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.

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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.

After years of planning and several delays, the European patent with unitary effect, or the “Unitary Patent”, as it will be known, and the Unified Patent Court has come into force today.

Since its inception, the European Patent Office has examined and granted European patents centrally at their offices in Munich, The Hague and Berlin. However, upon grant of the European patent, the patent owner must select which of the contracting states of the European Patent Organization they wish their patent to be “validated” in. This will essentially result in a bundle of separate, distinct, national patents.

With the exception of the central opposition procedure, available for up to 9 months after grant of the European patent, any post-grant matters that arise in relation to “classical” European patents must be dealt with in each individual state where an issue arises. For example, if a patent owner believes there is an infringement of their patent in one or more countries where they have protection, they would need to take action individually in each of those countries.

How have we supported the development

The Unitary Patent (UP) and Unified Patent Court (UPC) have been developed to provide a single unitary right and a central court to bring any post-grant actions. Equally, however, this does provide a single, central point where 3rd parties may apply to revoke or otherwise challenge a patent’s status across a large number of countries.

The UP is a new right – additional to the options currently available on grant of a European patent – which may be requested upon grant of the European patent and will result in a single unitary right covering all those Member States which are signed up to the Unified Patent Court Agreement (UPCA) at the time of grant of the patent.

UP protection is currently possible in 17 EU Member States, with more set to follow.

UK patent attorneys registered with the EPO will retain their rights to act at the UPC.

Conclusion

If you have any queries on how the UPC affects your IP portfolio or have any questions on filing strategies with the UPC and the rest of Europe, please do not hesitate to contact one of our advisers, either by email at mail@bailey-walsh.com or by telephone on 0113 2433824.

On the 3 January 2023, the UKIPO published details on changes to its practice regarding the compliance period for bringing a divisional application in order for grant.

The compliance period for a patent application is the period in which a patent application must be put in order for grant. The duration of the compliance period is laid out in Rule 30(3)(b) of the UK Patents Rules 2007, and is the later of 4 years and 6 months from the priority date of the application or 12 months from the receipt of the first substantive examination report. This compliance period may be extended by 2 months under Rule 108(2), and further extended by another 2 months under Rule 108(3).

Under the current rules, a divisional application is accorded the same compliance period as its parent application at the time the divisional is filed. This means that if the compliance period for a parent application has been extended, the divisional application will inherent the extended compliance period.

This leaves some confusion as to the scope for further extending the compliance period of the divisional, and the UKIPO has stated that this is not in keeping with the intent the Rules were drafted for.

From 1 May 2023, the UKIPO will no longer accord divisional applications a compliance period equal to an extended compliance period of the parent application on filing. This means that the compliance period of a divisional application must be separately extended if the applicant wishes, which may be necessary to allow the divisional application to be promptly filed and prosecuted.

If you have any queries about how these rule changes may affect your divisional application filing strategy, please do not hesitate to contact one of our advisers, either by email at mail@bailey-walsh.com or by telephone on 0113 2433824.

On the 13 October 2022 the Administrative Council of the European Patent Office (EPO) passed a number of rule changes intended to adapt the current rules of the European Patent Convention (EPC) to the digital age. Among these, it has been announced that the “ten-day” postal rule that applies to official communications issued by the EPO will no longer apply.

Under current EPO practice, a document is deemed to be delivered to the addressee on the tenth day following its handover to the postal services or on the tenth day following its transmission by means of electronic communication (the “ten-day rule”). From 1 November 2023, the EPO has announced that they will abandon this practice to strengthen their alignment with the PCT.

From 1 November 2023, the EPO will calculate the response period to EPO notifications from the date the notification bears. In exceptional circumstances when a document is delivered more than seven days after the date it bears, the response period will be extended by the number of days by which the seven days were exceeded.

If you have any queries on how these rule changes will affect your pending European patent application or would like more information on how best to protect your innovations and get the most out of your business in the most cost-effective manner, please do not hesitate to contact one of our advisers, either by email at mail@bailey-walsh.com or by telephone on 0113 2433824.

The European Patent Office Legal Board of Appeal had reached a decision on 21^st December 2021 regarding the patentability of two applications, EP18275163.6 and EP18275174.3, both in the name of Dr Stephen Thaler. Dr Thaler had previously filed the applications naming an artificial intelligence, “DABUS”, as the inventor.

