Patent Office under the Registered Designs Act. This protects the look of an article, but not the way it works, for up to 25 years, as long as renewal fees are paid. Registered trade mark A name or symbol used to show that a product is made by a particular company, which has been legally registered so that no other company can use it. Reinstatement A procedure which allows the processing of a terminated patent application to continue. Renewal fee The yearly fee paid to keep a granted patent ‘in force’. Restoration The proceedings by which a patent which is no longer in force because a renewal fee was not paid may be brought into force again. Revocation A process by which a granted patent can be cancelled. Search To look for relevant prior art so the patentability of an invention described in an application can be assessed. Requested using form 9A.

Substantive examination A detailed examination of the application to make sure it meets patent law. Requested using form 10. Technical contribution An improvement in an area of technology which is patentable. Technical description A full and detailed description of all the parts of the invention. Terminated A patent application which has not been allowed to continue. UK Intellectual Property Office A United Kingdom government agency, where patent applications are received, examined, searched and granted. The office also deals with other intellectual property right applications and policy. Unregistered design Automatic protection of the three-dimensional shape of a new design for 10 years from the date the product is first marketed. Also known as ‘design right’. Withdrawal The act of withdrawing an application. Withdrawn Describes an application that the applicant has told us they do not want to continue with, for example, to prevent publication. World Intellectual Property Organisation (WIPO) The United Nations agency which administers most Intellectual Property Treaties and which runs the PCT and Madrid (International Trade Mark Registration) systems.

Search fee Money paid to carry out a search. Search report A report bringing an applicant’s attention to the documents to be considered by an examiner during a substantive examination to work out whether or not their invention is novel and inventive. Specification The term used to cover the description, drawings and claims contained in a patent application. Statement of invention Wording in the ‘description’ that sets out the scope of an invention. This is normally the same as the widest ‘claim’ and must be consistent with the claims. 25

Other sources of information Business advice

Other help

England

The following schemes and resources are of particular interest to inventors.

• Business Link www.businesslink.gov.uk 0845 600 9 006 Northern Ireland

The National Endowment for Science, Technology and the Arts (NESTA)

• Invest Northern Ireland www.investni.com 028 9023 9090

NESTA was set up to help creative individuals, including inventors, realise their full potential while also helping to turn creativity and ideas into products and services. For more details and a free information pack, visit www.nesta.org.uk or phone 020 7438 2500.

Scotland

SMART and Grant for Research and Development

• Business Gateway www.bgateway.com 0845 609 6611

Grant for Research and Development in England and SMART in Scotland, Wales and Northern Ireland are government schemes providing grants to help individuals and small or medium-sized businesses research and develop new technologically innovative, products and processes. For more details, contact any of the organisations listed under ‘Business advice’.

Scottish Highlands and Islands • Highlands and Islands Enterprise www.hie.co.uk 01463 234171 Wales • Business Eye www.businesseye.org.uk 08457 96 97 98 See also the inventor contact list of the Business Link website at www.businesslink.org/invention You can also get advice and help from sources such as: • government offices; • Citizens Advice Bureaus; • the Federation of Small Businesses; and • Chambers of Commerce. Their details are in your local phone directory.

Universities While universities are not a source of financial support, the help they can provide, for example technical advice and market research, can help you keep down your costs.

Other sources of information Idea development

The British Library

Inventor clinics

The Business and Intellectual Property Centre at the British Library gives you access to the information you need to develop and market your ideas. Full information about patents, trade marks and designs are held alongside a large collection of market-research reports, trade journals and business databases. Specialists are on hand to help you identify the most useful information sources and search them effectively. They can also carry out in-depth research for an agreed fee. Free clinics to help you search patents are held at least once a month.

