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.

What is a patent strategy?

A patent strategy is a plan of action designed to guide your application process, support business objectives, and, ultimately, secure the rights of your innovation.

Well-rounded patent strategies will answer a set of basic questions, such as: 

• What business idea are you planning to patent? 
• How will you draft your patent application, and what will you include? 
• When should you file your patent application? 
• Where in the world will you file your patent? 
• How long do you intend to maintain your granted patent and applications? 

Once you answer the questions above, you’ll have the foundation for your patent strategy. Keep in mind that your IP strategy should always support your overall business objectives.   

Why would a business have a patent strategy?

Businesses invest time and money into developing a patent strategy because creating a comprehensive blueprint delivers outstanding results. 

Without a strong patent strategy, organisations may struggle to protect their innovations adequately, resulting in missed financial opportunities and other disadvantages. Patent strategy for startups is even more vital as it enhances the company’s value in a dynamic market and reinforces the innovative quality of its products or services.  

What does a typical strategy involve?

So, what do patent strategies include? No two businesses or patents are the same, and each application will vary according to the market and type of product or service. Overall, a typical patent or IP strategy should include: 

• An analysis of your portfolio and which innovations you plan to patent. 
• Market research of the current patent landscape and how your idea competes. 
• Enforceable actions against potential infringement.  
• Opportunities to licence or monetize your patent once granted. 
• Ways in which you can align your patent with business objectives. 
• Guidelines to update and maintain your patent over the years. 

What benefits does a strategy bring?

Developing a patent strategy brings countless benefits to organisations, especially those that find themselves in a competitive sector. A comprehensive and well-executed patent strategy will help: 

Streamline procedures 

The process of securing a patent can be costly and usually takes at least three to four years, but it may take even longer.  By having a clear plan in place, companies can streamline the patent application procedure and ensure a smoother transition towards the protection of their intellectual property. 

Maintain a competitive edge 

Granted patents help organisations maintain a competitive edge in crowded and cut-throat markets. By developing a diverse patent portfolio and prioritising intellectual protection, you can make competitors think twice about entering your industry. 

Promote innovation 

Patenting intellectual property helps provide an incentive for further innovation. Once your idea is recognised as unique and novel, investors may be more inclined to pour money into this specific area of research and development.  

Create new streams of revenue 

When employed correctly, patent protection can spur upon lucrative streams of investment. If other companies can’t make use of your innovation, you could license the patent and turn your intellectual property into a valuable asset. 

Avoid patent infringement 

Last but not least, organisations can benefit from being aware of third-party patent rights and the scope of the rights of other patentees. This ensures they can make use of their innovation without interference from competitors, and they can seek legal action to defend their own patent rights if they believe they have been infringed upon. 

How to start building your patent strategy?

Whether you’re planning a patent strategy for startups or more established companies, you’ll likely follow a similar approach. We recommend: 

1. Evaluating your innovation: is your idea novel, inventive, and industrially applicable? Determine whether your innovation meets the relevant criteria and if it’s worth filing a patent application. 
2. Outline your goals: what do you hope to achieve with this patent? Ensure your patent strategy aligns with the wider goals of your business. 
3. Know your market: who are your competitors and what’s already been patented? Spend plenty of time researching what’s already out there and make sure you stand out. 
4. Define your scope: what countries will you want to patent in? Identify which markets are both relevant and profitable for your innovation. 
5. Set your budget: how much are you willing to spend on your patent? Set a firm budget as developing a patent strategy can incur quite a few costs.   
6. Update your patent strategy: how will your innovation evolve in the future? Keep track of your patent maintenance and revise your strategy regularly to ensure its relevance. 

If you have any questions or would like further information regarding patent strategies, or would like to learn more about how we can help you, please do not hesitate to contact us, either by email at mail@bailey-walsh.com or by telephone on +44 (0)113 243 3824.

