Patents 101 Part 4 - Applying for a Patent

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25 April 2020 Jane Lambert
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1. Territoriality of Patents
Patents are granted for nations such as the UK and USA, groups of nations such as EAPO
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and GCC
2
or parts
of countries such as Hong Kong
3
. There is as yet no such thing as a world patent or even a European Union
patent. Inventors seeking patent protection in the UK can
 apply to the Intellectual Property Office
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in Newport for a British patent,
 the European Patent Office
5
in Munich for a European patent designating the UK, or
 include the UK in an application under the Patent Cooperation Treaty.
2. Applications for UK Patents
(1) Applications for British patents are made under the Patents Act 1977 and the Patents Rules 2007.
(2) S.14 (2)
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Patents Act 1977 requires every application for a patent to contain:
“(a) a request for the grant of a patent;
(b) a specification containing a description of the invention, a claim or claims and any drawing
referred to in the description or any claim; and
(c) an abstract;”
(3) S.14 (3) requires the specification to disclose the invention in a manner which is clear enough and
complete enough for the invention to be performed by a person skilled in the art. This last requirement is
1
Russia, Kazakhstan, Azerbaijan, Kyrgyz Republic, Moldova and Armenia (https://www.eapo.org/en/)
2
Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and United Arab Emirates (https://www.gccpo.org/DefaultEn.aspx)
3
https://www.ipd.gov.hk/eng/home.htm
4
https://nipclaw.blogspot.com/p/ipo.html
5
https://nipclaw.blogspot.com/p/european-patent-office.html
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https://www.gov.uk/guidance/the-patent-act-1977/section-14-making-of-application
Patents 101
Part 4: Applying for a Patent
PP

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important because one of the grounds upon which a patent may be revoked is that the specification of the patent
does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled
in the art (s.72 (1) (c) Patents Act 1977).
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(4) S.14 (5) requires the claims to
“a) define the matter for which the applicant seeks protection;
(b) be clear and concise;
(c) be supported by the description; and
(d) relate to one invention or to a group of inventions which are so linked as to form a single
inventive concept.”
The requirement that the claims be supported by the description is particularly important.
(5) After the application is filed, it is examined to determine whether it complies with the formal requirements
of the Patents Act and the Patents Rules pursuant to s.15A (2).
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If not, the applicant is given an opportunity to
correct any deficiencies.
(6) If the application is in order, it will be published on the IPO’s website and journal
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. Those who object to
the application may not oppose it but they may make written observations on the question whether the invention
is patentable which the IPO will consider under s.21.
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(7) After the preliminary examination, the applicant may apply for a search of the prior art for any documents
that are relevant to whether the invention is new and involved an inventive step.
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An official known as “an
examiner” will carry out such a research and report to the Comptroller-General of Patents, Designs and Trade
Marks (“the Comptroller”)
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unless he or she considers that such a search would serve no useful process.
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The
examiner’s report will be copied to the applicant.
(8) If upon receiving the report the applicant requests and pays for a substantial examination, the examiner
will investigate whether the application complies with the Act and Rules for the grant of a patent and report to the
Comptroller.
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If the examiner reports that the application does not meet the requirements for the grant of a
patent the Comptroller may give the applicant an opportunity to correct any deficiency that can be corrected by
amending the application or otherwise or make observations on the report. If the applicant fails to correct those
deficiencies or otherwise satisfy the Comptroller that the law has been complied with, the Comptroller may refuse
the application.
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If on the other hand, the examiner reports that the requirements for the grant of a patent have
been satisfied, the Comptroller may advise the applicant of that finding. Upon payment of the prescribed fee, the
IPO may grant the applicant a UK patent.
16
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https://www.gov.uk/guidance/the-patent-act-1977/section-72-revocation-of-patents-power-to-revoke-patents-on-application
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https://www.gov.uk/guidance/the-patent-act-1977/section-15a-applications-preliminary-examination
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https://www.gov.uk/guidance/the-patent-act-1977/section-16-applications-publication-of-application
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https://www.gov.uk/guidance/the-patent-act-1977/section-21-applications-observations-by-third-party-on-patentability
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https://www.gov.uk/guidance/the-patent-act-1977/section-17-applications-search
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The Chief Executive of the IPO who is also referred to as “the Registrar” in trade mark and design registration matters.
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S.17 (1), (4) and (5) https://www.gov.uk/guidance/the-patent-act-1977/section-17-applications-search
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S.18 (2) https://www.gov.uk/guidance/the-patent-act-1977/section-18-applications-substantive-examination-and-grant-or-
refusal-of-patent
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S.18 (3)
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S. 18 (4)

