Patenting in united kingdom

Patenting In United Kingdom

Saravanan.ALL.M-I (IPR)Roll No: 35

Objectives:

By the end of the session you will have been:

Made aware of procedure for grant of patent in UK IPO.

Session Outline:

File a patent application

Preliminary examination & Search

Publication

Substantive Examination

Grant of Patent

Choice Of Routes To Grant:

U.K IPO

EPO

PCT

File Application

File claims within 12 months unless filed with application

Search report issued by patent examiner

Substantive Examination

Preliminary examination and Search

Grant and ‘B’ application

‘A’ publication (18 months after priority date)

Procedure of Patent in UK :

Drafting the Patent:

The Abstract - A summary to allow a search to check its novelty

The Description - Statement of the purpose and how it achieves it

The Claims - First states principal of what it does and then states its distinctive features

The Drawings (if necessary)

Fundamental Requirements:

1. Specifically excluded from patent protectionScientific theoriesPresentation of informationSchemes of doing businessMethod of treatment of human or animal bodies

2. NoveltyMust to have been made public by the inventor

or anyone else prior to the patent application filing

Contd...

3. Involve an inventive stepMust not be obvious in the light of what was

already known

4. Industrial applicationIncludes all kinds of industry including

agriculture and pharmaceuticals

Applications for British Patents are filed in Newport. Whole process will take four and half years. Form No. 1

(request for a grant of patent with patent specification and abstract)

Form No. 7 (Statement of inventorship and of right to grant of a

patent) A full application for a patent must contain a request for grant

of a patent, a description of the invention, one or more claims, any drawings referred to in the description of the invention, one or more claims, any drawings referred to in the description or the claims, and an abstract.

Patent Application

Antiphon’s Application [1984] RPC 1:

‘'The applicant must file the claims and abstract within twelve months of the early filing (the so called filing date) if an early application is not to lapse’.

Priority Date:

The priority date is the date at which the novelty, inventiveness, and other aspects of the invention are assessed. Filing is also important since it establishes the ‘priority date’ of the patent. In the absence of a claim to an earlier date, the priority date is the filing date of the application (S. 5)

Preliminary Examination and Search Form No. 9

(Request for a preliminary examination and search)

Fee : £150 (paper filing) and £130 ( E-filing)

Preliminary Examination:

The preliminary examination checks to make sure that application meets the formal legal requirements of the Patents Act 1977 and Patents Rules 2007.

Search: Form No. 9A

(request for search)

Fees: £150 (paper filing) and £130 (E-filing)

Usually IPO 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.

Examiner looks for documents that will decide whether invention is new and inventive.

Search Report: If examiner find any relevant documents, it will listed in

search report.

Search Report: If examiner find any relevant documents, it will listed in

search report. IPO 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 idea is not new.

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

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

Publication:

The application will be published and a made available for public inspection eighteen months from the date of filing (S. 21).

The publication is important for two reasons.

1. Since the act of publication discloses the invention to the public, an unwanted publication may prevent the applicant from relying on other ways of protecting their invention.

2. If the patent proceeds to grant, the date of publication is the date from which the patentee is able to sue for infringement of the patent.

Early publication is known as ‘A’ publication.

Substantive Examination:

Form No. 10 (Request for a substantive examination)

Fees: £100 (paper filing) and £80 (E-filing) This is the final stage before the grant of the patent. This must be filed within six months of the date of early

publication. The application will lapse if the form and fee are not received

within those six months. The substantive examination takes the form of a dialogue

between the examiner and the applicant.

Contd… After the examination the examiner draws

up a report any objections to the application which have been identified. The report is supplied to the applicant who is given an opportunity to comment on the objections.

Grant of Patent:

If UK IPO is satisfied that all the necessary requirements have been satisfied, the patent will be granted [S. 18(4)].

The decision to grant a patent does not take effect until the date on which it is published in the official Journal.

This is known as ‘B’ publication.

The initial grant is for four years. Thereafter the patent may be renewed annually up to a maximum of 20 years from the date of filing (S.25).

Contd…

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 2010, the first renewal fee would be due on 30 April 2014. Renewal fees are then due every year on the same date for the next 15 years.

Annual Renewal Fee:— for the 5th year-70

— for the 6th year-90




— for the 10thyear-170





Contd…— for the 15th year -350

— for the 16th year -410





Intellectual Property Law by Lionel Bently & Brad Sherman (oxford university press) - pg. 341-361.

International Encyclopedia of Law, Vol. 5 (Intellectual Property) by Blanpaink- pg. 132-134.

Intellectual Property Law by David Bainbridge (5th edn.)- pg. 322-337. PCT Applicant’s Guide- National Phase- GB

http://www.ipo.gov.uk/types/patent/p-applying/p-apply.htm http://www.kstode.co.uk/aboutip/filings_files/slide0015.htm http://www.ipo.gov.uk/p-find-number?csbtype=F&csbapp=GB0723735.7

References:

Books Referred:

Sites Referred:

FULL DETAILS: REGISTER ENTRY FOR GB2445070 Form 1 Application No GB0723735.7 filing date 04.12.2007

Priorities claimed: 14.12.2006 in United Kingdom - doc: 0624984 02.03.2007 in United Kingdom - doc: 0704110 27.04.2007 in United Kingdom - doc: 0708237 25.05.2007 in United Kingdom - doc: 0710089 22.08.2007 in United Kingdom - doc: 0716397 26.11.2007 in United Kingdom - doc: 0723143 03.12.2007 in United Kingdom - doc: 0723633

Title ELECTRIC WATER HEATER Applicant/Proprietor OTTER CONTROLS LIMITED, Incorporated in the United

Kingdom, Hardwick Square South, Market Street, BUXTON, Derbyshire, SK17 6LA, United Kingdom [ADP No. 00646927003]

Inventors : PETER H WRIGHT, OTTER CONTROLS LIMITED, Hardwick Square South,

BUXTON, Derbyshire, SK17 6LA, United Kingdom [ADP No. 09583865001] ANDREW MOTTRAM, OTTER CONTROLS LIMITED, Hardwick Square South, BUXTON, Derbyshire, SK17 6LA, United Kingdom [ADP No. 09764747001]

Publication No GB2445070 dated 25.06.2008 Examination requested 12.12.2008 Grant of Patent (Notification under Section 18(4)) 29.11.2011 Publication of notice in the Patents and Designs Journal (Section 25(1)) 28.12.2011 Title of Granted Patent ELECTRIC WATER HEATER

RENEWALS DATA : Date Filed 04.12.2007 Next Renewal Date 28.03.2012 Status PATENT IN FORCE

Education

Patenting in united kingdom