The government has recently launched a consultation into the implementation of Standard Essential Patents (SEPs), with the goal of addressing longstanding problems that affect patent owners, licensees, and other parties operating in the technical fields. Many in the industry have welcomed this long-awaited review, but what are SEPs, and why is the government reviewing them?

What are British Standards and how do Standard Essential Patents (SEPs) relate?

Standards, often referred to as technical standards, are established requirements for repeatable tasks, technologies, services or concepts to make sure different products can interact and work together. Standards are set by standard development organisations (SDOs), such as the British Standards Institution (BSI) in the UK, which sets the technical specifications for a wide range of products and services. Manufacturers and service providers are required to make their goods and services standard-compliant. 

It may be the case that an emerging technology becomes a new industry standard, as these technologies can offer universal improvements rendering the previous standard obsolete, for example the emergence of 5G technology. This new emerging technology, or parts of it, may fall under patent protection, and as such the required implementation of the new standard by a non-licensee risks infringement of the patent. This is where Standard Essential Patents come in.

What are SEPs?

A patent that protects technology which is implementing a standard is known as a Standard Essential Patent (SEP). The rules and regulations governing SEPs are complex, spanning patent framework, competition law, standardisation and contract law. 

The UKIPO encourages SEP holders to license their patents to the market and generate royalties, provided the terms are fair, reasonable and non-discriminatory, also known FRAND terms. It is worth noting that there are provisions in patent law to allow the UKIPO to grant compulsory licenses where there has been abuse of monopoly rights. 

Why is the government reviewing the SEP landscape?

The government has identified a number of challenges in the “SEP ecosystem”, including Transparency (pricing and essentiality) and Litigation. It is the government’s objectives to help implementers navigate and better understand the SEP ecosystem; improve the transparency of the ecosystem; and identify ways to increase efficiency in dispute resolution. 

Regarding transparency, the government is proposing a ‘Rate Determination Track’ which would be a simpler and more efficient approach to legal proceedings to determine a correct license rate. The government is further considering additional search functions on the UKIPO website that would enable a user to search for patents that relate to technical standards, in a similar manner to the present searchability for Supplementary Protection Certificates (SPCs) for medical products and pharmaceuticals. 

Regarding measures to improve SEP licensing and dispute resolution, the government is assessing the need for a specialist SEP Pre-Action Protocol; assessing market provision of essentiality checking services; and the development of Alternative Dispute Resolution (ADR) services specific to SEPs. 

The government consultation runs until 7 October 2025, and the full consultation document can be read here. 

SEPs are becoming increasingly relevant as further interoperable products and technologies emerge, and technical standards are introduced. The number of patents declared as essential worldwide is growing exponentially. As the number of SEPs grows, it is a necessary step for the UKIPO to evaluate the workability and fairness of the SEP ecosystem in the UK. This consultation is the first step in that process.

The role of patent pools is an important one. They help ensure that valuable innovation does not remain constrained by patent protection, but can be used to advance shared understanding, as well as mutual commercial benefits for the rights holders or ‘licensors’.

However, not all patent pools are built for financial gain. The Medicines Patent Pool, for example, was created by a number of non-profit organisations and measures its success in dollars saved, not dollars earned.

What is a patent pool?

A patent pool is an agreement between two or more patent holders to licence the technology protected by their patents to one another and/or third parties.  In other words a patent pool is a way for companies and third parties to work together to develop new products and innovations that make use of patented intellectual property that may belong to another owner.

The WIPO definition

The most accurate definition of a patent pool is provided by the World Intellectual Property Organization (WIPO) in a March 2014 paper ‘Patent Pools and Antitrust – A Comparative Analysis’.

In the paper, prepared by WIPO’s secretariat, the following definition of patent pools is given:

“Patent pools can be defined as an agreement between two or more patent owners to license one or more of their patents to one another or to third parties.”

The patent pool also determines the share of any royalties paid, which may be from one member of the pool to another, or from a third party who pays both/all licensees for access to the licence pool.

When are patent pools used?

The WIPO document notes that patent pools are often seen in relation to complex technologies, where existing patented innovations may be required to develop new and efficient solutions.

In these instances, the technologies involved are typically mature. There may be a significant number of existing patents held, and advancing innovations further forward may require the use of patented ideas.

However, there is a second case when patent pools may also be used. WIPO explains: “Pools also frequently represent the basis for industry standards that supply firms with the necessary technologies to develop compatible products and services.”

In this case, when access to second-party and third-party patents is a matter of interoperability, the relevant technology or market may still be in a state of development.

Examples of popular pools

Some of the most popular patent pools are a necessary way to enable the licensing of technologies used in consumer electronics and communications, for example:

DVD6C Licensing Group

Created by a group of eight companies including Hitachi, JVC Kenwood, Mitsubishi Electric, Panasonic, Samsung, Sharp, Toshiba and Warner Bros, the DVD6C Licensing Group was a one-stop shop for companies wishing to license patents relating to DVD production.

