Gowling WLG's intellectual property experts explore the types of intellectual property protection for inventions and granting procedure as part of their series called 'The basics of patent law'.
The articles cover, respectively: Types of intellectual property protection for inventions and granting procedure; Initiating proceedings; Infringement and related actions; Revocation, non-infringement and clearing the way; Trial, appeal and settlement; Remedies and costs; Assignment and Licensing and the Unified Patent Court and Unitary Patent system.
The articles underpin Gowling WLG's contribution to Chambers' Global Practice Guide on Patent Litigation 2017, for which Gordon Harris and Ailsa Carter wrote the UK chapter.
Introduction
In the United Kingdom, inventions may be protected pursuant the patent system. In addition, for information with the necessary quality of confidence, the tort of breach of confidence may assist in protecting against unauthorised use.
Supplementary Protection Certificates (SPCs) enable a limited extension of patent term in respect of pharmaceutical or plant protection products in qualifying circumstances.
The grant of a patent covering the UK
In basic terms, there are two systems pursuant to which a patent may be granted covering the UK: the national system and the European system. Either system may be preceded by, or may provide the receiving office for, an application under the international system.
National patent system
Under the national system, an application is made to the UK Intellectual Property Office (UKIPO), for a 'GB' patent which covers the UK. The grant of a GB patent is governed by the UK Patents Act 1977 (the "Patents Act" or "PA") and associated legislation, with details of procedures set out in the Patents Rules 2007 (as amended) and the Manual of Patent Practice ("MPP") and guidance notes.
Any natural or legal person may apply for a patent in the UK, either alone or jointly with another, provided they are the inventor(s) or otherwise entitled to the property in it (PA s.7). The first step in the procedure for obtaining a patent is to file an application (which may declare a priority filing), thereby obtaining a date of filing. The patent application includes a written description of the invention, drawings if referred to, and (optionally at filing, failing which within 12 months) claims and an abstract. Preliminary examination, search, publication, substantive examination, grant and publication follow, assuming procedural and substantive requirements are met and the requisite fees paid. The term of patent protection is 20 years from the date of filing the application, provided renewal fees are paid.
It is possible for third parties to make observations in writing to the Comptroller-General of Patents, Designs and Trade Marks (the "Comptroller") about the patentability of a published application before grant (PA s.21). The UKIPO recommends that any observations be filed within three months of the publication of the application, as a patent may be granted after this period. The observations must be duly considered and in the usual course a copy of them must be provided to the applicant. A person does not become a party to any proceedings by making observations.
Appeal against a refusal by the UKIPO to grant a national patent lies to the Patents Court (a specialist list within the Chancery Division of the High Court of England and Wales) or, where applicable, Scotland's Court of Session (PA s.97).
It is permissible to apply for a national patent without using a professional representative but this is not recommended. The application process usually takes approximately three to five years from the date of filing the application, but can be considerably quicker than this if some fees are paid early and correspondence from the UK is responded to promptly.
For processing the application through to grant, UKIPO fees are usually in the region £300-400. Additional costs may be incurred by the applicant in professional services for drafting, translation and representation. These will vary greatly in accordance with the relevant circumstances.
European patent system
The European patent system (including the European Patent Office (EPO)) was established by the European Patent Convention, an international treaty made outside the remit of the European Union. It provides for the centralised application, prosecution and grant of patents (as a bundle of national designations) in and by the EPO. Aside from the EPO's remit to hear post-grant oppositions filed within the first nine months of grant, and centralised applications by the proprietor for amendment or revocation, questions of infringement and validity of each national designation are at present a matter for the courts of each relevant country.
For the grant of a patent covering the UK under the European patent system, an application is made to the EPO for a European Patent designating the UK (an 'EP(UK)'). The grant procedure (for all specified country designations) is governed by the EPC, with additional and more detailed provisions set out in the Implementing Regulations, the Rules Relating to Fees and the Guidelines for Examination in the European Patent Office.
Any natural or legal person(s) may file an application for a European patent, provided they are the inventor(s) or successor(s) in title (EPC Arts. 58 & 60). This may be the employer(s) of the inventor(s), where applicable under the law of the relevant contracting state, and an application may be filed by joint applicants. The first step in the procedure is to file an application (which may declare a priority filing), thereby obtaining a date of filing. The application must include a request for the grant of a European patent and a description and drawings (if any). Claims and an abstract must also be provided. Formalities examination, publication, search (and publication), substantive examination (by the EPO's Examining Division), and grant and publication follow, provided substantive requirements are met and the relevant fees are paid.
Following publication of the European patent application, any person may present observations concerning the patentability of the invention, which must be filed in writing in English, French or German (EPC Art.115, Implementing Rule 114). The observations are communicated to the applicant or proprietor and he may comment on them. If they call into question the patentability of the invention in whole or in part, they must be taken into account in any proceedings pending before a department of the EPO until such proceedings have been terminated. Observations will also be made available for inspection upon the start of any opposition proceedings (on which please see below).
