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 a challenge in and of itself. Patent mistakes are far more frequent and 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 of the most common patent errors and how you can avoid them to ensure a smoother patent application journey.

What are the most common patent mistakes? 

So, what can go wrong with patents? There are plenty of patent mistakes inventors must be aware of. From meeting strict deadlines to submitting vague claims, the smallest 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 Inventiveness 

One of the most common patent errors someone may experience during the application process is a lack of inventiveness or originality (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 demonstrate 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. Your professional advisor 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.

The Unified Patent Court (UPC) Court of Appeal (CoA) has issued its first substantive decision since the Unified Patent Court was established last year. The CoA overturned a preliminary injunction imposed by the Munich Local Division of the UPC, itself the first of its kind.

What is the UPC?

The UPC is an international court set up by participating EU Member States to handle the infringement and validity of both Unitary Patents (UP) and European patents (EP) that have been opted into the UPC. Operating since June 2023, the UPC seeks to simplify the process for enforcing and/or attacking a granted patent within all member states centrally, reducing the cost and time required for the proceedings for the involved parties.

The UPC comprises a Registry, a Court of First Instance and a Court of Appeal. The Court of First Instance is composed of a central division, and several local and regional divisions.

Background of the UPC case

The patent, titled “Compositions and Methods for Analyte Detection”, exclusively licensed to 10X Genomics by Harvard, was granted at the European Patent Office (EPO) on 7 June 2023, and it was subsequently requested that the patent have unitary effect. Later that year, 10X Genomics brought action against NanoString, alleging that their products relating to molecular imaging devices and detection probes infringed the granted unitary patent and requested a preliminary injunction. NanoString countersued, claiming that the patent was invalid and should be revoked. 

The case was heard at the Munich Local Division of the Court of First Instance of the UPC, where it was found that the patent was indeed novel, sufficient and inventive, and that it had been infringed by NanoString. The Munich Local Division found that there was no reason to deny the request for a preliminary injunction, having considered the relative novelty of the patented technology; the patentee’s capacity to make a profit despite the presence of the NanoString products; market erosion; and the products’ relatively long life cycle.

The Munich Local Division ordered that NanoString pay €250,000 for each individual breach of the order, without the need for 10X Genomics to provide a security. This preliminary injunction was the first imposed by the UPC, and many commentators believed the UPC was seeking to establish a precedent of favouring patentees.

Court of Appeal Decision

NanoString appealed the decision, and it was brought before the Court of Appeal in February 2024. In its decision, the CoA reassessed the validity of the patent and disagreed with the First Instance division in its interpretation on the construction of a term in the Claim 1 of the patent, that a method involving multiple incubation steps would be understood by a skilled person as being impractical. On the basis of its different claim interpretation, the CoA ruled that the validity of the patent had been insufficiently established to a degree of certainty to justify the preliminary injunction requested by 10X Genomics. The CoA ruled that the preliminary injunction should not have been imposed on this basis, however no definitive ruling was made as to the validity of the patent.

While it may appear that the CoA ruled that the First Instance division was premature in its imposing of a preliminary injunction, it should be noted that CoA did not object to the approach taken by the First Instance division in their assessment as to the justification of the preliminary injunction.

Concurrent opposition proceedings are running at the EPO for the European patent, which may provide the first chance to compare the validity opinions of the UPC and EPO Opposition Division relating to the same patent.

If you’re thinking of filing for a patent, you’ll believe your idea is completely unique or novel. Before you get ahead of yourself, we advise you conduct a ‘prior art’ search to ensure your innovation hasn’t been patented or publicly disclosed, for example in a published patent application. 

The results of a prior art search is used to determine whether an invention meets the novelty and non-obvious criteria for your application to be granted. It’s an important step in the patent application process that will save you time, money, and legal hardship down the road. 

A definition of prior art

So, what is a prior art search? By definition, prior art refers to any matter which has been made publicly available by written or oral description, by use, or in any other way before the filing date of your application. 