It was discontinued on January 1st 2020 as high-definition formats such as Blu-ray have overtaken DVD, whose standard resolution was just 480p.

One-Blue

DVD6C was eventually succeeded by One-Blue, a one-stop licensing programme for Blu-ray products which launched in 2011. This time, six major electronics and entertainment brands were involved: CyberLink, Hitachi, Panasonic, Philips, Samsung and Sony.

From an initial remit relating to Blu-ray Discs (BD), the scheme was expanded in 2017 to also include Ultra HD Blu-ray (UHD) products.

Via-LA

The Via Licensing Alliance, or Via-LA, was founded in April 2023 after Via Licensing Corp acquired its forerunner, MPEG-LA. This in turn was created back in 1996 to license patent pools that used video compression standards like MPEG-2 and MPEG-4.

All of these examples give a clear idea of why a patented technology developed by one company, such as DVD, Blu-ray or MPEG, might be licensed to another company involved in the production of software or hardware relating to that patent.

But what is the role of patent pools in other sectors, such as healthcare? What is a patent pool used for in medicine?

The Medicines Patent Pool

The Medicines Patent Pool is deliberately designed to save money, as a way to make important treatments more available to developing countries.

Critical intellectual property is licensed voluntarily to the MPP by its rights-holders, which in turn allows it to be used to develop new treatments for diseases like HIV, tuberculosis and hepatitis C (and, since 2020, COVID-19).

WIPO reports that in the first decade of the 21st century, the cost of first-generation HIV medicines fell from over $10,000 per patient per year to less than $70, a drop of over 99%.

This was thanks largely to markets like India, where medicines were not patented. But as developing countries introduce patents on medicines in order to comply with international trade rules, this starts to prevent generic drug manufacturers from producing low-cost versions.

Patent pools like the MPP help to counteract this chilling effect, by providing low-cost access to essential intellectual property via a licensing model that’s easy to navigate, removing some of the roadblocks to continued affordable medicine for emerging economies.

The Medicines Patent Pool in numbers

Between January 2012 and the end of 2023, according to its own published figures, the Medicines Patent Pool:

• Supplied over 43.5 billion doses of treatment
• Provided access to MPP-licensed products in 148 countries
• Reduced patient years of treatment by over 118 million
• Saved $1.9 billion on medicine licences
• Averted 38,000 deaths

By the end of 2030, the MPP forecasts that it will save $3.9 billion in licensing costs and prevent 170,000 fatalities.

Benefits of patent pools

The numbers above speak for themselves, but the role of patent pools goes beyond saving lives and money; they are also an important driver of economic performance.

Some of the benefits of patent pools listed by the UK government include:

• Efficient one-stop access to a pool of complementary licences
• Reduced negotiation and admin costs for licensors and licensees
• Easier financial planning due to fixed upfront royalties
• Frequent access to discounts on royalties
• Less risk of ‘patent thickets’ where access to multiple licences becomes very complicated

There may be some technical obstacles to navigate, for example where a non-disclosure agreement conflicts with a patent pool’s requirement for innovations to be made public, but these are likely to arise only on a case-by-case basis.

Overall, the benefits of patent pools – whether profit-making or charitable – make them a compelling licensing structure in any industry where access to critical intellectual property is needed to enable further advances to be made.

In an industry where new technologies and developments in scientific practices are constantly evolving, securing a chemical patent strategy has never been more vital. Without strong chemistry patent strategies to back up your unique composition, you risk losing market share and jeopardising one of the strongest business tools in your repertoire. 

Chemistry and chemical patents are granted on the same basis as patents in other fields, namely novelty, industrial application, and inventiveness. They can be used to support: 

• Chemical compounds. 
• Compositions within the chemical compounds. 
• Articles created from the chemical compound or that contain the chemical compound. 
• Unique processes related to the preparation or creation of the chemical compound. 
• Specific methods of using the chemical compound. 

Defining a Strong Chemical Patent Strategy

Securing a patent incurs months if not years of work; therefore, it’s important you invest your time and money wisely before submitting an application. 

Here’s three steps companies can take to create a strong chemical patent strategy and make the most of their innovation in a competitive industry: 

1. Conduct Thorough Prior Art Research 

Prior art refers to all the existing publicly available knowledge that is relevant to your idea. Discovering what kind of information is publicly available will help strengthen your patent claims by providing information on the truly novel aspects of your idea. By conducting thorough prior art research, you can highlight the current patent landscape, avoid potential infringement risks, and improve the likelihood of your patent approval. 

2. Define the Scope and the Problem Clearly 

The strongest chemical patents are those with a scope that is neither too broad or narrow. Ideally, your patent should solve an existing problem in a valuable and clearly defined way. By clearly defining the scope and problem, you can help patent examiners identify the reasons why your patent is unique in comparison to existing chemical compounds in the landscape. 

