Obtaining protection

Obtaining protection

There is no automatic protection for an invention, unless it is kept secret and the law on breach of confidence applies. A patent can only be had if it is requested, and will only be granted after rigorous examination.

There are three ways to obtain a patent that will give protection for an invention in the UK: a domestic application, an application for a European Patent, and an application under the Patent Co-operation Treaty. In each case the procedure is long, complex and expensive, and usually requires specialist assistance from a patent agent (or patent attorney as they are allowed to call themselves) or a European Patent Attorney as appropriate. Solicitors may file and prosecute patent applications for their clients but few if any do so.

Patent agents are invariably holders of a technical or science degree or qualification and are trained in patent law (and intellectual property law in general). European Patent Attorneys are qualified to practice before the European Patent Office and have demonstrated linguistic skills in addition to their technical and legal knowledge.

Domestic applications

The obvious route to patent protection is to apply under the Patents Act 1977 for a UK patent. The application is made to the Patent Office, which is based in Newport (though there are facilities in London for searching and filing documents). The end result is a patent valid in the UK. (It can be registered in dependent territories and colonies to give protection there, but there is no automatic protection in for example the Channel Islands.)

This is the cheapest route to patent protection. No translations are needed, and there is no opposition procedure to drag out the application process, as in the European system. The UK application may be used to claim priority for later European, Patent Co-operation Treaty and other overseas applications, and if necessary for later UK applications too.

European Patent Convention (EPC)

Protection can also be obtained by applying for a European Patent (UK) under the EPC. Other countries can also be specified. The end result is the grant of a bundle of national patents, but at less cost and with much simpler procedures than individual national applications. Application is made to the European Patent Office (EPO) in Munich, and the entire process is dealt with by that institution. The EPC covers 36 countries – all the EC Member States, Switzerland, Liechtenstein, Monaco, San Marino, Iceland, Croatia, Macedonia, Norway and Turkey. It also provides an accelerated route to obtaining patents in the “extension states” - Serbia, Bosnia and Herzogovina, and Albania.

Although the Patents Act 1977 reflects the provisions of the EPC, and is supposed to be interpreted so as to give effect to Convention, there are significant differences in the way the law is applied. The EPO tends to be more liberal in applying the patentability requirements, although in the field of computer software it has lagged behind the UK Patent Office until recently.

Patent Co-operation Treaty (PCT)

This is a simplified filing procedure, which in some countries also deals with the search required for patentability to be established. A single application is all it takes to get protection in the countries that are party to the PCT, which is most of the countries of the world that are likely to be of interest – 141 of them. The most important non-members are Argentina and Taiwan.

There is an international phase where a preliminary search is carried out followed by a national phase where the countries in which protection is sought apply their own rules. The main advantage is that the PCT defers much of the expense (including translation costs) of a filing programme, although it is not a fast process.

Paris Convention

The Convention gives twelve months’ priority during which time the applicant may make further applications in other countries party to the convention, claiming protection from the date of the original application. The problems with such a system are illustrated in Asahi1 where two applicants claimed patents over essentially the same invention in the UK, one based on a Japanese application and the other on a US application, filed only weeks apart.

Who may apply

The person who is usually entitled to apply for a patent is the inventor (s. 7), subject to special rules where the inventor is an employee in which case it is the employer who is entitled to apply. The inventor is defined, unhelpfully, as the ‘actual deviser’ of the invention (s. 7(3)): and as Christopher Floyd QC, sitting as a deputy judge, observed in Bioprogress Technology Limited v Stanelco Fibre Optics Limited2 the New Shorter Oxford English Dictionary defines ‘deviser’ as (inter alia) ‘inventor’, which neatly and unhelpfully closes the circular definition. The expression, including the qualifying adjective ‘actual’, is a throwback to the old 1949 Act, when it was still possible to invent something by importing it (the novelty requirement being limited to the UK), so it was necessary for some purposes to distinguish an inventor (within the meaning of the 1949 Act) from an actual deviser of an invention.

