UK and European Patent Basics
‘European patent application is that a European application is a bundle of national patent applications (including the UK) centrally prosecuted at the European Patent Office.’
Understandably, we receive a lot of questions about how long it takes to get a patent in the UK and Europe and when certain formalities are due. Below we outline general timelines for a UK patent application and European patent application and discuss some of the major differences between the two. If these timelines seem a bit long for you, there are some mechanisms to speed up prosecution – please don’t hesitate to contact your attorney for further information.
First Filing – UK Patent Application
For most of those invented in the UK, a UK first filing is often the place to start. It has relatively inexpensive official fees and plants your flag in the sand for further applications. It is important to note a UK application only provides protection in the UK (plus some UK territories if applied for/re-registered), and further foreign applications will need to be filed to provide protection in other countries.
After filing, the main stages of patent prosecution are search, publication, substantive examination, and grant. After grant, renewal fees need to be paid to the UK Patent Office to keep the UK patent alive. The time it takes for a patent application to grant is mostly dependant on how long it takes for the Patent Office to examine your application and how many rounds of re-examination are needed for your application to be allowable for a grant’; however, it is worth noting that the UK has a Compliance Period which is 4 ½ years from the filing date or within 12 months from issuance of the first examination report in which the application needs to be put in order for grant.
In brief, the search needs to be requested in the first year after filing your application and is where a patent examiner searches for worldwide public disclosures to determine whether your invention is new and inventive. These are communicated to you in a search report. The search report is usually provided to you before your application publishes and can be useful to decide if you want to continue with an application.
Publication happens around 18 months from filing your application and is when the world is informed of how your invention works as outlined in your application. At this point, you start to get some provisional protection from third-party infringers in the UK. If you don’t want the world to know about your invention, let your attorney know at least a couple of months before the publication date so they can withdraw your application and stop the application process altogether.
By 6 months after publication (around 2 years from filing the application), the substantive examination needs to be requested if not done so at filing. Substantive examination is the bulk of patent prosecution in the UK and is where the patent examiner decides if your application meets the requirements of the UK Patents Act. This involves determining if your invention is novel and inventive, as well as addressing any other objections such as whether your claims are clear or if you have sufficiently disclosed your invention in your application, or if you added subject-matter since filing your application. Usually, there are at least a couple of communications sent between your attorney and the Patent Office to negotiate the best allowable scope of protection for your invention.
Once all the examination matters have been ironed out, your application proceeds to grant. At this point you can celebrate your successful application – you can now also exploit your monopoly against third-party infringers in the UK!
European Patent Application Differences
The main difference between the UK and European patent application is that a European application is a bundle of national patent applications (including the UK) centrally prosecuted at the European Patent Office. A list of contracting national states can be found here and are different (and independent) from the member states of the European Union.
Applying for a patent in Europe is roughly similar to the above UK procedure. You still have the main stages of patent prosecution: search, publication, substantive examination, and grant. Two of the major procedural differences relate to grant/post-grant procedures and renewal fees.
The European patent is a bundle of individual national patents centrally filed and prosecuted at the European Patent Office. Once granted, a European patent must be validated in each individual national state to be enforceable in those national states. Validation generally needs to be completed within 3 months of the European patent granting and can involve filing a number of translations of the European patent at local patent offices. After this, any infringement action needs to be litigated locally and, after a 9-month central opposition period, revocation or invalidity actions will also need to be filed locally.
To compare with the UK timeline, a general timeline of a European patent application is included below:
Another major difference is when renewal fees come due. No renewal fees are due on a UK application until after grant. For a European patent application, renewal fees are due from the third anniversary of filing an application which means you start paying renewal fees before your application is granted. While these renewal fees are payable to the European Patent Office while the application is pending, once granted and after validation of your European patent renewal fees must be paid to each national patent office where you validated the patent. These renewals fees will be due yearly in each office until the patent expires.
Remember, choosing your route for a patent application will depend on:
- Your invention;
- Your business plan;
- Your available funds;
- Your intended market; and
- The likeliest sources of infringing products.
If you want to know more, please don’t hesitate to contact your attorney.