3. Develop a Strong Chemical Patent Strategy 

Lastly, chemical patents require a strong strategy to safeguard your invention from being easily copied by competitors. Aside from preventing potential infringement, strong chemical patent strategies can enable licensing and partnership opportunities that may not be available otherwise. 

How Can a Strong Strategy Overcome Common Hurdles in Chemical Development?

Strong chemical patent strategies are those that aim to achieve specific business goals within a competitive market. By leveraging their intellectual property with a strong set of , chemical patent owners can: 

• Protect core chemical compounds in a saturated industry. 
• Earn royalties via licensing opportunities and strategic patent partnerships. 
• Gain market share by patenting key elements and improvements. 
• Avoid potential infringement by researching prior art applications and existing patents.  
• Prioritise their key inventions by patenting those that align with long-term business goals.  

Filing Chemistry Patent Strategies for Maximum Formula Protection

Understanding the benefits of chemical formula patent strategies is all well and good. But how can you ensure that your chemical patent strategy protects your invention to the fullest extent? 

Here are four aspects of filing strategies that you can’t miss. 

Begin by Filing a Provisional or Priority Patent

Things move fast in the chemical industry; therefore, starting with a provisional patent may be in your best interest. Provisional patents start the 12 month priority window before full applications are due, allowing you time to gather more data or test new variations before your formal application. This can prevent potential competitors from getting a step ahead. 

Consider Multiple Layers of Patent Protection

One of the best ways to create a strong patent is by increasing the layers of protection associated with your patent. For example, you can file for a chemical patent that protects a class of compounds or both the compound of your innovation as well as the method used to create it. By diversifying the scope of your patent using different claim types, you make it harder for potential competitors to alter the chemical composition to find loopholes. 

Think About Filing an International Patent Application

Another strategy that helps create more robust patent protection is filing for international patent protection. The Patent Cooperation Treaty, also known as PCT, helps inventors file a single patent application across 150 countries. This approach can help save time and money by consolidating multiple filings into a single system for a period of time. 

Work Alongside a Chemical Patent Attorney

Finding a patent attorney specialised in chemistry and chemical compounds will make all the difference when it comes to securing a strong patent. Not only will a patent attorney help you reduce the margin for error by helping you define the invention, they’ll also employ chemical composition patent strategies to improve your chances of successfully obtaining a commercially useful granted patent.

Conclusion 

All in all, forward looking chemical patent strategies are a true game-changer for industry leaders. Research and development in the scientific world moves at such a fast pace that protecting your chemical compounds and innovations is essential for maintaining a competitive edge. 

The right kind of chemical composition patent strategies help safeguard intellectual property from potential infringement while simultaneously opening doors for licensing, partnerships, and long-term commercial success.

The election of US President Donald Trump has already provided many high-profile developments in his short time in office. Among the wide-ranging measures that have been introduced are policy changes that may impact the performance and operation of the US Patent & Trademark Office (USPTO), and subsequently may affect the prosecution of US patent and trade mark applications by both domestic and international applicants. 

In this article we will discuss the two most relevant actions: firstly, the order for federal workers, including USPTO administrators and examiners, to return to work at the office; and secondly, a freeze on the recruitment of USPTO staff. 

What is the USPTO?

The United States Patent and Trademark Office (USPTO) is the federal agency responsible for granting patents and registering trademarks in the United States. The USPTO operates within the department of commerce, examining patent applications to explore whether inventions meet the requirements for IP protection.  The agency also provides numerous resources for those within the intellectual property space, such as inventors and patent attorneys, providing guidance alongside a public accessible database of existing patents and trademarks.

Trump Policy: Ending Remote Work at the USPTO

Regarding the request for existing staff to return to work in the office, while the headlines suggest that this is relevant across all Federal agencies, including the USPTO, there is the possibility of agency heads making “exemptions as they deem necessary”.  However, the emphasis is still on the agency heads to terminate remote working where possible. In a memorandum issued by the White House’s Office of Personnel Management, it was stated that the USPTO no longer permits regular and recurring remote working and therefore employees should work full-time at their respective work sites or offices. This does not supersede existing collective bargaining agreements but there is an obligation on the agency heads that these collective bargaining agreements should be brought into compliance with the new requirement to work in the office where possible.  

This could have a particular impact at the USPTO because at present, over 90% of employees have a remote working agreement, meaning that around 9,000 examiners work remotely full-time within the US.  Furthermore, as a result of this, the available space at the USPTO offices has been significantly reduced over previous years, accelerated by the Covid-19 pandemic, such that if the employees do return to office-based work there will be insufficient space for these employees. Therefore, there is a concern that the USPTO will be unable to retain all employees if they are all forced to return to office-based work under the action.   