Under section 2, the cases day that the inventor is the originator of the inventive concept, not the person who reduces it to practice.3 In IDA v University of Southampton4 a professor invented a new cockroach trap, which worked by causing poisoned electrically-charged talcum powder to be attached to the legs of the insects. A Mr Metcalfe read about the invention. Although he did not know that the powder adhered to the legs, he suggested to the original inventor that magnetic powder might work better. The original inventor applied for a new patent using this technique, but the High Court held that Mr Metcalfe was the inventor of the second invention.

Disputes about entitlement are dealt with by the Patent Office.5 In Yeda Research and Development Company Ltd v. Rhône-Poulenc Rorer International Holdings Inc & Ors6 the House of Lords said that the only question that had to be answered was, ‘who came up with the inventive concept?’, and earlier cases which had turned on breaches of confidentiality (IDA v University of Southampton) or of contract (Markem Corporation & Anor v Zipher Ltd7). The House of Lords also held that questions of entitlement and novelty had to be kept separate.

The grant of a patent to the wrong person is a ground for revocation: there is no provision for it to be transferred to the rightful owner8. Only co-inventors may challenge a patent on this ground, and they have only two years from grant in which to do so.

Section 13 provides that, whoever owns the patent, the inventor is entitled to be mentioned in it – a right to be identified as the inventor not unlike the moral right of paternity in copyright law. (In the USA, by contrast, all patent applications must be filed in the name of the inventor even if that person is an employee-inventor, in which case the employer will be named as the owner of the patent.)

Priority

The date of filing of an application usually provides the priority date. In the case of an application which claims priority from an earlier application in another convention country (section 5(5)) or from an earlier UK application, special rules apply and it will usually be the earlier filing date that determines priority. The priority date is the date at which the invention is compared with the dates of the art, and the date at which it becomes part of the prior art against which later applications will be judged. The earlier the priority date, generally, the better.

Applications (section 14)

The application must contain a request for a patent, the applicable fee (which was abolished in 1998), and a specification (description, drawings, abstract and claims). The claims and abstract may be filed up to a year later (A + 12 months). Readers will probably find it helpful to look at a patent application or a published patent to get an idea of what they look like, and European Patent EP0042723 is probably one that most people will be readily able to understand. Download the document with the A2 suffix, to which further reference will be made below: it was granted, and litigated, in a somewhat different form, but it still makes a good example to use.

Security

An application that contains information the publication of which might be prejudicial to the defence of the realm or the safety of the public may be made subject to a security notice, preventing or restricting its publication or communication (and therefore stopping the application proceeding to grant, and also blocking foreign applications except in NATO countries where, again, they would not be published and therefore would stall short of grant). The demands of national security may therefore make an invention completely unpatentable outside the UK.

Previously, under the 1977 Act, a UK resident who wished to apply abroad for any patent (including a European Patent), however unmilitary it might be, first had to obtain permission from the Patent Office. Under the Patents Act 2004, it is now only necessary to file an application for a patent first with the UK Patent Office, or obtain written permission to file overseas, if the invention relates to military technology or contains information the publication of which might be prejudicial to national security or the safety of the public. It becomes a matter for the applicant and his or her agent to consider, rather than exclusively for the Security Section at the Patent Office. Most requests for permission made under the old law will be unnecessary, so the burden on applicants and agents will be reduced.

The ‘safety of the public’ rubric, introduced in 1977, is rarely used, as most matters that could prejudice it are also prejudicial to the defence of the realm (which the pre-1977 legislation recognised). It is however retained in the 2004 Act to give flexibility to the provisions, and perhaps in the age of global terrorism it is particularly important that it is.

The specification

The expression ‘specification’ simply means the description of the invention, the drawings (if there are any) and the claims, all of which are dealt with in the legislation, so the word has no independent significance of its own.

In patent specifications, words take on new and sometimes unexpected meanings, and using expressions rarely encountered elsewhere. Components of a device are often “disposed” in relation to each other. The drafter is also able to act as his own lexicographer, assigning meanings to words to suit his own purposes and even coining new words to do a particular job (“slideably” is a personal favourite.)

