Reviewed by Akshay Thaman, IP and Policy Lead | 12 September 2024
For an invention or idea to be eligible for a patent, the claimed invention must, in the opinion of a patent examiner, satisfy three criteria:
If all three are met, then the idea is considered to be an invention and a patent will be granted. A patent is effectively a contract with the state: if an inventor teaches the world how to solve a technical problem in a new and inventive way, the state grants the inventor a monopoly of up to 20 years (in exchange for publication of the invention) to exploit the invention within the territory. However, in any territory where patent protection is not sought, the invention will be available to use by anyone without restriction.
Fundamentally, it is important to remember that a patent grants the owner the right to stop others from using their invention. The 20-year monopoly is important for companies, especially for SME’s, as it gives time for the applicant to commercialise their invention with limited competition, and to potentially recoup their R&D investment in order to help fund future R&D projects.
Firstly, the test for novelty is absolute and requires that the claimed invention is unique and not been made available to the public at the time of filing. If the combination of technical features in the claim can be found within published material anywhere in the world prior to the filing date, then the innovation is not considered new and the invention, as claimed, may be rejected.
Secondly, the test for inventive step addresses the hypothetical question of whether a person ‘skilled in the art’ would arrive at the same combination of technical features, as claimed, to address the same problem. In other words, are the technical features claimed and their combination obvious to a skilled person when considering the problem to be solved? If the patent examiner considers the technical features as claimed to be an obvious choice, or would be arrived at by routine experimentation, then the invention as claimed may be rejected.
Finally, the test for industrial application is more straightforward, in that the invention merely has to be useful and solve some technical problem without consideration of any economic factors, i.e. an invention can have industrial application whether or not there is an economic market in which to exploit it.
It is important to remember that although the cost of applying for a patent is relatively low, professional advice can be a lot more. According to the government website, a patent attorney or advisor typically costs £4,000. However, this figure ignores the fact that, in most cases, the search report will bring relevant prior art to your attention.
The examiner will then explain why this prior art prevents you from obtaining your patent as written. If you wish to proceed with your application, your patent attorney or advisor will be required to make amendments to your claims and/or explain why this prior art isn’t relevant to your invention. Each time your patent attorney does this, you will incur a cost of approximately £1.5k. It’s easy to see how costs can spiral. This government figure will only reflect the cost of obtaining a patent on very basic technology, and only then if it required no amendment or further correspondence between the patent attorney and the IPO. This would be a highly unlikely scenario.
But there are ways to keep these costs down by being clear about the limits of the patent process upfront. Here at Source Advisors, we see that businesses, particularly SMEs, are being discouraged by the prospect of spiralling costs and escalating scope. We have introduced IP Harvest, a fixed price service that evaluates your chances of success at the patent office in order to limit the costs and achieve greater commercial value.
The costs for applying for a patent are relatively low. As of 2022:
If the company decides to proceed with filing a patent application, then it is recommended to hire a patent attorney to draft the application before filing it at the patent office. A brief overview of the patent application process is illustrated below.
After filing, the application will receive a search and initial examination report after approximately 6 months, which will provide an early indication of whether or not the examiner considers there to be any ‘prior art’ that is relevant to the invention as claimed. If the company wishes to seek patent protection outside the UK (for export or licence opportunities), a foreign patent application needs to be filed by the 12-month international filing deadline. This deadline is relatively strict. After this deadline, no foreign patents can be applied for that claims the same invention. The application remains secret until 18 months after filing, at which point it will be published and enters the public domain together with any foreign applications filed by the applicant covering the same invention. If the Search Report is not favourable then the decision may be taken to withdraw the original application before publication at 18 months, this way the innovation has not entered to public domain and it can subsequently be redrafted with more technical detail in light of the examiner’s feedback, and then be refiled as a fresh application.
Assuming the Search Report is favourable, and examination is requested then the application will enter the formal examination phase of the process. This part of the process can take some time, but the objective is to seek a granted patent within 2-3 years of the filing date. The examination step can take longer if the examiner considers there to be a lot of prior art in the field of the claimed invention. In this situation the patent attorney will often negotiate with the examiner and narrow the scope of the claimed invention to avoid the prior art. If the examiner is then satisfied, a patent will be granted for the claimed invention.
The approximate timeline to obtain a granted patent once a patent application is filed.
Once a patent has been granted, it must be maintained by paying an annual renewal fee to the UK Intellectual Property Office. A patent can be renewed for up to a maximum of 20 years. The first renewal fee is due on the fourth anniversary of when the patent was filed for. Following this, the patent must be renewed every year thereafter. Patents can be renewed up to 3 months before the renewal fees are due. Patents can be renewed after its deadline for up to 6 months, however, there will be a late fee on top of the renewal fee for each extra month. A patent can be renewed for up to a maximum of 20 years.
For patents that are granted later than 3 years and 9 months after the filing date, the first renewal fee is due 3 months after the patent was granted.