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3. Hearings before the Comptroller
(1) S.101 of the Patents Act 1977 provides:
“Without prejudice to any rule of law, the comptroller shall give any party to a proceeding before
him an opportunity of being heard before exercising adversely to that party any discretion vested in
the comptroller by this Act or rules.”
(2) Such hearings are conducted on the Comptroller’s behalf by officials known as “hearing officers”.
(3) The rules for such hearings are set out in Part 7
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of the Patents Rules 2007
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. Guidance can also be
found in various Tribunal Practice Notices (“TPN”) that have been issued since 2000 of which the most important
is probably TPN 1/2000.
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(4) Appeals against decisions of examiners are known as ex parte (without notice) proceedings and disputes
with third parties as inter partes (with notice) proceedings.
(5) In general, proceedings before the Comptroller mirror those in the civil courts. The Rules provide for
statements of case, witness statements, strikeouts and summary judgment and security for costs. Rule 82
provides:
“(1) Except where the Act or these Rules otherwise provide, the comptroller may give such
directions as to the management of the proceedings as he thinks fit, and in particular he may—
(a) require a document, information or evidence to be filed;
(b) require a translation of a specification of a patent or application or any other document
which is not in English;
(c) require a party or a party’s legal representative to attend a hearing;
(d) hold a hearing and receive evidence by telephone or by using any other method of direct
oral communication;
(e) allow a statement of case to be amended;
(f) stay the whole, or any part, of the proceedings either generally or until a specified date or
event;
(g) consolidate proceedings;
(h) direct that part of any proceedings be dealt with as separate proceedings; and
(i) direct that the parties attend a case management conference or pre-hearing review.
(2) The comptroller may control the evidence by giving directions as to—
(a) the issues on which he requires evidence;
(b) the nature of the evidence which he requires to decide those issues; and
(c) the way in which the evidence is to be placed before him,
and the comptroller may use his power under this paragraph to exclude evidence which would
otherwise be admissible.”
(6) Appeals from hearing officers lie to the Patents Court.
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4. Entitlement and Inventorship Disputes
(1) “Entitlement” in this context means the right to apply for a patent.
(2) S.7 (2) of the Act provides:
“A patent for an invention may be granted –
(a) primarily to the inventor or joint inventors;
17
Rules 73 to 91
18
https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/694249/Patents-Rules-
2007-06042018.pdf
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https://webarchive.nationalarchives.gov.uk/20140729131910/http://www.ipo.gov.uk/pro-types/pro-patent/p-law/p-tpn/p-tpn-
2000/p-tpn-12000.htm
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S.97 (1) https://www.gov.uk/guidance/the-patent-act-1977/section-97-legal-proceedings-appeals-from-the-comptroller