The description

The description must disclose the invention clearly and completely enough to enable someone skilled in the art to work it. There is a note on descriptions available from the IPO website here.

The description must contain a certain minimum amount of information, enough to enable someone to work the invention: this is the concept of sufficiency, which is important because it goes to the acceptability of an application and to the validity of a granted patent. In the Asahi case, the decision turned on the amount of information disclosed in the application. The earlier application (the one with the earlier priority date) was held not to contain an enabling disclosure, i.e. one that would enable the hypothetical skilled worker to put it into operation.

Lack of sufficiency often arises in cases, as it is one way in which a defendant can attack a patent that it is alleged to have infringed: see paragraph Error: Reference source not found. There are two different flavours of insufficiency: the classic one, in which the description of the invention is not enough for the skilled person to work it, and what has become known as ‘Biogen insufficiency’, after the House of Lords decision (the leading speech being given by Lord Hoffmann) in Biogen v Medeva9, where the claims are broader than the description.

The classic case can be observed in Monsanto Company v Merck & Co Inc10 where the court held that it was not certain that the skilled addressee, carrying out the instructions in the description, would produce a class of compounds that had the desired characteristics; in Kimberly-Clark Worldwide Inc v Procter & Gamble Ltd & Anor 11 where the High Court (Pumphrey J) held that a patent for a new type of disposable nappy was insufficient because the skilled addressee who performed the tests for absorbency in the description would obtain contradictory results; and in Novartis AG v Johnson Medical Ltd12 where the skilled addressee would have had to carry out a lot of research before being able to carry out the invention.

The House of Lords returned to the issue of Biogen insufficiency in Generics (UK) Ltd & Ors v H Lundbeck A/S13 where Lord Neuberger made the point that the facts of Biogen were very unusual, as the claim was to a product identified in part by how it was made and in part by what it did (rather than a straightforward product claim as in Lundbeck, or a ‘product-by-process’ claim as in Kirin Amgen).

Important though it is that the description be sufficient, the requirement should not (according to the House of Lords) be overstated.14 The crucial matter is the fact that the invention, and how to work it, be disclosed: why it works is not something that the applicant has to bother with.

The description will recite the prior art in the area and set out the technical problem solved by the invention along with a brief description of the solution. It then sets out the essential features of the invention and any non-essential (but preferred) features, known as the ‘statement of invention’ or ‘consistory clause’, because it usually starts by saying ‘The invention consists of ...’. The Intellectual Property Office encourages the use of compact consistory clauses which define the invention by reference to the claims.

This is normally followed by an introduction to the drawings (nearly all patent applications include drawings, even if they are of marginal assistance) and then the invention is described by reference to examples or preferred embodiments. Being examples, this part of the description does not restrict the scope of the invention but it does help to ensure that the document will serve to enable a skilled person to work the invention.

While an early application maximises protection, there is a danger that the invention will not be fully understood and that some aspect of it will be omitted from the description, necessitating a later application with the risk then of the invention having been anticipated.

The claims

The claims, which are dealt with in section 14(5), define the monopoly which the applicant thinks should be awarded. They must be clear and concise and supported by the description (which means that they may not introduce anything not included in the description). They must relate to one invention, or one group of inventions linked in such a way that they form a single inventive concept.

Although a patent may not be granted for a mere concept (which would not be capable of industrial application, among other objections) the inventive concept of the patent is important. It is often important for a court to identify the inventive concept or epitome or essence of the invention. The court approaches this task by construing the claims in the light of the desciption of the invention. The court should take into account the problem that the inventor was trying to solve, according to Lord Hoffmann in Biogen v Medeva.15 This introduces another way of looking at inventions, and patents to protect them: technical solutions to technical problems. Bearing this in mind helps to ensure that we remain aware that patents are not granted for mere ideas, however good they are, but for technical effects that flow from those ideas.

