Patents may be protected in United Kingdom by the grant of a UK patent by the United Kingdom Intellectual Property Office. They may be protected by the grant of a European patent in the European Patent Office.
The Patents Act together with the patent rules and manual of practice governing the application of patent filings in the United Kingdom IPO.
Patents may be granted if
- the invention is new
- involves an inventive step
- is capable of industrial application
- does not fall within the excluded categories.
It must be possible to define the invention concisely in a paragraph or so in the patent application. This is the patent claim and defines the scope of protection. It is also important in the context of searches. The claim must be clear and unambiguous and define the claimed invention. It must be possible for a third party to determine the existence and scope of the patent protection.
The applicant is required to define the matters for which he seeks protection be clear and concise and be supported by the description.
The examiners may reject the claim if it is insufficiently clear. They may require amendment. the claim. It must be clear to a person skilled in the art on the basis of the wording only. In broad terms, patent claims refer to products or processes.
The patent must be new to the public. There must be an inventive step. This is something that it is not obvious to persons who are skilled in the art.
European patents may be granted in all fields of technology provided that they involve an inventive step and are susceptible of industrial application.
An invention is “new” if it does not form part of the state of the art. The state-of-the-art comprises all matters (whether product process information about either or anything else) which has any time before the priority date been made available to the public whether in United Kingdom or elsewhere by written or oral description, by use or in any other way.
If it has been available to the public at any time or in any place, it is not new for this purpose.. Prior publication implies that if a person skilled in the matter concerned had seen it, he would have been able to understand the inventive concept and step concerned.
A skilled person is hypothesised as an unimaginative person or group with common general knowledge available to persons in the field. The skilled person in the area of the invention is the marker of novelty.
To decide whether there was a disclosure such as to enable a skilled person in the above sense to understand it, it may be assumed that the skilled person would be able to conduct tests and make errors to get the invention to work. The position as seen from the perspective of the skilled person at the relevant time and not in hindsight.
A hypothetical prior disclosure must be such as enabled a skilled person to make the invention function from what was disclosed using unimaginative trial and error et cetera. It is not sufficient that the disclosure exists in the sense of disclosing what the concept is as such.
An invention shall not be taken to involve an inventive step if it was not obvious to a person skilled in the art having regard to any other matters which forms part of the state-of-the-art.
The concept involves discerning what a notional hypothetical person skilled in the art with common general knowledge can do. The inventive step must go beyond this. The hypothetical test asks what differences there are between the state-of-the-art and the invention. It considers whether the differences are such as require steps which are not obvious to a person skilled in the art
The state-of-the-art is defined is all matters (whether a product process information about either or anything else) which has been at any time before the priority date of that invention be made available to the public (whether in the United Kingdom or elsewhere) by written or oral description by use or in any other way. The equivalent wording is set out in the European patent Convention.
The key date is the filing date. The application may be filed in another country first provided that within 12 months, an application is filed in the United Kingdom. The priority date is the date of first filing for the invention.
The Patents Office (UK or EPO) performs a search of prior art and sends the results to the applicant. This may be in earlier patent documents journal or articles. An informal disclosure by the applicant may itself negate the claim.
The inventive step is a difficult concept. It is usually an improvement on the existing solution to a problem in a field. It may provide some new advantage or benefit. It may be relatively small provided that an identifiable solution or advantage exists
The European Patent Office assesses the matter by reference to identifying the closest piece the prior art (which may be an existing patent) and considering the differences between the claimed invention and the prior art. It seeks to determine the possible issue or problem with the prior art which is claimed to be addressed (the technical problem) and considers whether the invention claimed from the perspective of the prior art and considering the technical problem is/would have been obvious to a skilled person.
The UK approach is similar. it identifies a person skilled in the art with common general knowledge in the field. It identifies the inventive concept claimed. It identifies the differences between the state-of-the-art and the claimed inventive concept and considers without knowledge of the alleged invention whether the differences constitute steps which would be obvious to a person skilled in the art.
The invention must be capable of industrial application. It is so capable if it can be made used in any kind of industry including agriculture. If the claim has no obvious commercial application, it will not succeed. it must have a plausible claim for use and application. It must not be merely a programme for further research.
Most patent applications readily meet the requirement of being capable of industrial application. The EPO indicate that an invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry including agriculture industry is interpreted broadly including any activity of a technical character.
Certain inventions are excluded from patentability on public policy grounds. They are the subject of a separate article.Certain inventions or alleged inventions are excluded
- if they consist of not more than a discovery or scientific theory or mathematical method
- a literary dramatic musical or artistic work or other a static creation whatsoever
- a scheme rule or method for performing a mental act playing a game doing business or program for a computer
- the presentation of information
There are corresponding exclusions in respect of the European Patent Convention.
If the above elements are incorporated or are an aspect of some other invention which otherwise qualifies, their inclusion do not exclude patentability.
A patent is not granted for an invention, the commercial exploitation of which would be contrary to public policy or morality. UK legislation provides that exploitation is no to be regarded as contrary to public policy merely because it is prohibited by any law in force in United Kingdom.
Inventions that involve doing something to humans or animals, immoral or antisocial behaviour et cetera may be excluded
A patent cannot be granted for the invention of a method of treatment of the human or animal body by surgery or therapy or method of diagnosed practice on the human or animal body.The exclusion does not apply to an invention consisting of a substance or composition for use in any such method.
The European Patents Convention provides that patent shall not be granted for plant or animal varieties which are essentially biological processes for the production of plants and animal. This does not apply to microbiological processes and products thereof. there as equivalent provision in United Kingdom legislation.
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