As a company that deal with a number of Oppositions and Appeals on behalf of clients in front of the European Patent Office and have to deal with delays in reaching the end of the procedure, we are pleased to report that the European Patent Office has announced steps to allow the acceleration of the process, albeit only in certain instances.

How long do third parties have to appeal a granted patent?

The ability for a third party to oppose the grant of a patent by the European Patent Office is one of the fundamental aspects of the prosecution of a European patent. On grant of a European patent, third parties have nine months in which to file an Opposition on one of a number of grounds which can, if successful, lead to the revocation of the patent.

Data from the European Patent Office indicates that only around 2-3% of granted European Patents are opposed, of which approximately 33% are revoked and effectively removed. However, it is often the case that opposed patents are regarded as being commercially critical to the Patent proprietor and/or the Opponent and so considerable time, effort and expense is often put into opposing and defending the grant of a patent.

EPO Oppositions vs. National Courts

There has been an uneasy interface between the European Patent Office opposition procedure and the enforcement of the granted patents in national courts in recent years. Friction between the jurisdictions may be further exacerbated with the introduction of the Unified Patent Court.

For example, a patent may have been found to be infringed by a National Court with the patent proprietor being awarded damages, only for the same patent to be subsequently revoked upon the conclusion of European Opposition proceedings which may take several years. There is also no redress for a party which may have lost in an earlier court’s decision if an opponent subsequently wins the opposition procedure. While it has been possible in the past to request accelerated processing of oppositions relating to Patents involved in infringement actions, this measure is to the discretion of the Opposition Division.

New grounds for parties to accelerate opposition procedure

In an attempt to resolve this issue, the European Patent Office have now issued a Notice which opens the way for the parties to the opposition and/or the National or Unified Patent Court to request the acceleration of the Opposition procedure on the following grounds:

1. In cases where an infringement action in respect of a European patent is pending before the Unified Patent Court or a National court, a party to the opposition proceedings may at any time request accelerated processing of the Opposition. The European Patent Office (EPO) will then aim to issue the next procedural action within three months of receipt of the request or, where the request is filed within the opposition period, within three months of receipt of the patent proprietor’s response to the notice of opposition (whichever is the later).
2. In addition, the EPO will also accelerate the processing of the opposition if it is informed by the Unified Patent Court, the national court or the competent authority of a contracting Country stating that an infringement action relating to the opposed patent is pending in their jurisdiction.
3. In return, the EPO expects the parties to the opposition procedure to then make their submissions promptly and in full and to strictly adhere to the time limits set by the EPO for replying to communications or commenting on written submissions from the other parties. Requests for extensions of time are unlikely to be granted unless in exceptional circumstances.

Going forward

We hope that these new measures will result in meaningful acceleration of the opposition procedure of granted European patents, limiting the prolonged periods of uncertainty around the validity of these patents.

If you have any questions or would like further information regarding the EPO and opposition procedures, or would like to understand how we could help you, please do not hesitate to contact us, either by email at mail@bailey-walsh.com or by telephone on +44 (0)113 243 3824.

You can spend many months securing a patent for your innovation, investing time and effort into the complex process of legal protection. However, there’s still much to do after you secure your grant. If you want your intellectual property to remain protected, you’ll need to pay your patent renewal fee on time – every time. Here’s what you need to know.  

What is the purpose of patent maintenance fees? 

As a patent gets older, its maintenance fees increase. Progressive fees encourage patent owners to let unwanted patents expire and open up the possibility for others to make use of the innovation. This sliding payment method also avoids the creation of patent thickets, a process which involves creating unnecessary patents around a key invention. 

How often are patents renewed?

After reaching a certain age, patents in the UK must be renewed every year. 

More specifically, patent annuities begin four years after the first patent application, and can be renewed for a maximum of 20 years. 

The payment window for the patent maintenance fees opens three months before the due date and one after. Once the patent renewal fee is received, your patent is renewed instantly. You may renew your patent six months after the payment window closes, but you’ll be expected to pay an additional £24 in official fees for each month as a late penalty. 