At first instance in Schutz v Werit16 (where the question was whether replacing the plastic bottle inside the metal cage of an intermediate bulk container amounted to infringing ‘making’ or permitted ‘repairing’) Floyd J held that a patent was only infringed if the inventive concept were taken: ‘… the correct approach is to ask whether, when the part in question is removed, what is left embodies the whole of the inventive concept of the claim …’. The Court of Appeal differed, Jacob LJ considering that it was wrong to look for the inventive concept and that the cage without the bottle was merely ‘an important component from which a new IBC could be made’17 but the Supreme Court (Lord Neuberger giving a judgment with which the other Justices agreed) reversed the Court of Appeal, though without adopting the approach taken by the trial judge which they considered a little too simplistic.

The claims may relate to a product or a process. A patent application may have all product claims (claims to a thing) or all process claims (claims to how to make, do or use something) but may contain both. Pharmaceutical patents frequently contain claims to a new drug and also to the process by which it can be made.

The claims stake out a small part of human knowledge which the inventor believes is novel and inventive. It is extremely important to word them correctly so as to include the whole of the invention but without laying claim to something that has already been invented or which is not mentioned in the specification: it is said that the claims must be supported by the specification. If non-patentable matter is included the patent would be liable to revocation, in whole or in part, and the risks attached to this are minimised by setting out the claims as a series of summaries of the invention, successively narrowing the scope of the claim by introducing new limiting matter, so that (for example) the first claim might be too broad but the second might be valid. A patent may have more than one independent claim, but may relate only to one invention or group of inventions that share a single inventive concept.

However, it is easy so to frame the claims that some slight modification suffices to remove the variant from the scope of the patent (see van der Lely v Bamfords18). This can cause problems in dealing with infringements, and there is a huge body of case law concerned with how to interpret claims, on which see below.

There are frequently many claims in a patent, starting with the widest, narrowing it by the addition of more subject matter. In Tate & Lyle Technology Ltd v Roquette Frères19, by way of an exception to that statement, there was only one claim (“The use of maltotriitol to modify or control the form of maltitol crystals”), but in EP0042723 there are three:

1. A vacuum-cleaning [sic20] appliance including a cyclone unit and means for generating an airflow from a dirty air inlet through the said cyclone unit the cyclone unit being of a high efficiency having the capability of depositing fine dust particles and the appliance being characterised by a lower efficiency cyclone unit in the air path upstream of the high efficiency unit.
2. A vacuum cleaning appliance according to Claim 1 characterised by a casing 1 with a dirty air inlet, a generally cylindrical container 13 constituting the lower efficiency cyclone unit positioned within the casing and being connected to the dirty air inlet, the high efficiency cyclone having a frusto-conical body part 15 and being positioned within the lower efficiency cyclone unit, air being caused to flow from the low to the high efficiency cyclone unit.
3. A vacuum cleaning appliance according to Claim 2 characterised by a dirty air entry passage 11 extending up one side of the casing to the entry port 14 to container 13 and a clean air exit passage 21 extending down the other side of the casing from the exit to body part 15, a pipe 14 connecting the low and high efficiency cyclone units.

The first describes the invention as broadly as possible, claiming what the applicant thought to be the widest monopoly that could be justified. The second claim adds a casing which is described in some detail, which might have meant that the patent could remain valid even if the first claim was anticipated by a vacuum cleaning appliance with a different casing. The third claim introduces into the equation the placement of the passages for the airflows in and out of the container, defining a much narrower monopoly which might survive an attack on the first two claims.

So, the first claim is independent and defines all the essential technical features of the invention. It is followed by dependent claims, incorporating all the features of the independent claim but including inessential features. There may be more independent claims (each, if necessary, with their own dependent claims) if the invention falls into more than one category – product, process, use, apparatus, and so on.

Section 125 explains the purpose of the claims:

(1) For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly.

