Patents — overviewPatenting an invention in the UK

The key legislation governing patents in the UK is the Patents Act 1977 as amended (PA 1977). A grant of patent runs for a term of 20 years provided the periodic renewal fees are paid. Patents are granted by the UK Intellectual Property Office (UK IPO) and can be applied for by the inventor or legal owner of the invention.

PA 1977 requires that the invention must:

• be new (not part of the existing state of the art)

• • any potentially patentable invention must be kept confidential or the invention may be considered to form part of the state of the art. The novelty of the invention can be protected by a confidentiality or non-disclosure agreement

• involve an inventive step (not obvious to someone skilled in the art)

• be capable of industrial application, and

• not fall within any of the excluded categories set out in PA 1977 for which patents may not be granted.

The procedure for obtaining a patent requires an application to the UK Intellectual Property Office. The procedure involves a series of steps over a timescale of several years.

Ownership of inventions

The inventor is generally considered to be the owner of his invention, unless some contractual or other arrangement or rule applies. A contractual requirement to assign or license any invention may be required if the commissioner of the invention or other interested party expects to have rights over the invention. Under PA 1977 inventions made by an employee in the course of his employment are deemed to belong to the employer, although the employee has some rights to compensation.

Inventions which are created by more than one person will be jointly owned with joint entitlement to grant of patent.

Dealing with patents

Patents are intellectual property rights and can be bought, sold, licensed, mortgaged, etc, ie generally dealt with as items of property.

To be valid, any assignment or mortgage of a patent must be in writing and signed by or on behalf of the assignor or mortagor . It is not obligatory to register any mortgage or assignment in the patents register but this is advisable to protect the rights of the new owner/mortgagee against third parties.

Licensing of patents is a common activity to facilitate commercial exploitation. Registration of the licence is advisable to protect the rights and give status to the licensee.

Any dealing with a patent should also take account of any non-patented know-how related to the invention, as there may be considerable value in such technical knowledge.

Patenting computer programs

PA 1977 states that certain things are not inventions for the purposes of the Act, including a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer. In contrast to some other jurisdictions, the UK IPO has taken a restrictive approach to attempts to patent computer programs.

However, recent case law has cast doubt on the strict interpretation taken by the UK IPO, which is in contrast to the more inclusive approach of the European Patent Office. Further judicial interpretation is awaited and the technicality of this area means that professional advice should be taken before making any application.

Protecting patents

The value of a patent monopoly is only as good as the protection it has from infringement. Direct infringement under PA 1977 will arise if:

• while the patent is in force

• without the consent of the owner of the patent, and

• in the United Kingdom.

a person does any of the acts set out in PA 1977 involving the making, use, disposing, etc of inventions. There are several detailed exceptions set out in PA 1977.

Care must be taken in any allegation of patent infringement in light of the provision under PA 1977 for the alleged infringer to bring an action for threats.

If a patent has been infringed the patentee may pursue a claim for damages and/or equitable remedies such as injunctions and accounts of profits. Limited criminal sanctions may apply although the law is developing in the field of enforcement of intellectual property rights. Since the Patents Act 2004, in addition to the established dispute resolution routes of litigation, mediation or arbitration, the UK IPO has been empowered to give an opinion on the validity of a patent.

Patent protection in other jurisdictions

Although a Community or European Patent has yet to be agreed upon, an application can be made to the European Patent Office for a bundle of national patents.

An international patent application may be made under the Patent Co-operation Treaty. Applications are administered by the World Intellectual Property Organisation in Geneva. The application is made selectively for specified countries and priority can be claimed from a prior national application.