For most of those inventing 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 Intellectual Property Office, ‘IPO’, to keep the UK patent alive. The time it takes for a patent application to grant is mostly dependent on how long it takes for the IPO to examine your application and how many rounds of correspondence it takes for your application to reach an allowable state; however, it is worth noting that the UK has a Compliance Period which is 4 ½ years from filing date or 12 months from issuance of the first examination report – this sets the period in which the application must be put in order for grant.
In brief, the search needs to be requested during 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. The search results 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 publication is when the world is informed of the content of your application, and therefore how your invention works. 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 chosen 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), 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 during amendments to the claims, for example, you added subject-matter since filing your application. Usually, there are at least a couple of rounds of correspondence sent between your attorney and the IPO to negotiate the best allowable scope of protection for your invention.
Once all of the matters arising during the examination have been addressed, 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!
Remember, choosing your route for a patent application will depend on:
• Your invention.
• Your business plans.
• Your available funds.
• Your intended market;
• The likeliest sources of infringing products.