The Chartered Institute of Patent Attorneys (CIPA) hold regular clinics at a number of sites around the UK, giving advice to inventors who are at the early stages of developing an idea. Inventions and problems can be discussed in confidence with chartered patent agents for 30 minutes, free of charge. mail@cipa.org.uk 020 7405 9450 Innovation Relay Centres Founded by the European Commission’s Innovation/SME Programme, a network of technology advisory centres known as Innovation Relay Centres (IRCs) span the European Union, with eight in the UK. Their purpose is to promote innovation and encourage research results to be exchanged across Europe, as well as providing advice, consultation and training support. Help includes information on patent rights, licensing strategies, finance, venture capital and creating international joint ventures. To find your nearest centre, visit www.irc.cordis.lu Patent Information Centres (PATLIBS) PATLIBs are European libraries and information centres that provide information about patents, trade marks, copyright and design rights. Many offer guidance on how to make the best use of patent databases so you can assess whether your invention is new. Some PATLIBs in the UK hold clinics where you can have a free consultation with a patent agent or a business advisor. A patent agent can give you advice on the procedures involved in getting a patent. A business advisor can help you assess the commercial potential of your invention. Extra services, such as professional searching of commercial patent databases, are offered in many PATLIBs for a fee.

For more information, visit the British Library’s website at www. bl.uk/business or phone 020 7412 7903. Specialist organisations There are a number of organisations specifically aimed at helping inventors develop their ideas and providing advice on finding financial help, for example, a joint venture with a business partner or licensee. One example of a non-profit-making organisation which specialises in helping inventors is the Institute of Patentees and Inventors which offers advice and guidance on all aspects of inventing. For more information, visit www.invent.org.uk or phone 020 8541 4197. Another helpful independent organisation is ‘Ideas 21’ which is dedicated to supporting inventors by holding networking meetings in London and Manchester and sending newsletters by e-mail. Its website includes an Innovation Calendar sponsored by NESTA, an Innovation Directory which lists professionals who can help you take your idea forward, and gives you access to a list of members. It also offers you the opportunity to advertise yourself and your invention. Inventors can book free consultations with professional advisors, which are held every month in London. For more information, email info@ideas21.co.uk, visit www.ideas21.co.uk, or phone 020 7539 4993.

For details of your nearest PATLIB centre visit www.patent.gov.uk/patent/howtoapply/libraries or contact our Central Enquiry Unit >p29

Contacts Litigation advice

UK Intellectual Property Office

The Patents Court Royal Courts of Justice The Strand, London WC2A 2LL 020 7947 6518

e cannot give advice on what may be the best course to take for W your particular invention, but we will be pleased to give you what general advice and help we can on the subject of patents and other intellectual property.

The Patents County Court Field House, 15-25 Breams Buildings London WC4A 1D2 020 7917 7821

If you plan on applying for a patent without professional help, you can get a free copy of our booklet patents application guide, as well as information on registering trade marks and designs. You can get these from our Central Enquiry Unit or from our website, where the information you need may already be available.

UK Intellectual Propert Office Patents Litigation Section Cardiff Road, Newport, South Wales NP10 8QQ 01633 814736

Central Enquiry Unit

Patent agents

For all general advice and information on patents and other intellectual property www.ipo.gov.uk enquiries@ipo.gov.uk 08459 500 505 text 0845 222 250 Concept House, Cardiff Road Newport, South Wales NP10 8QQ

After reading this booklet, you may want more advice as patenting can be very complicated and the consequences of doing something wrong can be serious. Chartered patent agents are professionally qualified to advise you on any area of patenting, and any discussion with them will be in confidence.

Renewals Section for advice on renewing UK and EP(UK) patents renewals@ipo.gov.uk 01633 814 649 Search and Advisory Service for advice on searches commercialsearches@ipo.gov.uk 01633 811 010 Litigation Section for advice on patent rights disputes litigation@ipo.gov.uk 01633 814 736 If you would like to visit us in person, either in Newport or London, please call our Central Enquiry Unit first to arrange an appointment. International and European Patent Offices

We cannot recommend any particular patent agent, but you can get a list of all patent agents registered in the UK from the address below and local patent agents are usually listed in classified directories. The Chartered Institute of Patent Attorneys www.cipa.org.uk 020 7405 9450 95 Chancery Lane, London WC1V 7PZ

Licensing practitioners Licensing practitioners can offer advice on all aspects of licensing your patent. You should send all enquiries to the Secretary of the Institute. The Institute of International Licensing Practitioners www.iilp.net enquiries@iilp.net 01865 812060 Oxford Centre for Innovation, Mill Street Oxford. OX2 OJX

• For a list of PCT member countries, contact WIPO www.wipo.int/members/index.html • For a list of EPC member countries contact the European Patent Office (EPO) www.european-patent-office.org/epo/members.htm You can also visit www.intellectual-property.gov.uk which aims to answer your questions and provide you with the sources you need to develop a greater understanding of intellectual property – copyright, designs, patents and trade marks.