The Board of Appeal announced its ruling that the initial decision by the Receiving Section of the European Patent Office (EPO) to reject the two applications on the grounds that an artificial intelligence system cannot be an inventor was confirmed. The Board of Appeal further rejected the request that Dr Thaler had the right to the applications by virtue of being the owner and creator of the AI system.

The Board of Appeal has recently published its decision in full, which can be seen here. In it, the Board of Appeal has stated that an AI lacked legal personality. As such, while the AI may be capable of inventing, it is not able to apply for a patent for its invention or own a patented invention. Furthermore, the AI is not capable of transferring the rights of a patent or patent application, countering Dr Thaler’s argument that he derived the right to the application by virtue of being the AI’s employer.

In light of Articles 60(1) and 81 of the EPC, the Board of Appeal agreed with the assessment of the EPO Receiving Section that the inventor has to be a person with legal capacity, as that is the ordinary meaning of the term “inventor”.

What does this mean going forward for AI inventors? The Board of Appeal in their published ruling has acknowledged that while an AI or machine cannot be the designated inventor per se, under European patent law there is no mechanism to prevent a user or owner of a device involved in an inventive activity to simply designate themselves as the inventor.

An applicant is free to acknowledge the contributions of any AI inventor in the description of their application.

If you have any questions on the implications of AI with respect to your Intellectual Property, or would like more information on how best to protect your innovations and get the most out of your business in the most cost-effective manner, please do not hesitate to contact one of our advisers, either by email at mail@bailey-walsh.com or by telephone on 0113 2433824.

We are delighted to share that Essential Healthcare Solutions (UK) Ltd, a client of Bailey Walsh & Co LLP, has been listed as a winner in the Innovation category for the Queen’s Award for Enterprise 2022 for outstanding achievements in innovation.

The Queen’s Award for Enterprise in Innovation were instigated by HM The Queen in 1996, and requires eligible UK companies to demonstrate strong environmental, social and governance practices, as well as show innovation in any of invention design or production of goods; performance of services; marketing and distribution; or after-sale support of goods or services.

Essential Healthcare Solutions design pressure, moisture, and heat redistributing support surfaces that improve the prevention and management of patient pressure ulcer injuries. Their patented technology has resulted in outstanding commercial success, allowing them to become eligible for this prestigious award.

We congratulate Essential Healthcare Solutions on this achievement.

If you would like more information on how best to protect your innovations and get the most out of your business in the most cost-effective manner, please do not hesitate to contact one of our advisers, either by email at mail@bailey-walsh.com or by telephone on 0113 2433824.

Founded in 2014, the Formula E motorsport championship has exploded onto the competitive scene, with last year’s season totalling over 300 million viewers across the globe. The philosophies of Formula E centring around sustainability and road relevance are not only increasingly attractive to viewers and advertisers, but also to automotive manufacturers.

As the world is set to move beyond traditional combustion engines, major manufacturers are no longer able to justify the cost of research and development of soon-to-be redundant technology in the automotive industry. Formula E is the platform for manufacturers to advertise their commitment and advancements in low-emission automotive technology.

The difference in drive mode is not the only departure that Formula E takes from the traditional competitive racing world. Advancing electric technology allows championship organisers to increase fan involvement and modernise conventional racing formats.

Such innovations include ‘Attack Mode’ and ‘Fanboost’, debuting in recent seasons. Attack Mode and Fanboost modes enable the driver of a Formula E vehicle to unlock extra power from the car’s motor while competing in the race. Attack Mode can be activated by the driver taking the risk of leaving the racing line for an overtake, whilst Fanboost allows fans to vote before the commencement of the race for their favourite five drivers, who will then be able to access the increased power throughout the race.

Viewers of the championship will be able to identify cars in these modes by means of a patented device developed by a client of Bailey Walsh & Co. LLP. The protective apparatus mounted around the head of a driver, known as the Halo, will be configured to visually indicate the mode of the vehicle by means of coloured lights. Through this device, millions of viewers will be able to see the impact on the race of Fanboost voting participation in real-time.

Read more about Attack Mode and Fanboost here. If you would like more information on how best to protect your innovations and get the most out of your business in the most cost-effective manner, please do not hesitate to contact one of our advisers, either by email at mail@bailey-walsh.com or by telephone on 0113 2433824.