Prior art could range anywhere from a blog post that describes your idea in detail or a commercially available product that is similar to your proposal. In essence, prior art refers to any relevant ideas, concepts, or technologies that have been made public and could impact the novelty or non-obviousness of the invention you are trying to patent. 

Common examples of prior art

With so many ideas out there, knowing whether your prior art search was successful can be confusing. To help clear things up, here are some notable examples of prior art: 

• Existing patents that disclose similar technologies or inventions. 
• Commercial products that are already on sale in the market. 
• Academic publications like research papers, dissertations, or journal articles. 
• Publicly available information found on blogs, websites, or online forums. 
• Published patents or patent applications, that have expired or have not yet been granted. 
• Foreign patent documents or commercial products in other regions, even if they are in a foreign language. 

Why is a prior art search needed? 

The patent application process is lengthy and can be expensive; therefore, conducting a preliminary prior art search before filing your application will provide an understanding of the novelty and inventiveness of your application before filing, avoiding potential setbacks later on when a Patent Office examiner will conduct their own prior art search to see if your claimed invention is novel and non-obvious. 

Whether you decide to conduct a preliminary prior art search or not, as part of a formal patent application, a patent examiner will determine whether your invention is truly new and non-obvious by running a prior art search during the search and examination phase of the application process. 

Aside from ensuring patentability, prior art searches can avoid duplicate inventions, highlight the competitive landscape, strengthen the chances of your application’s success, and reduce the risk of infringement proceedings with active patents down the line. All in all, it’s an essential step in the patent application process. 

Does prior art have to be published?

Yes, prior art must be publicly available at the time of filing to form part of the state of the art. Unavailable documents such as unpublished articles, undisclosed confidential communications, and prototypes that have yet to be released are examples of non-public disclosures. 

Patent applications that are filed with the UKIPO, EPO or WIPO designating the UK before the priority date of a UK application but have not yet been published may only be cited against the novelty of that UK application, not the inventiveness of that application. 

What is not considered prior art?

To conduct a prior art search with success, it’s vital to know what is not considered prior art. 

Firstly, prior art does not encompass any information that is publicly disclosed after the filing date of your patent. Similarly, things like internal company records, private verbal discussions, and undisclosed inventions are not considered prior art. Another exception includes common general knowledge within a particular field, although this may be cited against the inventiveness of your application. 

Also, the disclosure must be an enabling disclosure for it to count as prior art.  For example, saying what you would like a new product to do is not enabling without some technical details as to how it is achieved!

If you need further advice or are looking to start your search with a professional, please don’t hesitate to get in touch with our expert IP lawyers here at Bailey Walsh & Co.

When companies have a killer invention on their hands, they usually want to share it with the world. Under these circumstances, safeguarding a product in the UK alone may not be sufficient . Businesses may need global protection to propel market expansion, gain a competitive edge, attract investors, and prevent parallel imports. 

Granted patents have a national or regional jurisdiction;  unfortunately there’s no such thing as a granted worldwide patent. Enterprises must evaluate their options and approach the overseas patent application process with careful consideration. Applicants must consider what jurisdictions are most suitable to pursue patent protection to best suit their commercial interests. Here’s what you need to know. 

Is filing an overseas patent more complicated?

Without planning and preparation, the overseas patent application process can be complex, time-consuming and costly. There’s no single overarching patent to protect your innovation in every single country. Instead, businesses must choose the jurisdictions they want to seek protection in and file each patent individually. 

Most countries follow generally similar patent criteria and although patentability criteria can vary between jurisdictions, as a rule of thumb, patentable innovations must: 

• Be Novel 
• Be Inventive
• Be capable of industrial application 

The overseas patent filing process gets slightly more complicated when you consider factors like language, cultural nuances, and examining office regulations. However, undergoing the international patent application process is always easier with a team of experts by your side.

Patent applications can be filed directly with national or regional patent offices. Regional offices, such as the European Patent Office (EPO), provide a centralised application process and offer an applicant the opportunity to designate which of the member states to extend patent protection to on grant of their patent, significantly reducing the cost of prosecuting a patent application across multiple countries. 

