What can you patent and what can you not patent in the UK? Chartered Patent Attorney, Nonny Jones of Alembia Intellectual Property explains what you need to know about applying for a patent in the UK.

What is a patent?

A patent is a type of intellectual property right. Like other forms of intellectual property such as trademarks or copyright, patents protect the results of human creativity. However, while copyright protects artistic expression (for example literary works and music) and trademarks protect commercial signs (such as product names or logos), patents protect inventions. Inventions can usefully be thought of as solutions to technical problems, like a new drug treatment, convenient tool, or improved engine.

Granted patents are powerful assets as they can be used to prevent competitors from commercially exploiting any invention they cover for a basic period of 20 years, subject to fees being paid to keep the patent “in force” and the patent right not being successfully challenged and overturned.

Like most legal rights patents are territorial in nature, and although global patent law is harmonised to some extent, there are differences in patent procedure from country to country. In this article, we will focus on the UK’s patent regime.

What can you patent in the UK?

The UK Patent Act 1977 does not explicitly define an “invention”. Instead, it specifies certain legal criteria that must be met for an invention to be patentable. The most important of these are that an invention must be:

• industrially applicable
• novel
• inventive

Industrial application

To have industrial applicability, an invention must be capable of being made or used in any kind of industry. In practice, this presents a low bar, but meeting the other two main requirements of patentability is a sterner test, assessed against the “state of the art” (all related technical disclosures) in existence before a patent is requested.

Novelty

Novelty requires that an identical invention has not been ‘disclosed’ in a single source before the patent filing date. Disclosure can be in any form, most commonly in writing (such as a paper article or a webpage), but verbal disclosures may also be relevant.

Importantly, the language or accessibility of a disclosure is not significant. One of the UK’s most well-known patent judges famously declared that an article “written in Sanskrit wrongly placed in the children's section of Alice Springs’ public library” could still destroy the novelty of an invention. Despite this, because an earlier disclosure must be identical to a later invention to take away its novelty, even small differences can help an invention overcome this hurdle.

Inventiveness

While minor differences may be enough to make an invention novel, they do not necessarily mean it will be inventive. To satisfy this requirement an invention must not be “obvious to a person skilled in the art”. The “skilled person” here is a ‘legal fiction’ with no inventive capacity, but a high level of technical skill. The skilled person can read and combine teachings from different state of the art disclosures and follow obvious directions to try and solve technical problems.

If an invention is novel by virtue of some small modifications compared to the closest prior art, but the skilled person would be motivated to make those modifications and reach the later invention after reading other documents (or based on their training), then the invention will lack the necessary “inventive step” to be patentable.

Because novelty and inventiveness are judged against the content of earlier disclosures, it is critical that budding inventors wishing to file a patent keep their technology confidential unless and until a patent application has been filed. Doing otherwise runs a risk of disclosing one’s own invention and preventing the possibility of any subsequent patent filing.

What can you not patent?

As well as setting out the criteria by which an invention may be patentable, the Patent Act also specifies certain subject matter which cannot be patent protected. This includes:

• discoveries, scientific theories or mathematical methods
• purely aesthetic creations, such as literary, music or artistic works
• schemes for performing a mental act or doing business, or games
• the presentation of information

Broadly speaking these exclusions ensure that patents fulfil their public purpose of rewarding and stimulating technical innovation without stifling normal human expression or overlapping with other types of intellectual property.

It should also be noted that methods of treatment of the human body by surgery or therapy, and methods of diagnosis performed on the human or animal body are similarly unpatentable. Excluding these areas ensures that healthcare professionals are not restricted by patents when seeking the best treatment for their patients. However, despite these “medical use” exclusions, it remains possible in the UK to carve out patent protection for ancillary technologies such as new drug substances or clinical indications.

Finally, as well as restrictions on certain biotechnological inventions (including processes for cloning human beings or those relying on the destruction of human embryos), patents on immoral inventions are also prohibited. These include technologies illegal in the UK, such as anti-personnel mines and cluster munitions.

How do you apply for a patent in the UK?

