Patents: a complete guide

What is a patent?

A patent is a type of IP right which gives the owner exclusive rights to how an invention is made, used or sold for a certain time period. The patent owner has to show that the invention is novel and inventive for a patent to be granted by an IP office. Patents can be granted for products, processes etc. that represent a technical solution to a problem, not e.g. abstract ideas, artistic works or business methods. 

How to get a patent

To obtain a patent, you need to submit a patent application to the IP office where you want the legal protection to apply. For example, to get a patent which can be enforced in the UK market, you have to file an application with the UK Intellectual Property Office. 

There are lots of steps to the patent process which also need to be followed to give an application the best chance of being granted: 

• Some companies undertake patent searches to understand if an innovation is patentable before filing an application. These are called patentability searches. You can also search to understand whether there’s a risk of infringing other people’s patents. These are called freedom to operate searches.

• Draft the patent application by pulling together all the relevant technical details and commercial information and creating a patent application that provides you with the best commercial protection for your invention. Patent applications contain a detailed description of the invention, and a set of claims that define the protection you are seeking.

• File the application at the right time and in the correct jurisdiction to ensure your invention is protected in the relevant markets.

• Prosecute the patent with the relevant IP office, including dealing with any objections raised by the IP office. Once any objections have been overcome, the patent is granted.

How to do a patent search

Depending on the type of search, you might be able to do it yourself or hire a specialist firm. There are two main patent searches that should be considered before the drafting process begins. 

A patentability search reviews publications to see if there is anything existing which could mean your invention isn’t considered ‘new’ or ‘inventive’. These can be conducted by inventors or businesses before filing and will be done by patent offices after a draft is filed. However, getting an expert to run a pre-filing search can help you head off unforeseen problems. 

A freedom to operate search looks for patents in the jurisdiction you’re going to be marketing your product. The intention is to identify patents you could infringe if you bring your invention to market. It is usual to have a patent attorney involved, as understanding what patents do and don’t cover can be a complex legal exercise. Although these searches can be expensive, they can mitigate the risk of facing an infringement action later down the line. 

How to write a patent application

To write a successful patent application, you need to meet the criteria and format set out by the relevant IP office. For example, if you’re filing an application with the UK Intellectual Property Office, it needs to include: 

• A description of the invention which explains how it works. This may refer to some drawings.

• A set of legal ‘claims’ that define the scope of protection you would like your patent to have.

• A summary of the invention in an abstract.

The patent office has fact sheets which set out the rules of how each of these sections should be set out. If you’re filing overseas, you may need to appoint a local attorney to translate your application and file it at the local IP office. 

Most importantly, your application needs to demonstrate that your invention meets the central criteria of being ‘new’ and inventive.

How to file a patent

To file a patent, you have to send it to the relevant patent office, with details of who the applicant is. In the UK, you can do this online. You also need to pay filing fees, which vary between different offices. Once you’ve done this, you will receive an application number, and will have a “pending” patent application. 

What does ‘patent pending’ mean? 

If someone says they have ‘patent pending’ it means their application has been filed but is not yet granted as a patent. This is where an IP office tests the claims set out in the application. If it finds that the application meets the required legal standard, then the patent will be granted. 

Businesses can start to bring an invention to market while it has a ‘patent pending’ status. Having a pending patent application can be useful to warn off competitors looking to sell or manufacture a similar product in the same jurisdiction. However, it is no guarantee that your patent will be granted. 

How long does it take to get a patent? 

The length of a patent process can vary hugely depending on several factors such as the complexity of an invention, the jurisdiction you’re filing in and the quality of your application. We find that most UK patents are granted in three to four years from filing.

How long does a patent last? 

Typically, once granted, a patent will last for 20 years from the filing date. However, renewal fees need to be paid every year by an owner to retain these rights. Otherwise, the patent will lapse. 

Can you renew a patent?

Renewal fees have to be paid annually to maintain a patent. As long as these are paid, a patent can be retained for up to a maximum of 20 years. After this point, most patents can’t be renewed.

What happens when a patent expires?

When a patent expires, the owner loses the exclusive IP rights over the invention it concerns. This means others can start to make, sell and use the invention without worrying about infringement action. Any licensing agreements under the patent will also come to an end. 

As such, a patent owner will no longer have competitive advantage (unless they can leverage other IP rights) and will face others bringing their product to market. 

How much does a patent cost?

There are several different costs associated with having a patent. They include paying for:

• Pre-filing searches

• Drafting services

• Filing fees

• Professional fees during prosecution (i.e. responding to objections)

• Renewal fees

Various factors can impact on this cost, including how complicated an invention is, where you’re filing it and the attorneys you use. Getting a straightforward UK patent to grant for a simple mechanical invention in the UK costs in the region of £4,000 - £5,000 (ex VAT).

What is Patent Box? 

Patent Box is a tax relief UK businesses can claim on any profits they’re making from patented inventions. If they elect to be part of the Patent Box scheme, they can apply a 10% Corporation Tax rate to any profits they’re making on patented products. This Corporation Tax rate is lower than the main rate of 25%. 

Which companies qualify for Patent Box?

Companies have to be liable for UK Corporation Tax, make a profit from patented inventions that they own or exclusively license. They also have to have undertaken qualifying development on these patents. 

The types of patents that qualify for this tax relief also have to meet certain criteria, such as being granted by the UK Intellectual Property Office, the European Patent Office or authorities in the European Economic Area. 

How does a business claim Patent Box? 

To claim Patent Box tax relief, a business has to qualify and elect to enter the regime via its Corporation Tax regime. It can claim this relief for any profits made within two years of the accounting period end. 

What is patent infringement? 

Patent infringement is when a third party violates the legal rights of a patent by using, making, importing or selling a patented product in the specified jurisdiction without being authorised to do so. For a patent to be infringed, it must be granted and in force. 

How to deal with patent infringement

If someone infringes your patent, then you should gather as much evidence of their actions as possible. Once all this has been collected together, you should send a notice of infringement to the third party. To avoid the case going to litigation in court and maximise commercial gain, you should enter alternative dispute resolution, which can lead to agreements such as voluntary withdrawal or licensing. 

To avoid infringing an existing patent, you can conduct a freedom-to-operate search. This will help you identify any existing patents which you could violate if you bring something similar to market. 

What is patent licensing?

Patent licensing is when a third party is given permission to use, sell or make a patented invention. A legal agreement, it’s usually made with a patent owner in return for royalties. This means the patent owner still holds all the legal rights, but is allowing another party to commercialise them for a limited time period. Patents can be licensed exclusively or shared between several parties. 

How to mark a patent

Marking out a patent or application can prevent infringements and deter competitors from bringing similar products to market. Patent or application numbers can be marked on the product itself by engraving or printing the patent or application number. It can also be done virtually via a QR code or URL. We recommend that marking forms a key part of your IP strategy- it is far better to dissuade infringement than have to deal with it in court!

What does a patent attorney do? 

A patent attorney is a qualified legal professional who can support applicants through the whole process, from the initial searches through to renewals and enforcement. With lots of experience in dealing with patent offices and processes, they can improve the likelihood of a patent being granted and help leverage their commercial value. The UK Intellectual Property Office recommend that patent attorneys are used when filing a patent application.

From getting initial advice to guiding you through each step, getting support from a patent attorney can help you build an IP portfolio and get the right legal protection for your inventions. To find out more about how our team can help you, book a free consultation.