Jurisdictions to consider

Before you begin the overseas patent application process, you must consider several factors, including: 

• Assessment of your product’s position and strategy in international markets 
• Cost-benefit analysis of filing for overseas patents 
• Resource allocation to maintain your patents over the years 
• Risk management and mitigation of patent claims 

According to a 2023 WIPO study, the highest number of patent applications were filed at the following offices: 

1. China 
2. USA 
3. Japan 
4. Republic of Korea 
5. EPO 
6. India 
7. Germany 
8. Canada 
9. Australia 
10. Russia

Keep in mind that the jurisdictions with which you decide to pursue patent protection will undoubtedly depend on the unique circumstances of your commercial interests. 

Using PCT route

The Patent Cooperation Treaty, or PCT for short, is the most efficient way for companies to protect their inventions in a wide range of countries. Rather than deciding which jurisdictions to pursue patent protection in immediately, potentially wasting time and money applying for patents in jurisdictions that may not be necessary at a later date, businesses can file an international application with  the World Intellectual Property Organization (WIPO), affording them 18 months from filing to decide in which of the 157 contracting states to pursue patent protection with. 

Here’s how the process unfolds: 

1. Applicants file a single international patent application, in one language, paying one set of fees. 
2. A preliminary search report is prepared by the designated International Searching Authority (ISA), identifying prior art that may be cited against the novelty or inventiveness of the application. Issues relating to clarity, unity etc may also be raised in this report. 
3. Your international patent application will be published and officially disclosed to the world. 
4. Applicants may request an additional International Preliminary Examination (IPE), an optional substantive examination. This can give the applicant more confidence in the likelihood of success of their patent application before proceeding to national or regional jurisdictions. 
5. 18 months after the filing date of the PCT application, you must decide on which jurisdictions, whether national or regional, to pursue patent protection in. 
6. Once you enter the national or regional phases, the applications will be examined separately by the respective patent offices. You  must translate your patent documents where necessary, pay respective application fees, and prosecute the applications in accordance with the regulations of the respective patent offices. 

UK vs overseas applications: what are the main differences?

The main difference between UK vs overseas applications is the territorial scope. However, they also vary by: 

Filing procedure 

For a UK patent, applicants may file an application directly with the UK Intellectual Property Office (UKIPO) or designate the UK through the PCT or EPO channels. Overseas patent applications must be filed individually with each respective national office directly or regional office in which the overseas jurisdiction is a member, or select the respective overseas jurisdiction through the international PCT channel. 

Examination process

National or regional applications filed by applicants seeking to obtain patent protection in the UK are examined by the UKIPO or the EPO respectively. Overseas applications are examined by the respective national patent offices or the regional offices to which the overseas jurisdiction is a member. It is therefore important to consult a local patent practitioner when filing an international or overseas application. . PCT patent applications will undergo a centralised international preliminary examination before proceeding to the national or regional phases. International preliminary examinations may be used as the basis for national or regional examinations, however this is not always the case.. 

Costs and administrative burdens 

Filing a patent in the UK will involve fees and administrative processes outlined by the UKIPO. The overseas application may entail various fees specific to the respective patent office. It is important to consult a local representative for an estimate of costs before proceeding with an international or overseas patent application.  

At Bailey Walsh, we have the benefit of access to a global network of associates in all contracting states to the PCT. If you are considering the benefits of an international patent application, and how it may be relevant to your commercial interests, please contact one of our qualified attorneys.

When you receive the notification that your patent has been published, you may feel inclined to call your partners, pop a bottle of champagne, and celebrate your success. But we’d strongly advise against this. 

Just because your patent is published does not mean it’s granted. In essence, a published patent is a public way of stating your application has been received and is currently under review. 

We’re often asked if a patent is published, is it granted? So, to help clear things up, let’s take a closer look at granted vs published patent status. 

Published Patents 

Approximately 18 months after filing for your patent, you will receive a published patent application, also known as an A publication. However, published patents do not grant the patentee the right to immediately proceed to enforce their patent rights. 