USPTO Recruitment Freeze Following Trump Election

The USPTO are aiming to reduce the prosecution period for an application to obtain patent protection by positively recruiting new staff, however this recruitment looks to be halted as a result of a freeze ordered by President Trump on the filling of any Federal civilian position that is vacant as of 20 January 2025. This slowdown on patent prosecution may impact the US economy, as the USPTO itself estimated in 2019 that industries that intensely use intellectual property, including the filing of US patents, made up 41% of domestic economic activity and directly supported around 33% of all US employment. It remains to be seen if the reduced rate of patent prosecution, and therefore the rate at which patents grant in the US, will affect the productivity of these industries. 

Trump Administration’s New USPTO Leadership and Policy Direction

In a further indication of President Trump’s desire for change, he has appointed a new deputy director, without confirmation from the US Senate.  The new Deputy Undersecretary of Commerce for Intellectual Property and Deputy Director of the USPTO, Coke Morgan Stewart, will likely lead the USPTO for up to 300 days and has full authority to implement the new instructions regarding ordering the return to working in the office and the freeze of recruitment. This could be a signal that the new Trump administration plans to directly affect intellectual property policy directly and with immediate effect.   

In summary therefore, initially, it is likely that there may be some further delay in the granting of patent applications by the USPTO while the impact of requiring existing examiners to be office-based is implemented.  It is likely that only after this exercise has been performed, will the retention of existing staff be assessed and then a decision will have to be made with regard to continuing recruitment, affecting the rate of patent, trade mark and design prosecution in the interim.

It can typically take between 3-5 years to obtain granted patent protection in the UK and/or Europe from when a patent application is first filed. This relatively long period of time is often useful to the patent applicant. For example, it can allow prosecution costs to be spread out over a longer period of time than otherwise might be the case.

The lengthy prosecution time does not generally adversely affect an applicant’s ability to commercialise their invention as marketing of the invention, investment, patent licenses and patent assignments can still take place when a patent application is pending before grant. In addition, financial remuneration for infringement of a granted patent by a third party can be backdated to the date of publication of the patent application.

However, in some cases, the length of prosecution time for a patent application can hinder commercialisation of an invention and can delay patent infringement actions being brought against third party infringers, particularly in cases where patent prosecution may extend beyond the normal 3-5 year time period. In some technical fields, it is not uncommon to have patent applications pending for as long as 10+ years.

We are therefore frequently asked the question as to what can be done to accelerate prosecution of a patent application to reduce the time taken to achieve grant of a patent. We set out below the available routes in the UK and Europe for allowing accelerated prosecution of patent applications.

Five steps to Accelerated Prosecution in the UK

1. Patent applications relating to green technology can be the subject of accelerated prosecution at the UK Intellectual Property Office (UKIPO). Applicants are required to set out a brief statement of the environmental benefits of their invention on making the request for accelerated prosecution.
2. Requesting combined search and examination. In normal cases, examination is requested within 6 months from publication of a UK patent application, which is typically 18 months from the earliest filing date of the patent application. Combined search and examination can be requested on filing and this typically results in a combined search and examination report being issued within 6-9 months of the filing date of the application.
3. Requesting accelerated search and/or examination and providing a reason for the request, such as for example, a threat of imminent infringement of the invention by a third party, an investment opportunity requiring a granted patent or a potential licensee requiring a granted patent.
4. Requesting early publication of a patent application. Patent applications are normally published 18 months from the earliest filing date of the patent application. Even if accelerated examination of the application has been requested, applications cannot be granted until at least 3 months after publication of the application so that the examiner can carry out a “top-up search”. A request for early publication typically brings the publication forward to within 6 weeks of when the request was made.
5. Applicants who have achieved grant of a patent for their invention at another national patent office in the world can request accelerated prosecution using the Patent Prosecution Highway (PPH) at the UKIPO. This allows the UKIPO to re-use the prosecution work undertaken by the national patent office for the same invention using the same patent claims that have been accepted for grant by the national patent office.

Six steps to Accelerated Prosecution in Europe

1. Applicants who have achieved grant in one of 17 selected national patent offices around the world can enjoy faster prosecution at the European Patent Office (EPO) using the Patent Prosecution Highway (PPH). This allows the EPO to re-use the prosecution work undertaken by one of the national patent offices for the same invention using the same patent claims that have been accepted for grant by the national patent office, thereby allowing the patent examination process to be hastened at the EPO. There is no additional EPO fee for requesting PPH. The 17 selected national patent offices are: Japan, Korea, China, USA, Australia, Brazil, Canada, Chile Colombia, Israel, Malaysia, Mexico, New Zealand, Peru, The Philippines, Singapore and Saudi Arabia.
2. Request PACE (Programme for Accelerated Prosecution of European Patent Applications). There is no additional EPO fee for requesting PACE and there is no requirement to amend the claims of the patent application or have a prior patent granted for the same invention in another country. PACE can only be requested once prior to the search report for a patent application being issued, and once prior to the start of examination of a patent application. It is necessary for applicants to respond in a timely manner to EPO Office Actions in order for a patent application to remain on the PACE scheme once it has been requested.
3. Requesting early processing of a PCT patent application entering Europe before the required 31 month time limit. This allows the EPO to initiate their search and examination process before the usual time period.
4. Waiving certain time limits provided during prosecution, such as for example, R. 161 & 162, R. 70(2), R. 71(3) EPC Communications. There is often time periods of 3-6 months provided for responding to certain EPC Communications and waiving these time limits reduces the prosecution time of the patent application.
5. If an infringement action is pending before a national patent office at a contracting state of the EPC, accelerated opposition or appeals relating to the European patent application can be requested.
6. Undertake certain prosecution steps earlier than is necessary.

