5. Procedure of Patent in UK :
File Application
File claims within 12 months unless
filed with application
Preliminary examination and Search
Search report issued by patent
examiner
‘A’ publication (18 months after priority
date)
Substantive Examination
Grant and ‘B’ application
6. Drafting the Patent:
The Abstract - A summary to allow a
search to check its novelty
The Description - Statement of the
purpose and how it achieves it
The Claims - First states principal of what
it does and then states its distinctive
features
The Drawings (if necessary)
7. Fundamental Requirements:
1. Specifically excluded from patent
protection
Scientific theories
Presentation of information
Schemes of doing business
Method of treatment of human or animal bodies
2. Novelty
Must to have been made public by the inventor
or anyone else prior to the patent application
filing
8. Contd...
3. Involve an inventive step
Must not be obvious in the light of what was
already known
4. Industrial application
Includes all kinds of industry including
agriculture and pharmaceuticals
9. Applications for British Patents are filed in Newport.
Whole process will take four and half years.
Form No. 1
(request for a grant of patent with patent specification and
abstract)
Form No. 7
(Statement of inventorship and of right to grant of a
patent)
A full application for a patent must contain a request for grant
of a patent, a description of the invention, one or more
claims, any drawings referred to in the description of the
invention, one or more claims, any drawings referred to in
the description or the claims, and an abstract.
10. Antiphon’s Application [1984] RPC 1:
‘'The applicant must file the claims and abstract
within twelve months of the early filing (the so
called filing date) if an early application is not to
lapse’.
11. Priority Date:
The priority date is the date at which the novelty,
inventiveness, and other aspects of the invention are
assessed. Filing is also important since it establishes
the ‘priority date’ of the patent. In the absence of a
claim to an earlier date, the priority date is the filing
date of the application (S. 5)
12. Preliminary Examination
and Search
Form No. 9
(Request for a preliminary examination and search)
Fee : £150 (paper filing) and £130 ( E-filing)
Preliminary Examination:
The preliminary examination checks to make sure that
application meets the formal legal requirements of the
Patents Act 1977 and Patents Rules 2007.
13. Search:
Form No. 9A
(request for search)
Fees: £150 (paper filing) and £130 (E-filing)
Usually IPO carry out a ‘search’ within four months of
receiving form 9A and the accompanying fee, although this
may take a little longer in some areas of technology.
Examiner looks for documents that will decide whether
invention is new and inventive.
Search Report:
If examiner find any relevant documents, it will listed in
search report.
14. Search Report:
If examiner find any relevant documents, it will listed in
search report.
IPO will categorise all the relevant documents found using
internationally recognised codes as follows
X, Y or A:
Category X – in general, used for documents that include
all the main features of your invention, showing that idea is
not new.
Category Y – shows that a combination of features from two
or more existing documents suggest that idea is not
inventive.
Category A – used for documents that show what has been
done previously in the technical area of invention. IPO have
included these documents for your reference.
15. Publication:
The application will be published and a made available for
public inspection eighteen months from the date of filing
(S. 21).
The publication is important for two reasons.
1. Since the act of publication discloses the invention to the
public, an unwanted publication may prevent the applicant
from relying on other ways of protecting their invention.
2. If the patent proceeds to grant, the date of publication is the
date from which the patentee is able to sue for infringement
of the patent.
Early publication is known as ‘A’ publication.
16. Substantive Examination:
Form No. 10
(Request for a substantive examination)
Fees: £100 (paper filing) and £80 (E-filing)
This is the final stage before the grant of the patent.
This must be filed within six months of the date of early
publication.
The application will lapse if the form and fee are not received
within those six months.
The substantive examination takes the form of a dialogue
between the examiner and the applicant.
17. Contd…
After the examination the examiner draws
up a report any objections to the
application which have been identified. The
report is supplied to the applicant who is
given an opportunity to comment on the
objections.
18. Grant of Patent:
If UK IPO is satisfied that all the necessary requirements
have been satisfied, the patent will be granted [S. 18(4)].
The decision to grant a patent does not take effect until the
date on which it is published in the official Journal.
This is known as ‘B’ publication.
The initial grant is for four years. Thereafter the patent may
be renewed annually up to a maximum of 20 years from the
date of filing (S.25).
19. Contd…
The first renewal fee is due on the last day of the calendar
month in which the fourth anniversary of the filing date falls.
The filing date is the date your application was filed (not the
date the patent was granted).
For example: If the application was filed on 15 April 2010, the
first renewal fee would be due on 30 April 2014. Renewal
fees are then due every year on the same date for the next
15 years.
20. Annual Renewal Fee:
— for the 5th year-70
— for the 6th year-90
— for the 7th year-110
— for the 8th year-130
— for the 9th year-150
— for the 10thyear-170
— for the 11thyear-190
— for the 12thyear-210
— for the 13thyear-250
— for the 14thyear-290
21. Contd…
— for the 15th year -350
— for the 16th year -410
— for the 17th year -460
— for the 18th year -510
— for the 19th year -560
— for the 20th year -600
22. Books Referred:
Intellectual Property Law by Lionel Bently & Brad Sherman (oxford
university press) - pg. 341-361.
International Encyclopedia of Law, Vol. 5 (Intellectual Property) by
Blanpaink- pg. 132-134.
Intellectual Property Law by David Bainbridge (5th edn.)- pg. 322-337.
PCT Applicant’s Guide- National Phase- GB
Sites Referred:
http://www.ipo.gov.uk/types/patent/p-applying/p-apply.htm
http://www.kstode.co.uk/aboutip/filings_files/slide0015.htm
http://www.ipo.gov.uk/p-find-number?csbtype=F&csbapp=GB0723735.7
23. FULL DETAILS:
REGISTER ENTRY FOR GB2445070
Form 1 Application No GB0723735.7 filing date 04.12.2007
Priorities claimed: 14.12.2006 in United Kingdom - doc: 0624984 02.03.2007 in United
Kingdom - doc: 0704110 27.04.2007 in United Kingdom - doc: 0708237 25.05.2007 in
United Kingdom - doc: 0710089 22.08.2007 in United Kingdom - doc: 0716397
26.11.2007 in United Kingdom - doc: 0723143 03.12.2007 in United Kingdom - doc:
0723633
Title ELECTRIC WATER HEATER
Applicant/Proprietor OTTER CONTROLS LIMITED, Incorporated in the United
Kingdom, Hardwick Square South, Market Street, BUXTON, Derbyshire, SK17 6LA,
United Kingdom [ADP No. 00646927003]
Inventors :
PETER H WRIGHT, OTTER CONTROLS LIMITED, Hardwick Square South, BUXTON,
Derbyshire, SK17 6LA, United Kingdom [ADP No. 09583865001] ANDREW
MOTTRAM, OTTER CONTROLS LIMITED, Hardwick Square South, BUXTON,
Derbyshire, SK17 6LA, United Kingdom [ADP No. 09764747001]
Publication No GB2445070 dated 25.06.2008 Examination requested 12.12.2008 Grant
of Patent (Notification under Section 18(4)) 29.11.2011 Publication of notice in the
Patents and Designs Journal (Section 25(1)) 28.12.2011 Title of Granted Patent
ELECTRIC WATER HEATER
RENEWALS DATA :
Date Filed 04.12.2007
Next Renewal Date 28.03.2012
Status PATENT IN FORCE