The first step of applying for a patent in the UK is to draft a patent specification. This is a legal document which captures (or “claims”) a particular invention in text form. Although in principle anyone can draft a specification, it is highly recommended that inventors consider using a patent attorney. Patent attorneys are highly trained individuals with both a STEM background and extensive legal training, which not only makes them uniquely placed to translate complex technical subject matter into legal text, but also prosecute that text to a granted patent, and (if necessary) help enforce or license it.

Once a patent specification is complete, it may be filed at the UK Intellectual Property Office. At present the office does not restrict who can file patent applications, but if a patent attorney has been engaged to draft the specification, it is usually sensible to leave filing to them to avoid any procedural errors.

After a first filing has been made, it may be prosecuted in its own right. However, more commonly, it’s used as a “priority filing” to reserve its filing date for other UK (or foreign) patent applications filed within twelve months. If being used for the latter, the first application will usually be abandoned and replaced by a later-filed equivalent, because this strategy effectively delays the expiry of any eventual patent by up to a year.

However, if the first filing is progressed itself, it will then be necessary to complete various steps before grant can be secured. These actions include:

• requesting a search, where a patent Examiner looks for state of the art disclosures similar to the invention being claimed
• an examination, where an assessment of the patentability of the invention versus earlier technology found in the search is carried out

During examination the Intellectual Property Office may make reasoned objections that a patent application’s claims are not allowable, for example because the invention they cover lacks novelty or an inventive step. In this case, it may be possible to argue against the Examiner’s opinion, or (in a limited fashion) amend the patent’s scope of protection so it becomes acceptable. Again, a good patent attorney will be able to help decide what strategy and arguments are most likely to deliver a granted patent that supports a client’s desired outcomes.

How much does it cost to apply for a patent?

Patent drafting costs vary significantly as they depend on the patent attorney and the complexity of the subject matter. However, a first patent application typically costs somewhere between £2,000 and £6,000. While this may seem expensive, patents protecting commercially successful inventions can often be worth millions (or even billions) of pounds, and since mistakes made in drafting are often fixed and fatal, it is usually a wise investment.

There will also be various fees due to the Intellectual Property Office. These currently total to a minimum of £310 (£60 application fee, £150 search fee and £100 examination fee), with further regular payments due if you wish to renew a patent, ranging from £70 to £610. There may also be additional charges if a patent attorney’s assistance is required for responding to any examination reports raised during prosecution.

How long does it take to get a patent?

Obtaining a granted UK patent is a relatively slow process. The Patent Act requires that all patent applications must be “in-order” (suitable) for grant within four and a half years from filing date, but grants are usually obtained quicker than that, typically coming two or three years from initial filing. It should also be noted that since UK patent applications do not generally publish until 18 months after their first filing date and will not be granted until at least three months after publication, there is a minimum prosecution time as standard.

Various options are available to accelerate the UK patent prosecution process beyond this normal timeline, including the “Green Channel” for environmentally friendly inventions, early publication, or speedy examination for applications where there is a “good reason”, such as a competitor about to use the application’s technology. The UK Intellectual Property Office may also accelerate grant of UK applications which are equivalent to patents granted in certain other countries if the applicant requests processing under the Patent Prosecution Highway.

About the author

Nonny Jones is a Chartered Patent Attorney, European Patent Attorney and Certified UK Intellectual Property Litigator. As a founding partner of Alembia Intellectual Property, a firm specialising in life sciences and chemistry, he is highly experienced in drafting, prosecuting and litigating patents, as well as related agreement, licensing and business development work.

See also

What are Gazette company profiles?

A beginner's guide to payroll software

A guide to writing business plans

Find out more

Patent Act 1977 (Legislation)

Apply for a patent (GOV.UK)

Patent forms and fees (GOV.UK)

Renew a patent (GOV.UK)

Patent Prosecution Highway (Global PPH)

Image: Getty Images

Publication date: 1 March 2021

Any opinion expressed in this article is that of the author and the author alone, and does not necessarily represent that of The Gazette.