If you first applied for a patent in June 2020, your patent annuities would begin four years later, in June 2024. You would be able to submit your patent payment as early as March and as late as July. Acting within a specific time frame is essential if you hope to protect your invention without interruptions. 

How are patent maintenance fees paid?

You can pay your UK patent maintenance fees directly via the post, telephone, or the UK Intellectual Property Office website. We recommend you opt for the assistance of a specialised firm such as Bailey Walsh & Co as this helps streamline the process and avoid any late penalties.  

Unfortunately, there are several unscrupulous firms that offer to manage the maintenance of your patent for vastly inflated fees.  Often these offers appear to be invoices from official sounding organisations.  If you receive such an offer or reminder and are unsure if it is genuine, please do not hesitate to contact us and we will be able to advise you.

How much does it cost to renew a patent? 

So, how much does it cost to renew a patent? In most countries patent maintenance fees begin after the fourth year anniversary of your application, also known as the 5th year renewal fee.  Every subsequent year, the patent renewal fee will rise. The following table illustrates how the official patent maintenance fees increase in the UK on a yearly basis.

Benefits of keeping patents maintained

Above all, staying on top of your patent renewal fees safeguards the intellectual property rights of your innovation, but it also: 

• Helps secure the legal authority needed to pursue action against infringements. 
• Preserves the continuation of licensing agreements made with third pirates. 
• Ensures any financial benefits from your patent, such as royalties, remain intact. 
• Adds a competitive advantage to your business while providing value. 

What is the difference between maintenance and renewal?

Although maintenance and renewal are terms used interchangeably when discussing UK patents, their meaning can differ depending on the context. Patent renewal in other jurisdictions may refer to extending a patent application’s lifespan to keep it pending beyond its initial term. On the other hand, patent maintenance can refer to the ongoing efforts required to ensure the patent remains live and enforceable after grant.

If you have any questions or would like further information regarding patent maintenance and renewal fees, or would like to understand how we could help you, please do not hesitate to contact us, either by email at mail@bailey-walsh.com or by telephone on +44 (0)113 243 3824.

Applying for a patent in the UK is a complex process and getting an application granted can take years to complete. In this guide, we’ll demystify the process and teach you how to apply for a UK patent with success.

The Basics of Patenting

Companies or individuals apply for a patent (a type of intellectual property right) when they wish to protect an invention or idea. When applying for a patent, the applicant must be confident the invention is novel (new) and involve an inventive step (not be obvious).

Although you can apply for a patent by yourself, it’s a complicated process involving various legal documents. To simplify the process, many applicants seek help from a qualified patent attorney and the UK Intellectual Property Office recommends this.

Preparing the Patent Application

Before you begin applying for a patent, we recommend carrying out a search on existing patent information and publications to make sure your idea is new. Once you’re sure your idea is eligible, it’s time to prepare your application.

To apply for a patent in the UK, you must first draft a patent specification. This vital document needs to include a written description and drawings but should include the following:

• Abstract: a brief summary of your invention which includes the technical features.
• Drawings: illustrates the embodiment of your invention with high-quality drawings including various angles or even cross-sectional views.
• Claims: define the scope of protection and include the novel technical features of your invention that are essential to how it works.
• Written description: include a description of how your product works and how it can be created and put to use.

The contents of your specification will highly influence the likelihood of your patent being granted, so it’s best to seek assistance from a qualified professional and make it count.

Filing the Patent Application

After drafting your patent specification, it’s time to file your application at the UK Intellectual Property Office. If a patent attorney created your patent specification, it’s strongly advisable they file to avoid any procedural errors and keep track of deadlines.

Patent Examination and Office Actions

For your patent to be granted, the Intellectual Property Office must conduct a substantive examination to confirm your invention is novel and non-obvious. Approximately 18 months after filing, your patent application publication will be made available for anyone to see. However, this does not mean your patent has been granted.