Other Publications Patents

PATENTS: Essential Reading

PATENTS: Application Guide

1. Patents: Essential Reading

Patents: Basic Facts This booklet provides information you need to consider before committing yourself to applying for a patent, a summary of the patenting process in the UK and abroad.

2. Patents: Application Guide 3. Patents: Basic Facts

If you invent something that could be commercially successful, you may be interested in applying for a patent.

UK Intellectual Property Ofﬁce is an operating name of the Patent Ofﬁce

Designs

How to Apply to Register a Design

4. How to Apply to Register a Design Designs: Basic Facts

5. Designs: Basic Facts

This booklet will help you apply to register a design in the United Kingdom. It also includes information about applying to register a design outside the UK.

This leaflet provides basic information on some areas of design protection.

UK Intellectual Property Ofﬁce is an operating name of the Patent Ofﬁce

Trade Marks Trade Marks: Application Guide

Trade Marks: Essential Reading

7. Trade Marks: Essential Reading 8. Trade Marks: Application Guide

Trade Marks: Basic Facts This booklet, together with the booklet ‘Trade marks: application guide’, will help you apply to register a trade mark in the UK.

9. Trade Marks: Basic Facts

This booklet, together with the booklet ‘Trade marks: essential reading’, will help you apply to register a trade mark in the UK.

Concept House Cardiff Road Newport NP10 8QQ Tel: 08459 500 505 Minicom: 08459 222 250 Fax: 01633 817777

This leaflet provides basic information on some areas of trade marks. It is not a reference book and has no legal authority.

www.ipo.gov.uk For copies in alternative formats please contact our Central Enquiry Unit. When you no longer need this booklet, please recycle it. Revised: Feb 07

UK Intellectual Property Ofﬁce is an operating name of the Patent Ofﬁce

UK Intellectual Property Ofﬁce is an CUSTOMER operating name of the Patent Ofﬁce SERVICE EXCELLENCE

UK Intellectual Property Ofﬁce is an operating name of the Patent Ofﬁce

COPYRIGH T

Additional

T DES IG

TEN PA

TR A DE S KS M RK AR MA

Search and Advisory Service

10. Search and Advisory Service

Concept House, Cardiff Road, Newport, NP10 8QQ Tel: 08459 500 505 Minicom: 08459 222 250 Fax: 01633 817777 www.ipo.gov.uk

For copies in alternative formats, please contact our Central Enquiry Unit.

Revised: April 07

CUSTOMER SERVICE EXCELLENCE

DDU/P300

UK Intellectual Property Ofﬁce is an operating name of the Patent Ofﬁce

Phone: 01633 811010 Fax: 01633 811020 E-mail: sas@ipo.gov.uk

All Publications are available through the UK Intellectual Property Office Website: www.ipo.gov.uk Search and Advisory Service Concept House Cardiff Road Newport NP10 8QQ

or by phoning our Central Enquiry Unit on 08459 500 505 To order any of the above publications, please tick the box next to the ones you want, fill in your name and address over the page, and return the form to: Central Enquiry Unit, Concept House, Cardiff Road, Newport, NP10 8QQ. 31

UK Intellectual Property Office Publications order form

Name:

Address:

Phone number:

Fax number:

E-mail:

Any other comments you may wish to add:

After filling in your information, please tear this page off and return it to: Central Enquiry Unit Concept House Cardiff Road Newport NP10 8QQ. www.ipo.gov.uk

CUSTOMER SERVICE EXCELLENCE

Patent Factsheet: Publication This fact sheet includes basic information about the first publication of your patent application, the so called “A” publication. It explains the form in which your application is published, what additional information is published at this stage, and its significance on future rights. This fact sheet does not carry any information about second or “B” publication, which takes place after a patent is granted.