If you have any queries relating to the above information or if you would like to file a patent application under accelerated conditions, please do not hesitate to contact us.

Safeguarding your intellectual property is a vital step in creating any great invention; however, ensuring that your patent application is offers the appropriate scope of protection can be difficult. Patent problems can be more difficult to detect than you may think. A single misstep in your patent application process can lead to costly delays or even rejection.  

In this guide, we will cover five common patent issues and how you can avoid them to ensure a smoother patent application journey.

What are the most common patent problems? 

So, what can go wrong with patents? There are plenty of problems inventors must be aware of. From meeting strict deadlines to submitting vague claims, a small error in your patent application could prevent you from securing the rights to your invention and jeopardise your ability to protect your intellectual property in competitive markets.

1. Lack of Novelty or Inventiveness 

One of the most common issues someone may experience during the application process is a lack of inventiveness or novelty in the invention’s claims. Obvious variations of existing concepts, simple design modifications , or combinations of known technologies in a non-inventive configuration will not suffice when attempting to prove inventiveness. 

To ensure a successful application, your patent must describe an invention that is new and demonstrates an inventive step that truly offers a distinct technical advantage and is not obvious to a person skilled in the art. Therefore, your application must emphasise all the unique technical features of your invention, focus on practical improvements, or demonstrate unexpected results. 

2. An unclear, insufficient, or inaccurate description of the concept

One common cause of patent rejection is due to unclear or inaccurate descriptions of the inventive concept. Discrepancies in your invention’s description could lead to unclear claims and, in worst-case scenarios, a rejected patent application. 

Optimal patent descriptions leave no room for ambiguity. Instead, they provide detailed and structured explanations of the invention’s components, functions, and technical advantages. Rather than saturating your description with technical jargon, try to keep the language as precise and simple as possible, including clear definitions and diagrams that help clarify complex concepts. 

3. Failure to meet deadlines 

The simplest reason for a patent application being refused is also easiest to avoid: missing deadlines set by the patent office. You’ll need to adhere to specific and strict application deadlines in any jurisdiction your application is filed in, so make sure to do your research ahead of time.

Although you may be able to request extensions for your patent application, it’s best to create a timeline of important deadlines to proactively manage the process from start to finish. Make note of target dates such as the priority date, publication dates, cut-off for examination responses, and official fee payments. We strongly recommend using a fully qualified patent attorney who will inform you of upcoming deadlines, and any available extensions. 

4. Objections raised by the Examiner

Another difficult challenge in the patent application process is the opposition that innovators may face during prosecution. This commonly occurs during the examination phase, as officials may identify deficiencies with the claims of your application. An examiner may cite overly broad or vague claims as an insufficient disclosure of the invention or raise objections to the exclusions to patentability of the invention as reasons that the application may be invalid. 

A professional advisor will be able to assist in responding to objections raised during examination. For example,  the claims may be narrowed to overcome novelty or inventive step objections. We recommend that a thorough prior art search is conducted prior to filing a patent application to identify relevant pieces of prior art. Collecting as much evidence of your invention’s novelty, inventiveness, and industrial applicability and including this in the application can help in overcoming potential objections raised during examination.  This is important as information cannot be added to a patent application at a later date.

5. Failure to pay patent renewal fees

Once you’ve secured your patent, you’ll need to ensure your intellectual property remains protected for years to come. Failure to maintain your patent by paying the relevant renewal fees at the required deadlines will mean your patent will lapse.  In the worst case your invention could irretrievably lapse and then be free for others to use. 

In the UK, patent renewal fees are payable from the fourth anniversary of your patent filing, and must be renewed on an annual basis. Fees for patent renewal increase progressively, so ensure to budget for long-term expenses and set up automatic reminders to avoid any late fees. Alternatively, you could outsource your patent renewal management to a qualified third party, such as a patent attorney, to reduce the risk of an unintentional lapse of protection.

If you or your business require help with your patent application, contact us through our simple online form and an experienced patent attorney will be in touch with you.

The UK Court of Appeal (CoA) has overturned a previous Decision issued by the UK High Court in November 2023 in the case of Emotional Perception AI Limited vs Comptroller -General of Patents, Designs and Trade Marks. In its decision, the CoA concluded that AI is a computer implemented invention for the purposes of assessing patentability under UK Patent Law and therefore the test for whether an artificial neural network (ANN) invention falls within excluded subject matter is the same as the test as to whether a computer implemented invention falls within excluded subject matter.

