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.

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.