Author: Andrew Clay
Patents in the UK are one of the most important IP rights as they protect the investment made in developing new products and processes.
In this post we explain what patents are, how to get them and what rights they give you.
What is a patent?
A patent is a statutory monopoly, lasting for up to twenty years, granted in respect of a new product or process, which meets certain criteria. If your product or process is protected by a patent then only you (and businesses you license) can lawfully commercialise that product or process. If third parties import, make or sell the patented product or use the patented process then you can sue them and claim damages or an account of their profits and seek an injunction. Having a patent can protect your new product or process from competition and can thus allow you to have a bigger market share and/or charge more for your product or process.
What can be patented in the UK?
A valid patent can be obtained for a new product or process, which is not an obvious development over what was already known and which is capable of being applied industrially. Tens of millions of patents have been filed over the years worldwide, illustrating the enormous range of what can be protected. The range of things that can be patented is therefore very broad as illustrated by the following examples of patentable inventions:
- an improved gearbox
- a new polymer or other chemical entity
- a class of chemicals to improve the way fuels perform in engines
- a new arrangement of components in a floor cleaner
- the use of a new drug to treat a particular illness
- a device to hold taxi licences on windscreens
- a new design of a memory bus or semiconducting material
What cannot be patented in the UK?
However not every invention can be patented: for example new ways of doing business, mathematical methods and software and most surgical techniques are not patentable. All patentable inventions must be new and not merely an obvious tweak over what was previously out there.
Newness (or novelty) is a very strict requirement for patented inventions: disclosing your invention before your file for patent protection to just one person, who is not bound by an obligation of confidentiality can invalidate your patent. The golden rule is therefore to file for your patent before you disclose your invention to any third party.
How do I get a patent in the UK?
To ensure you obtain a patent right in the UK it is advisable to consult with a good patent attorney to help navigate you through the process, which can be quite complicated.
In essence for the UK you, or your patent attorney, will file a written description of your invention at the UK’s Intellectual Property Office and then at some point you also file some claims. Claims are relatively short written descriptions of the invention. The wording of the claims is of critical importance to the patent owner as they define the ambit of the monopoly granted by the patent
Next, the patent office will check to see if the invention is really new and not obvious by comparing it with previously filed patents and sometimes other sources such as scientific journals: their results are provided to the owner of the patent application in a search report. The patent office will also provide their views on the invention’s patentability in an examination report. There is usually some back and forth between the patent office and the patent attorney, in which the patent attorney attempts to overcome any objections to the patentability of the invention raised by the IPO, often by amending the claims and/or the written description of the invention.
The patent process in the UK typically takes around two to three years but can be speeded up if there is urgency, for example because there is an infringer in the market who must be stopped. The patent application is typically published 18 months after being filed but that can also be speeded up.
How much does it cost to get a patent in the UK?
The cost of a patent depends on the nature of the invention and where you want to obtain patent protection. For example, obtaining patent protection in the UK will cost at least £5 to £10k for a fairly simple invention but typically its between £15k and £40k. Very complex high tech inventions can cost much more.
Worldwide patent protection often costs at least a £100k and is much higher for complex high tech inventions.
In addition to the costs of filing a patent and the professional fees of patent attorneys, annual renewal fees are also payable to keep the patent in force. For a patent in the UK these are only payable once the patent has been granted and are payable annually from the fourth anniversary of the filing date of the application: they range from £70 (year 5) to £610 (year 20).
Who owns the patent rights in my invention?
Generally the inventor is the owner of the patent rights but if the inventor is employed then the employer will generally own the patent rights if the employee created the invention in the course of their employment, subject to certain exceptions.
Where a third party, such as a consultant, creates an invention pursuant to a commission then the ownership position will depend on the precise nature of the inventor’s commission: for that reason if you are engaging a consultant to assist on a technical project, where an invention might result, then the ownership of any patent rights should always be dealt with expressly in the contract with the consultant before they start work. The paying party will want to own the patent rights in any invention the third party might create. Our IP Solicitors and Chartered Trade Mark Attorneys are accomplished in all types of issues relating to IP ownership or the rights to use IP rights.
How do I use my patent after it has been granted?
Patents are essentially negative rights: they allow you to stop others from commercialising your new product or process. You can use them in two basic ways: you can force others to leave the market or you can charge them for being in the market.
- Forcing third party infringers out of the market
If a third party uses your invention without your consent then you enforce the patent against them. Typically a letter before action is sent first and then if the matter cannot be settled a private civil enforcement action has to be started. Patent infringement actions can be very expensive to fight.
- Charging third parties to be in the market
If third parties want to use your patented invention then you can alternatively grant them a licence to do so via an IP licensing agreement. Typically the licence is granted in exchange for a royalty, which varies with the scale of the licensee’s exploitation of the licensed patent. The licence should clearly define what rights the licensee has and on what the licensee has to pay royalties.
Can I claim Patent Box relief in the UK?
Another benefit of having a patent is that it can enable you to claim what is known as patent box relief. Patent box relief is a statutory deduction on your corporation tax calculation which reduces the effective rate of corporation tax on income derived from exploiting the patented invention (such as product sales or licence income) from 25% (the large company rate after March 2023) to just 10%.
How do I use patents owned by third parties?
If you use inventions protected by third parties without their consent then they may sue you, seek an injunction and damages or an account of your profits. It is generally possible to quantify this risk by getting what is called a freedom to operate search carried out by your patent attorney or specialist IP solicitor. However such searching and the analysis of third party patents that is required can be very expensive and often there can be significant uncertainties about the scope of third party patents, with the result that there remains some residual risk.
What Sonder & Clay can do for you?
Patents represent a very important tool to protect technical inventions. Sonder & Clay’s accomplished IP Solicitors will help you exploit and enforce your patents to maximise their value. Our team enjoy years of IP experience and will devise a licensing or exploitation strategy to help deliver a return on your research and development investment. We can also help you find a good patent attorney with the right technical expertise to help protect your new product or process. Learn more about our patents service and please get in touch to book a free consultation.