A link to the full Court of Appeal Decision can be found here. The UK Court of Appeal’s Decision issued on 19th July 2024, following the Hearing that took place on 14-15 May 2024, will have a significant bearing on the extent to which AI inventions will be considered patentable in the UK.

History of AI patentability

The patent application in question is directed to an invention for a system for providing media file recommendations to a user, such as for example, for providing music recommendations to a user. The invention arrives at these suggestions by passing the media or music file through a trained ANN.

The Judge in the earlier UK High Court Decision ruled that ANNs are not computer programs and therefore the exclusion of patentability relating to computer programs could not apply to ANNs. 

Court of Appeal Ruling on AI

However, the Appeal Court Judge ruled that no matter how an ANN is implemented, be it via hardware or software, such a machine is clearly a computer as it is a machine for processing information. The instructions (including weights or biases) allowing the ANNs to perform recommendations are therefore a set of instructions for a computer to do something. As such, ANNs should be given the same considerations as any other computer implemented invention when considering patentability of the same. 

The Appeal Court Judge also went on to say that just because ANNs were considered a computer implemented inventions, this does not mean they were unpatentable. However, in the case of the patent application by Emotional Perception AI, the Appeal Court Judge concluded that what makes the recommend media file worth recommending are its semantic qualities. This is a matter of aesthetics what are subjective and cognitive in nature. They are not technical and do not turn the present invention into a system that produces a technical effect outside the excluded subject matter. The CoA therefore upheld the UKIPO’s Original Decision that Emotional Perception’s patent application fell within excluded subject matter and was not patentable.

Future Implications of AI patents

Therefore, in light of this latest Decision, the two cases that are normally cited in the consideration of assessing excluded subject matter; Aerotel Ltd v Telco Holdings Ltd [2007] RPC 7, and AT&T Knowledge Ventures v Comptroller [2009] EWHC343 (pat), should apply to the consideration of ANN inventions. The Court of Appeal sets out a four stage approach to the application of these exclusions as being:

1. Properly construe the claim;
2. Identify the actual contribution;
3. Determine if the actual contribution falls solely within the excluded subject matter;
4. Determine if the actual contribution is actually technical in nature.

It is possible that a further Appeal could be made by Emotional Perception to the Supreme Court but for the time being, ANNs will be considered to be computer implemented inventions and therefore subject to the same test for exclusions from patentability.

Please do not hesitate to contact us if you would like to discuss how this latest Decision might impact the protection of your technology.

Securing a patent can bring numerous benefits to your business, but it can also be challenging if you don’t know how to go about it. One of the most important steps towards securing protection for your invention by filing a patent application is ensuring it doesn’t already exist.

In order for an innovation to be patentable, it must be novel and inventive. However, with so many ideas cropping up in the market, how can you ensure your idea was the first? It all lies in the patent search.

Patent searches are an essential step in the patent process, as they help to verify the originality of an invention and improve the likelihood of successful patent application. While it is not compulsory to carry out searches before applying for a patent, it is highly recommended. Patent offices will carry out their own search to assess an application for patentability, so a preliminary search can give an indication of patentability before applying and incurring the expense of an application.  In our step-by-step guide, we’ll run through the process of searching for a patent from the start.

Where to start your patent search?

Unlike a general Internet search, patent searches look for specific patent documents that may have an impact on the patentability of your invention. In this first stage of the search process of a search, a prior art search helps to identify any patents and patent application documents that have been published before you have filed a patent application. These documents may potentially be raised by an examiner as relevant to the novelty or inventiveness of your idea further down the line. The most common documents identified in a prior search are patent applications and granted patents, although prior art documents may also be in the form of web pages, catalogues, process documentation or other publicly available documents. Generally speaking, there are two main ways to get started with your searches:

Starting things off yourself

Firstly, we always recommend conducting your own prior art search. If you are unfamiliar with the market of your invention, the first step should be to carry out a simple Google search for any relevant products currently commercially available. Not only will this provide a brief understanding of the current disclosures in the field of your invention, but it also gives you the opportunity to identify what makes your idea new and inventive over what has come before. For a deeper understanding of prior art disclosures, we recommend carrying out a search for published patent documents. There are a variety of search engines to do this, but we would recommend the European Patent Office’s patent search engine Espacenet. Here, you can search for key terms using the advanced search tool to identify terms relevant to your idea that are present in the title, claims or abstract of published patent documents all over the world. Note that the engine is only able to search for applications from their publication date, not their filing date.

You could consider enlisting the help of staff at the local Patent Library many of whom offer a guided search service.

Enlisting a professional service

Alternatively, you could enlist the help of a professional patent attorney who will take care of conducting a thorough patent search on your behalf. Their detailed analysis may provide greater insight into potential obstacles and solutions. Professional attorneys often have access to engines more powerful than freely available to the public, able to uncover more relevant search results. A professional patent prior art search usually start at £500.

