The fourth module of my introduction to English patent law. The procedure for applying for a UK patent and European patent (UK) and making PCT applications. Appeals to the Comptroller in the UK and the Boards of Appeal in the EPO. Entitlement and inventorship disputes,

1. Patents 101
Part 4: Applying for a
Patent
Jane Lambert 25 April 2020

2. Content
• Territoriality
• Patenting options
• Patents for the UK alone
• Entitlement Disputes
• Examination
• EPO and PCT
• Alternatives to patenting

3. Territoriality
Patents are granted for:
• Countries: UK, USA, France, Japan
• Groups of countries: Gulf Cooperation
Council and Eurasia
• Parts of countries: Hong Kong, Macau
Not yet possible to apply for a “world
patent” or an “EU patent.”

4. Patenting Options
Inventors seeking patent protection in
the UK can:
• Apply for a patent for the UK alone
• Designate the UK in a European patent
• Include the UK in an application
through the Patent Cooperation Treaty

5. Patents for the UK Alone
• Applications to the UK IPO in Newport
are governed by s.14 of the Patents Act
1977 and rule 12 of the Patent Rules
2007
• S.14 (2) requires a request for a patent,
specification and an abstract

6. Patents for the UK Alone
S.14 (3) provides:
“The specification of an application shall
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.”

7. Patents for the UK Alone
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.”

8. Entitlement Disputes
Persons who believe that they are
entitled to an invention may refer the
question to the Comptroller under s.8. If
the claim is resisted an official known as
a “hearing officer” will hold a hearing to
determine the matter.

9. Examination
Officials known as “examiners” will
consider the application and decide
whether it meets the requirements for a
patent.
If it does, the examiner will allow the
application to proceed to grant.

10. Examination
If not, the examiner will notify the
applicant of the objection and allow him
an opportunity to satisfy it.
If the applicant disagrees with the
examiner he can appeal to a hearing
officer.

11. Examination
Third parties cannot oppose an
application for a patent as they can a
trade mark, but they can make
observations under s.21.

12. EPO
A European patent designating the UK is
known as a European patent (UK)
For all practical purposes a European
patent (UK) is treated as though it had
been granted by the IPO
The substantive provisions of the EPC
are similar to the Patents Act.
One difference is “oppositions”

13. PCT Applications
Applications are made to a national
patent office.
WIPO will consider whether it meets
specified conditions.
If it does, WIPO will send the application
to local patent offices to determine
whether local law is met.

14. Alternatives to Patents
Trade secrecy:
• Law of confidence
• Directive 2016/943
Unregistered design right
• Semiconductor topographies
Copyright for computer programs

15. Questions and answers
Jane Lambert
4-5 Gray’s Inn Square
London
WC1R 3AH
jane.lambert@nipclaw.com
www.nipclaw.com
+44 (0)20 7404 5252