Within nine months of grant, any person may file a written opposition to the grant of the European patent at the EPO, on one of the prescribed grounds (lack of patentability, insufficiency, added matter) (EPC Arts. 99-100). The parties' submissions in the inter partes opposition procedure are considered and decided upon by the EPO's Opposition Division, with appeal lying to a Board of Appeal. Where the opposition succeeds, or leads to the amendment of the patent, it is revoked or amended in respect of all designations for which it was granted. The EPO's decision can therefore have the effect of over-riding any amendments meanwhile made to the national designation(s) pursuant to national law and procedure.
The EPC provides also for a post-grant limitation and revocation procedure whereby the proprietor may make a central application to amend the claims of a granted patent or to revoke them. Again, the decision applies in respect of all designations for which the European patent was granted.
Appeal can be filed against a decision of a first instance division of the EPO to the EPO's Boards of Appeal. The relevant Board then acts as the department of final instance in the relevant procedure before the EPO. Reference to the Enlarged Board of Appeal is limited, essentially, to points of law and is rare.
Natural and legal applicants having either their residence or their principal place of business in a contracting state to the EPC can themselves undertake all procedural steps before the EPO and are not obliged to appoint a representative. Other applicants are, however, required to be represented by a professional representative or a legal practitioner. An association of professional representatives can also be authorised.
The process for grant of a European patent typically takes approximately three to eight years, but it can be quicker or slower than this, and opposition may lengthen the duration of EPO proceedings.
The filing and search fees due at the beginning of the application procedure for a European patent currently amount to approximately EUR 1,500, with remaining fees payable later. In total, it costs on average approximately EUR 6,000 in fees to take a patent application through to the grant stage. Additional costs may be incurred by the applicant in professional services for drafting, translation and representation, but these will vary greatly in accordance with the relevant circumstances.
At the post-grant stage, competence is transferred to the contracting states designated in the European patent. Validation procedures (which may include translations and payment of fees) must be completed in each country of interest within three months of grant. The granted European patent will only take effect in countries where it is validated. However, for the UK, pursuant to the London Agreement the translation requirements of Article 65(1) EPC have been dispensed with.
After the end of the year of grant or, if it is granted before the end of the fourth year of its term, after the end of that fourth year, annual renewal fees are payable to the UK Office in order to maintain the UK designation of a European patent (EPC Art. 86, Implementing Rules 37(4) & 38(1), PA s.77, MPP). For more on fees, please see below.
International application system
National patents and European patents covering the UK may alternatively be designated as part of a Patent Cooperation Treaty (PCT) application (an 'international application').
The international application system enables some consolidation of patent applications made internationally. The central coordination of the system is conducted by the World Intellectual Property Office (WIPO) in Geneva at the 'International Bureau'.
The filing of an international application, designating contracting states and regions for which the application is made, begins the 'international phase' of the application, in which the application will ultimately be searched against the prior art by an International Searching Authority (ISA). The purpose of the search is to discover relevant prior art. The search report and the ISA's written opinion are transmitted to the applicant and the International Bureau. The applicant may request supplemental searches. The international application is published 18 months after the claimed priority date. Applicants may optionally request substantive examination, although the resulting opinion is non-binding on national and regional offices.
If the application reaches the 'national' or 'regional' phase, then the countries (or regions) in respect of which it has entered that phase will proceed with examination.
Any resident or national of a contracting state to the PCT may file an international application. The UKIPO can act as a receiving office for an international patent application where the applicant (or one of them) is resident in the UK or the Isle of Man or is a British citizen. The EPO can act as a receiving office where the applicant is a resident or a national of a State which is a party to both the EPC and the PCT (at present all EPC states are parties to the PCT). For international applications received by the UKIPO or the EPO, the relevant ISA is the EPO.
The UKIPO deals with international applications in the national phase in the same way as a national application, with some modifications. For example, a translation is necessary where the international application was not published in English.
An international application which designates or elects the EPO is equivalent to a normal European application, again with some modifications. For example, where the international application was not published in one of English, French or German, the applicant must supply a translation of the application into one of those languages.
Fees for maintaining a patent covering the UK
Renewal fees are payable on the last day of the month in which the application for the patent was filed, from the fourth anniversary of filing onwards. The fees increase each year, currently from £70 in the fifth year to £600 in each of the twelfth to twentieth years.
The fee for each year should normally be paid within the period of three calendar months ending on the last day of the month in which the renewal date falls. If a renewal fee is not paid within the prescribed period, the patent will lapse. However, if the renewal fee and a late payment fee (currently £24) are paid within six months following the due date, the patent shall be treated as if it had never expired. After the expiry of six months following the due date, at which point the patent has ceased to have effect, the patent can only be restored by making an application to the Comptroller. If the Comptroller is satisfied that the failure to pay the renewal fee (and any late payment fee) was unintentional, he shall restore the patent upon payment.