Publication What does “A” publication mean? Copies of your specification are made available to the general public and sent to specialist libraries and other Patent Offices around the world. The application is laid open to public inspection and the fact of publication is advertised in the UK Intellectual Property Office Patents and Designs Journal. Details of your application are also put on to computer databases. It is therefore at this stage that all details of your invention are seen by competitors. The act of publication gives notice that you are seeking a patent and warns the public of the monopoly sought (via the claims). If you do not want your application published you must withdraw it before the date when preparations for publication are complete. An indication of this date will be provided in the cover letter of your search report. A few days before this date, we write to you to give the exact date when preparations for publication will be complete and provide you with a publication number and date of publication. By then it may be too late prevent publication of your application. What is published? The published “A” document includes: (i) the description of your invention (as originally filed), (ii) any drawings filed with your application (as amended if necessary), (iii) the first set of claims filed (and the last set of any amended claims received before publication), (iv) the front page with the abstract (which may have been amended by the examiner), an illustrative drawing, bibliographic details and a list of documents cited on the search report, (v) a copy of the search report. In addition, at “A” publication, all the correspondence on file between you and the UK Intellectual Property Office becomes available to the public. It is not included in the “A” document, but may be inspected

(REV DEC07)

by any member of the public requesting to see it. What are the reference codes on the front page of the “A” document? These are standard codes used by all countries that are members of the World Intellectual Property Organisation (WIPO). Overleaf there is a typical front page with an explanation of the codes used. When is my application published? Unless you have requested accelerated publication, “A” publication will not generally take place until about 18 months from the earliest date of your application – either the filing date or the priority date (if claiming priority from an earlier application). In the example given overleaf the application was filed 17.06.1992 but has an earlier priority date of 19.06.1991; the publication date is 23.12.1992, approximately 18 months from the priority date. Have I any patent rights? At this “A” publication stage you have no patent protection. A patent is only granted when an application meets the requirements of the Patents Act and Rules and this can only be established by substantive examination (see below). If a patent is eventually granted, you may be able to take action against infringements which have occurred after your “A” publication date, but not for the period between filing and first publication of your application. What do I do next? You may decide that you do not wish to proceed with your application, for example, if the documents cited in the search report indicated that your invention was not new. However, if you decide to continue you have 6 months from the date of “A” publication in which to request substantive examination of your application, unless you have done so already, by filing Patents Form 10, with fee.

UK Intellectual Property Office is an operating name of the Patent Office

DDU/Factsheets - 12-/07

ÂŠ Crown Copyright

Description of document Code letter applied to type of publication (See overleaf) Standard, two letter, code to define country The reference number given to the application (year related) by the UK Intellectual Property Office at filing The date that the application was filed with the UK Intellectual Property Office Information about the earliest date that the application carries (See over) eg (31) is priority application number, (32) is date of that application and (33) priority country (JP is Japan) The date on which the application is first published The International Patent Classification Code applied by the UK Intellectual Property Office to this application (and edition of this used) The National Classification Code applied by the UK Intellectual Property Office to this application (and edition used) Title of the abstract List of prior art documents listed in the search report Abstract of the invention Document collections searched by the UK examiner (See Search Report Factsheet) Persons or corporate body applying for the patent

(12) (13) (19) (21) (22) (30) (43) (51) (52) (54) (56) (57) (58) (71)

We are keen to help all our customers as much as possible, but regret that we cannot assist with the commercial exploitation of your invention. This factsheet is not intended to be a comprehensive guide and necessarily omits details which may be relevant in particular circumstances.

Enquiries: You can contact the UK Intellectual Property Office on: 08459 500505 (local call rate) or Minicom for the hard of hearing: 08459 222250. Alternatively visit our website at www.ipo.gov.uk

Patent number given to published document

(11)

EXPLANATION OF REFERENCE CODES