This provision incorporates the definition of a patent from section 130(1) and Article 69. The definitions of ‘patent’, ‘invention’ and ‘patented invention’ are intimately linked. The invention and the scope of protection given by the patent are determined entirely by the claims. In an infringement action, the court must construe the claims at an early stage, and will read the claims purposively through the eyes of the skilled addressee: ‘What would a person skilled in the art have understood the patentee to have used the language of the claim to mean?’ as Lord Hoffmann asked in Kirin Amgen.21

Procedure in the UK

After filing, nothing has to happen for a period of of 12 months. The applicant can decide what to do next. The invention’s commercial value can be assessed, finance can be obtained, and industrial partners can be sought. Foreign protection can be applied for during this time, which corresponds to the priority period under the Paris Convention.

If at the end of this time nothing further has been done the application dies. An application may also be withdrawn at any time before it is granted. But if the applicant wishes to pursue the application he must request, and pay for, a search.

Search and Publication

During the 12 months after filing, the applicant must pay a search fee (£130) for a preliminary examination (s. 17) and file claims (if they were not filed in the first place).

The preliminary search report which the examiner will issue will list any documents the examiner considers to be relevant to the question of novelty. These may include domestic and foreign patents and published applications, articles in learned journals, textbooks, and conference proceedings.

The applicant, after considering the results of the search, may file amendments to the description and claims. However, these are not acted on immediately; rather the patent goes forward to publication in exactly the form in which it was filed. The only addition will be any new claims filed since then but prior to the completion of preparation of the application for publication.

At this stage (called ‘“A” Publication’) copies of the application are available to anybody who wishes to inspect or purchase them. The Office file is also open to public inspection. The application is allocated a serial number which will later become its patent number.

The application as published will also include an abstract, a summary of the invention covering the main technical features. This too must be supplied by the applicant. Like the claims and search fee the abstract must be filed within 12 months of the application date if it is not filed at the same time as the rest of the application. However, the abstract has no legal effect and the Intellectual Property Office will assist in getting it right.

Substantive examination and grant

The final stage before a patent can be granted is known as the substantive examination. At this stage, the applicant must pay a further fee (called the Examination Fee, again £70) and if this is not done within six months after publication the application will die.

A Patent Office Examiner will examine the specification, i.e. the description of the invention and the claims, to see whether it meets all the requirements of the Act. In particular the Examiner will look to see whether the documents which were reported at search stage, or any others which have come to light since then, indicate that the claimed invention is either not new or is obvious.

A report is then sent to the applicant, who may then amend the application to overcome any adverse findings by the examiner or present arguments in reply. This procedure may be repeated as many times as necessary until the examiner is satisfied that the specification meets all the requirements. Once the examiner is so satisfied, the patent is granted and the specification is published.

Observations

Third parties may make observations during this time. The IPO recommends that this is done within three months after publication of the application, otherwise the patent might be granted. In making observations, the third party does not become party to proceedings before the Office: it is more like corresponding with the examiner, though it is a rather one-sided correspondence as the observations are considered by the examiner and passed on, if appropriate, in the form of new objections, to the applicant who may then amend the application to deal with them.

Practitioners usually prefer not to engage in a process that will contribute to improving the applicant’s patent. The alternative is to allow is to be granted and then attack it: if it is revoked, that is a much more complete solution than having it amended before grant.

Timetable

The search report is normally sent out within three months after a search request is made. Publication takes place just over 18 months from the filing date (or priority date) and the first full examination report is issued about 18 months after that.

The patent may be granted at any time after the first examination report once the application is in order. There is a maximum permitted time of four and a half years from the filing date (or priority date) for the application to meet all the requirements.

Accelerated procedure

It is possible for an application to be published earlier on request (Section 16). The applicant can also shorten the period between publication and full examination and grant if they can make out a case for accelerated processing.

In 1995, the Patent Office introduced a fast-track procedure enabling applicants to request (and pay for) the substantive examination at the same time as the preliminary search, and thereby to obtain a patent within 12 months.

The Green Channel

From 12 May 2009, it has been possible for applicants to use a so-called “Green Channel” if they claim that their invention has some sort of environmental benefit. The request may apply to various stages of the process, and the Patent Office requires nothing more than a written request.