Are patent searches free?

The next steps will involve considering any financial investments into the process, but the cost of a patent search may vary depending on the database. Free directories are a great place to start and some of the most commonly used databases include:

• Google Patents
• Espacenet 
• WIPO Patentscope 

Note that some patent databases require the patent number to be searched, and general search terms may not be possible.

What information about the patent can I find?

The information available from patent searches varies by the search engine used. In general, the following information will be listed:

• Abstract and summary of the invention
• Claims outlining the scope of protection of the patent if granted
• Specifications detailing how the patent works
• Prior art documents cited by the application
• The legal status of the patent
• Applicant and/or inventor details

What do I do with the results of my search?

Following a patent search, you should hopefully have identified a few relevant documents that relate to your proposed invention. Some of the prior art documents identified in the search may even still be in force, and it is important to check that you will not infringe these granted and active patents with your activities. A separate infringement or ‘freedom to operate’ search may be required which should be undertaken professionally.

A professional patent attorney will be able to offer advice on the implications of any search results; what they mean for a potential application and the likelihood of grant of a patent; and the risk of infringing an active patent if your proposed invention was to enter the market.

Securing a patent in the UK can be a game-changer for your business. With a strong patent under your belt, you can keep competitors at bay, reassure potential investors, and increase your profit margins. 

Nevertheless, the financial aspect of obtaining a patent can appear daunting to those unfamiliar with the process. In this blog, we’ll cover  the official fees for obtaining a UK patent, as well as outlining other costs you can expect to face.

How much can a patent cost in the UK?

The cost of patenting an innovation can vary according to the jurisdictions you would like to extend patent protection to and the extent of objections raised during examination (also known as prosecution) of the application through to grant. As a rule of thumb, successful patents in the UK can cost anywhere from £1500 to £5000 to secure depending on the amount of professional support required. 

Before embarking on this process, it’s vital to consider the short-term and long-term patent costs in the UK.  

An overview of official patent costs UK

The official fees for a patent application are paid to the UKIPO during the prosecution of a patent application. These are necessary to ensure the application proceeds to grant and must be paid by the deadlines set by the UKIPO. 

Patent application 

Once a patent application has been drafted (more on this later), the application is filed at the UKIPO. The standard fee for an online patent application is £75; however, if you would like to file a paper application in-office, you will need to pay £112.50. After filing a patent application, the next step is to request a search for prior art documents that might be cited against the novelty and/or inventiveness of your application. The request for a search costs £120, plus an additional £20 for every claim to be searched over 25. 

After the search, a substantive examination must be requested. An examiner evaluates your application for validity, considering the application itself and any prior art cited in the previous search. The request for substantive examination costs £100 plus an additional £10 for every page of the description over 35 pages. 

Additional costs can be expected for additional searches by the UKIPO, or for requesting extensions to some time limits. Requesting divisional applications to pursue separate inventions detailed in the original application will also incur costs similar to the costs of any parent application. If your patent application proceeds to grant, there may be additional costs for additional claims or excess pages. 

Patent maintenance

If your application proceeds to grant, you will need to factor in the cost of maintaining your patent. Patent maintenance fees increase progressively, so it is worth considering the value of the patent as it progresses towards its expiry date. 

Fees for renewing a patent in the UK commence at £70 and come into play after the fourth anniversary of the application filing date. From there, patent owners can renew their patent every year up to the 20-year mark. By year 20, patent owners will be charged £610 to renew their legal protection. Late fees are also applicable and charged at £24 per month. 

Additional Costs to Consider

To facilitate the process of obtaining a patent in the UK, many individuals enlist the help of specialised attorneys. While having a patent attorney act for you at the UKIPO is not compulsory, securing a patent is a complex process and it is recommended. 

Having a professional registered patent attorney draft your patent application and respond to examination reports greatly increases the likelihood that the application will proceed to grant and the cost is reflected in the amount of advice and support that is required. 

Further costs to consider are the costs for pursuing patent protection in jurisdictions beyond the UK, and the different routes available including an international PCT patent application, an application in the USA and/or a regional European application. 

Applicants may consider a prior art search being conducted prior to having their own application drafted, so they have a greater understanding of the current patent protection in the field of their proposed invention. We recommend that this searching is conducted so that the patent application can be directed to those features which are novel and inventive over the prior art.

How to lower your patent costs in the UK

As outlined in the blog, patent costs UK can quickly add up. To make the procedure as stress-free and streamlined as possible, we recommend you enlist the help of an Intellectual Property firm like Bailey Walsh which specialises in helping individuals and businesses obtain a granted patent. Not only will professional guidance help you save time and reduce stress, but it will also increase the likelihood of a successful patent application.

Contrary to popular belief, there’s no need to reinvent the wheel in order to patent an invention. Instead, patents are awarded based on the demonstration of three key qualities, which we’ll explore in further detail below. 

