Here is another good reason to file a patent in the UK – it is one of the quickest jurisdictions.

If you choose to request a search together with filing the application you are expected to have a search report within 3-4 months. In the United States, it will take 2-3 years if you are lucky, in most fields.

Fast patent examination may be important for many reasons – you may want to have a good indication that it is more “safe” to go on with the project. You may want to show investors that the patent is “good” and has good chances to be allowed. You may want to accelerate corresponding applications (more on this issue – in another post). You may simply want a certificate of a granted patent on the wall.

In any case, the UK patent examination is expected to start faster than in more jurisdications.

The UKIPO gives preferential treatment to patent applications realting to environmentally-friendly technologies. It will fast-track any green application. The requirement to satisfy the UKIPO about the environmental benefits of the invention that is the subject of the application is not very onerous: a simple letter to the UKIPO at the time of filing the application will do the trick!

These days, it’s possible to do a fair amount of patent searching yourself, using Espacenet, Google and a number of other sites. There is also a huge array of patent search providers. But, if the cost of a prior art search is going to run to several £’000s – as is typical – why not go straight for a patent application as your search vehicle? In other words, why spend £’000s (on a search) to decide whether to spend £’000s (on a patent application) which provides you with a search anyway!

For instance, you’ve come up with a wizard new gizmo. Your first instinct is to determine whether it’s patentable. Your mindset is such that you’ll only file a patent application if your reasonably certain that you’ve got something patentable. So, you first have search carried out, review the results and take the decision whether to go ahead. Well, why not change your mindset? Instead of asking yourself “is my gizmo patentable?”ask yourself  “shouldn’t I take whatever steps I can to protect my wizardry and the competitive advantage it offers?” Conducting a search first is not going to alter the answer to this new question; the search may give you an indication of the likely breadth and strenth of protection you’re entitled to, but it doesn’t alter the fundamental issue. On the other hand, it may delay when you file your patent application, which, in some countries, could be to your cost.

The UK IPO, for example, offers a high quality search – UK examiners use the same tools as EPO examiners – at a very modest cost. Indeed, the cost of requesting both search and examination of a UK patent application is, to be quite honest, cheap. And search and examination is conducted relatively quickly, within months. So, next time you think “I should get a patent search done”, think instead “I should get a UK patent application prepared and filed”, then you’ll have got the ball rolling on whatever protection you’re entitled to at the earliest opportunity and, within a few months, you’ll have an official search and examination report giving you an indication of whether your invention is indeed new and inventive. Even if your invention turns out to be struggling for patentability, you’re no worse off; you’ll only have spent about what you would anyway have spent on a search to come to the same conclusion; in fact, your actually better off, because now you’ve got a pending patent application which may remain pending for sometime.

The United Kingdom is a recommended jurisdiction for filing patents for a number of reasons.

One of the most important reasons is price.

Filing an application in the UK together with a request for search and examination is just 230 GBP official fee. This is an extremely low fee, one of the lowest fees in the world.

Attorney fees can be extremely high but can also be reasonable. If they are reasonable, you got yourself a great deal.

The low UK price is even more important taking into account the very high price of a European patent filing. So, if your market is primarily the UK, a UK patent will most likely be a better deal than a European patent.

In the UK at least, patents have poor visibility and there’s a lot of mis-information flying around. No wonder then that many private and individual inventors don’t know which way to turn when it comes to finding out what’s involved in protecting their inventions. Well, turn to us, Fisher Weiler Jones; we can help.

We are intellectual property professionals offering advice and support on all areas of intellectul property, including patents. We are happy to provide a free initial consultation at either of our offices in York or London. You will find that we offer practical, value-for-money solutions. And dealing with professional advisers can be a daunting prospect, which is why we avoid unnecessary formality.

Contact Kelly Virdee-Crofts, director at Fisher Weiler Jones UK, on 0844 811 7010 or Kelly@fwgip.com.

Patent systems throughout the world are relatively similar. The basic rules are the same, and the laws of the United Kingdom are not substantially different.

Much like in other countries, a UK patent must be novel and contain an inventive step.

It should also be capable of being made or used in the industry.

The UK patent system specifically excludes some matters from being eligble for a patent:
- a scientific or mathematical discovery, theory or method (which are public domain).
- a literary, dramatic, musical or artistic work – (which are subject to copyright)
- a way of performing a mental act, playing a game or doing business (as a matter of policy, those are considered public domain)
- the presentation of information, or some computer programs (In actual practice – some computer programs are allowed as patents
- an animal or plant variety (this are subject to a different piece of legislation)
- a method of medical treatment or diagnosis (again, public policy excludes these ).
- against public policy or morality.

Well, now you know what you can go for. Would you like our specific advice?

The UK Patent Office published a new litigation manual. The manual can be accessed on the UK IPO’s website, here:

http://www.ipo.gov.uk/pro-types/pro-patent/p-law/p-manual/p-manual-litigation.htm

Here, Hon. Justice Kitchin establishes that the test for acknowledging a priority claim is that the person claiming priority must be the same person who filed the priority application or his successor in title in the date of filing the application claiming the priority. Here is the relevant quote:

“In my judgment the effect of Article 4 of the Paris Convention and section 5 of the Act is clear. A person who files a patent application for an invention is afforded the privilege of claiming priority only if he himself filed the earlier application from which priority is claimed or if he is the successor in title to the person who filed that earlier application. If he is neither the person who filed the earlier application nor his successor in title then he is denied the privilege. Moreover, his position is not improved if he subsequently acquires title to the invention. It remains the case that he was not entitled to the privilege when he filed the later application and made his claim. Any other interpretation would introduce uncertainty and the risk of unfairness to third parties. In reaching this conclusion I derive a measure of comfort from the fact that the Board of Appeal of the EPO has adopted the same approach to the interpretation of Article 87 EPC in two cases: J 0019/87 and T 0062/05. “

The case was about an artificial heart valve rendered invalid as it was obvious in light of a few prior art references.

The priority application was a US provisional application.

Up until March 2008, software patents were hardly allowed in the UK. The breakthrough was on the High Court of Justice Decision in the matter of SYMBIAN LTD V. Controller General of Patents, where a method of accessing DLL files was claimed.

Since this blog is not about philosophy but about bottom lines – here it is: UK law is being put in line with European law. Software claims will be allowed if they include a technical effect. Naturally, it will take examiners time to get the point, but they will eventually.

Here is the bottom line from the ruling:

“The question I must now consider is whether the decision prohibits the patenting of all computer programs and, in particular, those which under the old approach would have been considered to make a conventional computer operate in a new way so as to deliver a relevant technical contribution…UK-IPO has apparently concluded that it does and so has reverted to its previous practice of rejecting all computer program claims … I do not detect anything in the reasoning of the Court of Appeal which suggests that all computer programs are necessarily excluded,”