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(b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or
rule of law, or any foreign law or treaty or international convention, or by virtue of an
enforceable term of any agreement entered into with the inventor before the making of the
invention, was or were at the time of the making of the invention entitled to the whole of the
property in it (other than equitable interests) in the United Kingdom;
(c) in any event, to the successor or successors in title of any person or persons mentioned in
paragraph (a) or (b) above or any person so mentioned and the successor or successors in
title of another person so mentioned; and to no other person.”
Disputes arise between product design consultants and their clients, joint venturers and others over should apply
for a patent.
(3) S.8 (1) provides:
“At any time before a patent has been granted for an invention (whether or not an application has
been made for it) –
(a) any person may refer to the comptroller the question whether he is entitled to be granted
(alone or with any other persons) a patent for that invention or has or would have any right
in or under any patent so granted or any application for such a patent; or
(b) any of two or more co-proprietors of an application for a patent for that invention may so
refer the question whether any right in or under the application should be transferred or
granted to any other person; and the comptroller shall determine the question and may
make such order as he thinks fit to give effect to the determination.”
(4) The remedies that the Comptroller may grant under s.8 (2) are broad:
“Where a person refers a question relating to an invention under subsection (1) (a) above to the
comptroller after an application for a patent for the invention has been filed and before a patent is
granted in pursuance of the application, then, unless the application is refused or withdrawn before
the reference is disposed of by the comptroller, the comptroller may, without prejudice to the
generality of subsection (1) above and subject to subsection (6) below -
(a) order that the application shall proceed in the name of that person, either solely or jointly
with that of any other applicant, instead of in the name of the applicant or any specified
applicant;
(b) where the reference was made by two or more persons, order that the application shall
proceed in all their names jointly;
(c) refuse to grant a patent in pursuance of the application or order the application to be
amended so as to exclude any of the matter in respect of which the question was referred;
(d) make an order transferring or granting any licence or other right in or under the application
and give directions to any person for carrying out the provisions of any such order.
(5) S.12 makes similar provision for determining who is entitled to apply for foreign patents.
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(6) Similarly, s.37provides for the determination of disputes over entitlement to granted patents.
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(7) S.13 provides machinery for determining who is entitled to be named as an inventor.
5. Applications to the EPO
(1) Applications for European patents are governed by Part III of the European Patent Convention.
(2) The procedure is substantially similar to that of the IPO. Applicants must file a request, description,
claims, drawings and abstract.
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21
https://www.gov.uk/guidance/the-patent-act-1977/section-12-determination-of-questions-about-entitlement-to-foreign-and-
convention-patents-etc
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https://www.gov.uk/guidance/the-patent-act-1977/section-37-property-in-patents-and-applications-and-registration-
determination-of-right-to-patent-after-grant
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Art 78 (1) EPC https://www.epo.org/law-practice/legal-texts/html/epc/2016/e/ar78.html

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(3) The examination procedure in the EPO is similar to that of the EPO.
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There is a preliminary examination
for compliance with formalities,
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search,
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publication
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and substantive examination
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ending with the grant or
refusal of a patent.
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(4) One big difference between the Patents Act and the EPC is that art 99 EPC allows granted patents to be
challenged centrally in the EPO within 9 months of grant in a process known as “opposition”.
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The grounds of
opposition are set out in art 100:
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“(a) the subject-matter of the European patent is not patentable under Articles 52 to 57;
(b) the European patent does not disclose the invention in a manner sufficiently clear and
complete for it to be carried out by a person skilled in the art;
(c) the subject-matter of the European patent extends beyond the content of the application as
filed, or, if the patent was granted on a divisional application or on a new application filed
under Article 61, beyond the content of the earlier application as filed.”
(5) Art 106 (1) provides for appeals from the organs of the EPO to independent Boards of Appel constituted in
accordance with art 21.
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6. Patent Cooperation Treaty
(1) The Patent Cooperation Treaty
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(“PCT”) enables simultaneous applications to the patent offices of up to
150 countries with a single filing.
(2) An international application consisting of a request, a description, one or more claims, one or more
drawings (where required), and an abstract
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may be filed in triplicate at an intersectional receiving office which is
usually the applicant’s national patent office.
(3) The receiving office will seek one copy of the international application and send the other two to the
International Bureau (a department of the WIPO) and the third copy to the international searching authority
35
.
The receiving office will check the application for compliance with the formalities.
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An international searching
authority which may be a national patent office or international agency
37
will search the prior art
38
and produce an
international search report.
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If the search report is favourable, the applicant may ask for his application to be
published and transmitted to designated national patent offices which will determine whether the application
complies with their national patent laws.
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Part IV
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Art 90
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Art 92
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Art 93
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Art 94
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Art 97
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https://www.epo.org/law-practice/legal-texts/html/epc/2016/e/ar99.html
31
32
33
https://www.wipo.int/export/sites/www/pct/en/texts/pdf/pct.pdf
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Art 3 (2) PCT
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Art 12 (1) PCT
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Art 14 (1) PCT
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Art 16 PCT
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Art 15 PCT
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Art 18 (1) PCT

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(4) S.89
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and s.89A and s.89B of the Patents Act 1977 govern the examination of PCT applications that
designate the UK.
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Jane Lambert
4-5 Gray’s Inn Square
London
WC1R 3AH
jane.lambert@nipclaw.com
www.nipclaw.com
+44 (0)20 7404 5252
40
https://www.gov.uk/guidance/the-patent-act-1977/section-89-international-applications-for-patents-effect-of-international-
application-for-patent

Patents 101 Part 4 - Applying for a Patent

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