What is a patentable invention?

By definition, a patentable invention is a product or process that  is industrially applicable, novel and involves an inventive step. Examples of patentable inventions may include: 

• An innovative method for recycling plastic waste to produce eco-friendly building materials. 
• A new type of flexible display technology for foldable electronic devices. 
• An anti-corrosive chemical formula for protecting metal surfaces in harsh marine environments. 
• New pharmaceuticals such as novel vaccines.

Certain inventions, such as aesthetic creations or scientific theories, do not fall into the patentable category in the UK. More examples of non-patentable inventions are discussed below. 

What are the three key patent criteria?

For an invention to be patentable, it must be novel, inventive, and industrially applicable. 

Novel

As defined by UK patent law, novelty refers to the notion of originality or in other words your idea must be new. For your invention to be considered novel, there should be no enabling public disclosure of your idea before the date of your application, in patent law known as forming part of the state of the art. Enabling disclosures may include published patents and patent applications, commercial products in other regions, publicly available information found online, and more. Importantly, an inventor’s own public enabling disclosure can destroy the novelty of any later filed patent application.

Inventive 

Your idea must also be inventive, meaning that the product or process must provide a solution to a technical problem that is non-obvious to a person skilled in the art. This is different from novelty, as a patent applicant must prove that their concept is not only new, but that a theoretical skilled person would not arrive at their invention from any other previous disclosures without taking an inventive step.  

Another way of looking at inventive step is that the novel part of your invention (the bit that makes it different) cannot simply be an obvious or routine modification to earlier examples or similar products.  

Industrially applicable  

Lastly, your product must have practical applications in an industry, be it commercial, manufacturing, or other areas. If your invention is purely abstract, theoretical, or unfeasible, it will not be patentable. For example, you could patent a new kind of wind turbine, but you couldn’t patent a  perpetual motion machine (unless you show it is feasible, for example by building a working prototype!). 

How do patent requirements differ by region?

Before filing a patent, it’s important to check the requirements that are unique to your region. For example, while the European Patent Office (EPO) follows a near identical patentability criteria to the UK, the US patent office have a smaller list of excluded, non-patentable inventions. A computer programme or method of doing business that may not be patentable in the UK or at the EPO may be patentable in the US.  

The United States follows a “first-inventor-to-file” system in which the first inventor to file a patent application  is granted the patent.  There is also one year grace period applicable in the USA in which an inventor’s own disclosure before the patent application is filed will not be detrimental to the novelty of the patent.  Small nuances in patent requirements could affect your outcome so don’t hesitate to conduct a thorough investigation and enlist the help of a professional. 

Inventions that can’t be patented

Last but not least, certain inventions cannot be patented due to their subject matter. The following is a non-exhaustive list of exclusions in the UK: 

Methods of diagnosis or treatment of the human or animal body by surgery or therapy

Methods related to medical treatment or diagnosis of disease of the body are generally not patentable to prevent the hindrance of healthcare access and innovation. This includes some ways of performing surgery, administering treatments, and diagnostic methods. Treatment outside of the body, such as methods for purifying donated blood, may be patentable as are the pharmaceuticals themselves. 

Presentation of information 

Inventions related to the presentation of information, without any technical innovation, are typically not patentable. For example, you cannot patent the layout of information on a screen or app, even if the layout is novel.. 

Aesthetic creations  

Aesthetic creations, such as works of art, literature, music, and design, are protected by copyright or design right law rather than patents. This includes music, literary compositions, and visual artworks as well as the way new products look. 

Schemes, rules, or methods for performing a mental act, playing games or conducting business 

Abstract ideas or methods for mental activities, games, or business processes are not eligible for patent protection. For example, you cannot patent a card game, business methods without a technical process, or mental exercise routine. 

Computer programs 

While software code itself is not patentable, certain technical innovations or methods implemented by computer programs may be patentable. For example, basic word-processing software is not patentable but an innovative algorithm that adjusts font size based on reading behaviours may be. 

Scientific theories or mathematical methods 

Discoveries of scientific principles or mathematical formulas are not patentable, as they are considered not to be new, natural phenomena or abstract ideas, for example if a new mathematical formula is developed. However, the application of a discovery or theory, such as the use of a new mathematical formula or an algorithm in a process which has a technical effect may be patentable. 

Natural phenomena 

Natural phenomena, such as natural laws, physical processes, and naturally occurring substances, are not considered novel or new and are therefore not patentable. For example, you could not patent the process of photosynthesis in plants if you were the first to discover it.  However, if you devised a new product that used the photosynthetic process you discovered, that would be a technical application of the discovery or natural phenomena and would be patentable.

Taking your idea forward

We have a highly experienced team of professionals, including fully qualified UK and European Patent and Trade Mark Attorneys, Litigators and Formalities Officers. Simply get in touch here and one of our patent experts will help steer you through the process.