Supplementary protection certificates
A Supplementary Protection Certificate (SPC) is a form of intellectual property right that extends patent protection in respect of pharmaceutical or plant protection products in qualifying circumstances. An SPC may be granted to the holder of the 'basic patent' (on which see below) or his successor in title.
The SPC regime is based on several key EU Regulations: 469/2009, 1901/2006, 141/2000 (medicinal products); and 1610/96 (plant protection products). However, the legislative regime includes interaction with other EU legislation and UK national law.
Article 3 of both Regulation 469/2009 (medicinal products) and Regulation 1610/96 (plant protection) provides that a certificate shall be granted if, in the Member State in which the application is submitted and at the date of that application:
- the product is protected by a basic patent in force;
- an appropriate and valid authorisation to place the product on the market has been granted;
- the product has not already been the subject of a certificate; and
- the authorisation referred to in (b) is the first authorisation to place the product on the market as a medicinal/plant protection product.
A further condition is that the holder of more than one patent for the same product shall not be granted more than one certificate for that product.
These legislative provisions have been interpreted by the Court of Justice of the European Union (CJEU), in decisions which are binding upon the courts in the UK. The case law is complex and the meaning of the above provisions remains the subject of references to the CJEU from the UK High Court. In short, and very simply, the "product" means the active ingredient or combination of active ingredients of a medicinal product; the "medicinal product" means the substance or combination of substances presented for treating or preventing disease (for example the full pharmaceutical formulation); the "basic patent" means a patent which protects a product as such, a process to obtain a product, or an application of a product.
The term of an SPC is intended to compensate, to some degree, for the period elapsing between the filing of an application for a patent and the grant of authorisation to place the relevant product on the market. The duration is equal to the patent life lost between the patent filing date and the date of first marketing authorisation in the EEA (which includes the EU), minus five years, subject to a maximum of five years.
It is possible to extend the SPC for a medicine by six months if certain studies in the paediatric population are carried out, regardless of whether the medicine is ultimately authorised for children.
For EU member states, including the UK, SPCs are granted at the national level by the relevant patent office. For the UK, this entails an application in the prescribed form to the UKIPO, irrespective of whether the basic patent is a national patent (GB) or a European patent designating the UK (EP(UK)). The application fee is currently £250. An application for a paediatric extension must also be in prescribed form and accompanied by a fee of £200.
When all requirements are met, the certificate or extension will be granted. The certificate will state the date of expiry of the maximum possible period of its duration.
The certificate takes effect at the end of the lawful term of the basic patent provided that the basic patent has not previously lapsed or been revoked, and provided the annual fees are paid in time. The annual fees are payable for each year of the effective period of the certificate as a single cumulative amount. It is not possible for an applicant to opt to pay renewal fees one year at a time on an SPC in the UK. Any final period of less than 12 months is treated as a whole year. Currently the fees for five successive years are £600, £1300, £2100, £3000 and £4000. The fees are usually payable on the date on which the certificate is due to take effect and may be paid within the previous three months. Late payment is possible up to six months after the due date subject to an additional fee of one half of the amount of the unpaid fees; the annual fees will then be treated as having been filed on the due date.
If fees are not paid, the certificate will be treated as having lapsed on the date of expiry of the basic patent and so will not take effect.
Rights conferred by a patent covering the UK
The grant of a patent, whether a national patent or a European patent designating the UK, is the grant to the proprietor, for the term of the patent, of a monopoly right in respect of the patented invention.
The scope of the monopoly right conferred by the grant of a patent is defined by the Patents Act: it is limited to acts which infringe the patent pursuant to section 60.
Where the court is satisfied that a third party's acts infringe (or would infringe) the patent, the court will, in the usual course, award relief to remedy the statutory tort of infringement.
The existence of a patent does not entitle the proprietor to relief; it is the order of the court, following a finding of infringement (or threatened infringement) which enables the proprietor of a patent to protect the monopoly conferred by the grant of that patent. Interim relief and other measures (such as disclosure and seizure) are similarly available only by way of court order, following an application to the court and a conclusion by the court, upon the relevant facts, that such interim relief should be awarded.
Protection against breach of confidence
Know-how and trade secrets may be protected by an obligation of confidentiality arising under the common law or because of specific contractual terms (for example, employment contracts and non-disclosure agreements may include such terms).
Pursuant to the English common law (Coco v Clark (1969) RPC 41; Saltman v Campbell [1963] 3 All ER 413; BBC v HarperCollins [2010] EWHC 2424 (Ch)), it is a tort to use in an unauthorised manner, to the detriment of the originating party, information which has the necessary quality of confidence and is subject to an obligation of confidence. To have the necessary quality of confidence, the information must not be in the public domain or form part of an employee's general skill and knowledge. The requisite obligation of confidence may exist pursuant to a contractual obligation or the circumstances in which it was imparted.
Breach of a contractual term of confidence may also give rise to a claim for breach of contract.