The process of publishing patents is automatic. It doesn’t mean your patent has been examined, it simply informs others in the industry of your invention while the examination process continues. This fosters greater innovation across industries as peers can be aware of what new ideas are being worked on. 

Granted Patents 

Once your patent is granted, you have a legal entitlement to stop others benefiting from your work. More specifically, your work is protected for a determined time frame as competitors will not be able to: 

• Manufacture 
• Use 
• Sell or intend to sell 
• Import
• Dispose of a patented product, process, or a product produced directly as a result of a patented process. 

On grant of a patent application, the patentee is given the right to bring proceedings against an infringing party for their actions dating back to the publication date of the patent application. The patentee is only entitled to this backdating if the infringing acts would have infringed the claim(s) of the patent application both as published and as granted. 

Note that this action is only available to the patentee when the patent is granted, not when the patent is published. 

How Long After Publication is Patent Granted? 

After your published patent application, you can wait anywhere from several months to a few years for your patent to be granted. The duration of the granted vs published patent process depends on various factors, such as the complexity of your innovation, the number of applications under examination, and whether any objections are raised during the examination stage. 

Can a Patent Be Published but Not Granted? 

Yes, a patent can be published but not granted. As we previously noted, your patent will automatically be published around 18 months after filing. Publication only makes the details of your application public to others while the examination process begins. 

Published patents go through a comprehensive examination process in which the patent office will determine whether your innovation meets the validity criteria. Patents are only granted to inventions that are:

• Novel
• Inventive
• Capable of industrial application  

If examiners identify any issues with your patent, they will raise objections to your application. However, the applicant can respond to these objections, make necessary changes, or provide supporting arguments in a bid to bypass the objections to avoid rejection of the application. Overall, the goal is for any objections to be eliminated and for the patent to be approved. 

What Are the Jurisdictions of Granted Patents in UK and Across Europe? 

If your UK published patent application is successful, you will have full legal protection within the United Kingdom; however, you may not have the same protection elsewhere. If you would like to stop others from making, selling, or using your invention outside of the UK, you will need to apply for a patent with the respective national jurisdiction, or with a regional jurisdiction such as the European Patent Organisation (EPO), before your invention is made public either through use or public disclosure.  Public disclosure also includes prior publication of your own previous patent applications!  This why we strongly advise discussing your coverage and filing strategy with us at an early stage.

A granted patent filed with the EPO will offer you similar legal protection in more than 30 European countries, including the UK. You only have to file one application which is examined centrally by the EPO, and on grant you may decide which of the EPO member states you wish to proceed with distinct granted patents in.. To secure this patent, you can apply directly through the EPO or the UK Intellectual Property Office (UKIPO). 

If you only want to patent your invention in a few countries, you can also apply to each office individually. Find out more about recent developments in the EPO here.

How to Check the Status of Your UK Patent? 

If you’re eager to see how your published UK patent application is progressing, you can check the status by visiting the UKIPO website.

Simply search for your UK patent application on the online services platform by providing the necessary details, and checking your application status. Here, you will see if your application is still pending, granted, or whether there are outstanding actions you’ll need to take.

The UK Supreme Court has recently issued a decision confirming the judgement of the Court of Appeal that an AI machine cannot be an inventor in a patent application as defined in the UK Patents Act 1977, which we wrote about in an earlier blog post.  

The issues the UK Supreme Court was asked to decide on were;

1. a) Does the Patents Act require a person to be named as the inventor which includes cases where the applicant believes the invention was created by an AI machine in the absence of a human, 
2. b) Does the patents act provide for the grant of the patent without a named human inventor, and 
3. c) If the invention is made by an AI machine is the owner of the machine entitled to the grant of the patent for the invention?

The Supreme Court unanimously dismissed the appeal holding that the UK Intellectual Property Office, the High Court and the Court of Appeal were right to find that the applications are deemed withdrawn at the expiry of the 16-month period which is provided to identify the inventors.  

It is interesting to note that the Appeal was not concerned with the broad question of whether an innovation made purely by AI machines are patentable, rather it is limited to the interpretation of the Patents Act and whether or not it is necessary to name a person as an inventor in order for the patent application to progress.