After filing your patent, an examiner will carefully assess whether your invention meets the criteria for a patent. During this period, they may carry out office actions such as requesting further clarification, objections, or amendments. You will need to respond to these office actions promptly and clearly to ensure your application is successful.

If the examiner concludes the patent specification does not meet the criteria, your application will be refused. You may appeal this decision with the Intellectual Property Office Tribunal or the Patents Court at the High Court of England and Wales.

Issuance and Maintenance of the Patent

Once your application is approved, you must focus your efforts on patent maintenance. You will need to renew your patent on the fourth anniversary of your filing as well as every year after that. Additionally, you will be responsible for enforcing and defending your patent against infringement.

Bear in mind this information only applies to the UK, for a worldwide patent application, you must file an international (PCT) patent application.  Overseas patents can also be filed using national and regional patent application routes.

Image for illustrative purposes only

In the on-going battle between Moderna and BioNTech/Pfizer over mRNA patents, the European Patent Office (EPO) has revoked one of Moderna’s patents involved in the dispute.

What happened between Moderna and rival pharmaceuticals?

Moderna had previously filed the patent in question, EP3718565 titled “Respiratory Virus Vaccines”, with the European Patent Office in October 2016. The patent was prosecuted and subsequently granted in April 2022 in the midst of the COVID-19 pandemic. Following the grant of the European patent, Moderna sued both BioNTech and Pfizer in several countries, including Germany, UK, the Netherlands, Belgium, and Ireland for infringement of this patent and another, EP3590949 directed to “Ribonucleic Acids containing n1-Methyl-Pseudouracils”. The litigation revolved around the COVID-19 vaccines produced and sold by BioNTech and Pfizer, and if Moderna were to win this litigation, they would recoup millions of pounds in damages relating to COVID-19 vaccine sales.

Moderna, BioNTech and Pfizer all started selling COVID-19 vaccines in 2020 but Moderna claim that the COVID-19 vaccines being sold by BioNTech and Pfizer make use of Moderna’s patented technology. In particular, Moderna claim that neither Pfizer nor BioNTech were at the same level of mRNA vaccine development as Moderna at the time of the COVID-19 pandemic. 

How BioNTech and others responded to patent claims

In response to the litigation, BioNTech and others filed an opposition against EP3718565 on the grounds that the claimed subject matter extended beyond the content of the application as originally filed. They also claimed the subject matter was neither novel nor inventive, and that the invention was not disclosed in a matter sufficiently clear and complete for it to be carried out by a person skilled in the art. These are all grounds for rejection of a patent application under the European Patent Convention and may be raised by an opponent of a granted patent during the opposition period. The opposition procedure in this case involved over one hundred citations provided by the parties involved as evidence for their respective positions and dozens of auxiliary amended applications submitted by the patent proprietor before the proceedings were brought to a close.

Patent appeal and moving forward

Following oral proceedings, the EPO revoked the patent based on added subject matter and the EPO’s Decision was published on 21st November 2023. Moderna have confirmed that they intend to appeal the decision. It therefore looks like the dispute between the big pharmaceutical companies over the COVID-19 vaccine will rumble on for years to come. 

If not for the revocation of the patent following the opposition proceedings, Moderna would have been able to protect their patented invention for up to 20 years from the date of filing of the application. Under European law, the term of pharmaceutical patents may be further extended under a supplementary protection certificate by up to five years, potentially worth millions to the company. 

The patents cited by Moderna’s infringement actions brought against BioNTech and Pfizer relate specifically to the Covid-19 vaccines, however pharmaceutical and chemical patents and applications may relate more broadly to various technologies and sectors; from pharmaceutical formulations, bulk chemicals, aviation fuels, mixed fuel systems, cosmetic formulations, sun protection formulations, domestic cleaning product formulations, soluble sachets, drug delivery systems, through to industrial chemicals, agrochemicals and industrial scaling and polishing systems.

If you want to find out more about how you can protect your Chemical, Pharmaceutical or Material inventions, click here.