Amendments

Applicants may amend their applications before grant (Section 19). The specification may also be amended after grant, but only with the Comptroller’s permission (Section 27).

Amendments may not be made to granted patents under Section 27 where there are proceedings pending (in the Court or before the Comptroller) in which the validity of the patent may be put in issue. Instead, with the leave of the Court or the Comptroller the proprietor may make amendments subject to such conditions concerning advertising the proposed amendments and costs or expenses as the Court or the Comptroller thinks fit. Such amendments may be formally opposed by third parties. The Comptroller must be given notice of any such proceedings brought in the Court.

No amendment to an application or a patent may include new material, or as it is knows in the patent world ‘added matter’ (Section 76(2)). If new matter is to be protected, the proper course is to file a new application for it. Added matter is a ground for revocation unders section 72(1)(d) and (e), so it is important to avoid adding anything which, far from improving the patent, might be fatal to it. But identifying added matter is not always easy, and our old friend the skilled person is brought in to assist with the task – the question for him or her is whether the addition has the effect of broadening the patent’s protection: the judge considers the matter through the skilled addressee’s eyes.22

Procedure in the EPO

The procedure in the European Patent Office is not sufficiently different to merit a separate exposition here. There is more information on the EPO website. The one very significant difference is that there is an opposition procedure in the European patent system which the UK does not have: a patent may be opposed during the period of nine months following publication of the “mention” of the grant of the patent.

1 [1991] RPC 485 (HL).

2[2004] EWHC 2263 (Pat); [2005] R.P.C. 15.

3Staeng Ltd’s Application [1996] RPC 183, confirmed in Henry Brothers (Magherafelt) Ltd v Ministry of Defence [1999] RPC 442.

4 [2004] EWHC 2107 (Pat) (28 July 2004).

5Patents Act 1977, sections 8, 9 and 37.

6[2007] Bus LR 1796, [2008] 1 All ER 425, [2007] UKHL 43 (24 October 2007).

7 [2005] RPC 31, [2005] EWCA Civ 267 (22 March 2005). Several years later, the dispute about entitlement and certain undertakings given to deal with it led to an action for infringement and a related claim for revocation: Zipher Ltd v Markem Systems Ltd & Anor [2008] EWHC 1379 (Pat) (25 June 2008) and [2008] EWHC 2078 (Pat) (1 September 2008), on appeal (on other points) (2009) 32(4) IPD 32026, [2009] EWCA Civ 44, [2009] CP Rep 23, [2009] FSR 14 (10 February 2009).

8Section 72(1)(b).

9[1997] RPC 1.

10[2000] RPC 709.

11[2000] EWHC 74 (Pat) (21 July 2000).

12[2009] EWHC 1671 (Pat).

13[2009] Bus LR 828, [2009] 2 All ER 955, (2009) 107 BMLR 121, [2009] UKHL 12, (2009) 32(5) IPD 32033, 107 BMLR 121, [2009] RPC 13 (25 February 2009).

14 Conor Medsystems Inc v Angiotech Pharmaceuticals Inc & Ors [2008] RPC 28, [2008] UKHL 49 (9 July 2008).

15[1997] RPC 1 at 45. The problem-and-solution approach can be seen in operation in another House of Lords case, Wheatley v Drillsafe [2001] RPC 133, where the problem was how to cut a hole in a tank without creating a spark that might ignite the gas inside. See below, para Error: Reference source not found.

16[2010] EWHC 660 (Pat).

17[2011] EWCA Civ 303, [2011] Bus LR 1510, [2011] FSR 19, paras 69, 75, and 64.

18Note 14, supra.

19[2009] EWHC 1312 (Pat).

20Literally, this surely means an appliance for cleaning vacuums. The title of the invention should properly read ‘vacuum cleaning-appliance’.

21 at para 34.

22Re Flexible Directional Indicators Appeal [1994] RPC 207, Bonzel Intervention (No 3) [1991] RPC 551, and see also the recent Court of Appeal decision, AP Racing Ltd v Alcon Components [2014] EWCA Civ 40.

Comments