2

Develop your IP strategy

Understand the patent filing process

15M

An overview for patent filing through the UKIPO (UK), WIPO (international) and EPO (EU).

Applications to the UKIPO

Applicants who only require protection in the UK can apply to the UKIPO for a GB patent covering only the UK. Apply for a patent through the Intellectual Property Office (IPO).

Time

Stage

0

2 weeks

0-12 months

1. File Patent application and pay application fee

Your patent attorney will file the relevant documents with the UKIPO.  You will also need to pay an application fee.

2. UKIPO issues a preliminary examination report

The UKIPO will conduct a preliminary examination of your patent application to determine whether it complies with the relevant formalities and issue a preliminary examination report.

3. File a request for search

Your patent attorney will need to file a request for search within 12 months of the filing date.  This search is designed to determine whether your patent application is valid in that it is new and inventive.

6-18 months

4. UKIPO issues a search report

The UKIPO will issue a search report within 6 months of the search request, listing copies of all documents which may be relevant to assessing the validity of your patent application.

18 months

5. Patent application is published

Your patent application will usually be published 18 months after the filing date and will then become publicly available.

18-24 months

6. File a request for examination

After your application is published, you have 6 months to decide whether to continue with your application and file a request for examination.

On average 4-6 years after '6.'

1 year after '7.'

7. Substantive examination by UKIPO

If you decide to continue with your application, the UKIPO will conduct a substantive examination to determine whether your patent application meets the requirements of the Patents Act 1977 and should be granted accordingly.
Where appropriate the patent examiner will issue an examination report explaining why your application does not comply with the Patents Act.  In such cases you will need to respond to the report with amendments or counterarguments, otherwise your application may be refused.
The examination process can take 4-6 years from filing the request for examination.

8. UKIPO decides whether to grant patent

The UKIPO will decide whether to grant your patent around 1 year after the substantive examination is completed.

Applications to WIPO for Patent Cooperation Treaty (PCT) (aka International) Applications 

The PCT system allows applicants to file one International Patent Application in order to simultaneously seek protection in 152 PCT member countries.

International Applications can be filed at national or regional Patent Offices or at the International Bureau of WIPO.  International Applications can claim priority from earlier patent applications, such as GB patent applications filed at the UKIPO.
The main advantage of the PCT system is it allows applicants to defer the decision on which countries to seek patent protection in until 30 months after the original priority date (31 months in Europe).  This means the majority of national filing costs (including translation costs) can be deferred to a later stage.

 
Applicants often use the PCT system to allow for more time for their product/process pipeline and commercial strategy to develop, so that they can make a more informed decision on the territories in which it would be most prudent to seek patent protection.

More information about the PCT system can be found on the WIPO Website

Time

Stage

0

1. File national patent application to secure priority date

National patent applications filed up to 12 months before the filing of the International Application can serve as the basis for a claim to priority.  The filing date of the national application then serves as the priority date for the International Application.

12 months

16-17 months

18 months

18-22 months

27-29 months

30-31 months

2. File International Application with national or

regional patent office (e.g. the EPO) or WIPO

Your patent attorney will file a single application designating which further countries you require protection in.

3. International Search Report and Written Opinion

issued by International Searching Authority (ISA)

The International Searching Authority (e.g. the EPO), identifies relevant prior art which may have an impact on whether your invention is patentable and the scope of such protection (i.e. the breadth of the claims that you are ultimately granted), and provides a written opinion on your invention’s potential patentability.

4. Publication of International Application and

International Search Report

The PCT Application and International Search Report will be published 6 months after the application is filed.  Applicants may also optionally file claim amendments 2 months from publication of the International Search Report.

5. File claim amendments and/or arguments 

If re-examination of the patent is required then a fee is payable and claim amendments and/or arguments are filed at the 22 month mark.  Otherwise any amendments are filed at the 18-19 month mark.

6. International Preliminary Report on Patentability

(IPRP) issued

This is optional and provides a non-binding opinion on patentability which nevertheless can influence national/regional patent offices.

7. National/regional phase entry in the countries where

the applicant seeks protection

After 30 months (31 months in Europe), you may pursue the grant of your patents directly before the national or regional Patent Offices (e.g. the EPO) of the countries/regions in which you want to obtain them.  The decision on whether to grant the patent then lies with these patent offices.

Applications to the EPO for European Patents

Applicants can file a single application at the EPO in order to obtain individual patents in up to 38 countries which have signed up to the European Patent Convention (EPC).  

 

Once granted by the EPO and validated by national patent offices, these patents confer the same rights as national patents and any infringement issues are dealt with on a national, rather than Europe-wide basis. Validity issues are also dealt with nationally once the opposition stage has concluded.

More information on application is available on the EPO Website

Time

Stage

0

12 months

12-18 months

1. File national patent application to secure priority date

A national application filed in the patent office of one of the 38 EPC member countries (e.g. the UKIPO), up to 12 months before the filing of the European Patent Application, can serve as the basis for a claim to priority.  The filing date of the national application then serves as the priority date for the European Patent Application.
The filing of the European Patent Application can also take place at the end of the International Application process, i.e. at the national/regional phase entry stage (see timeline above), such that it can commence up to 30-31 months years after the priority application is filed.

2. File European Patent Application and pay application fee

Your patent attorney will file the relevant documents with the EPO.  You will also need to pay an application fee.

3. EPO conducts initial examination

The EPO will check whether the necessary documents have been filed correctly before giving your patent application an official filing date.  This is followed by a formalities examination to check whether the documentation is correct and complete.

18+ months

4. EPO publishes patent application

Your patent application will be published as soon as possible after the expiry of 18 months after the filing date or the earliest priority date and will then become publicly available. 

18-24 months

5. EPO issues search report 

The EPO will issue a search report listing all documents which may be relevant to assessing the validity of your patent application. The EPO will often also include an initial opinion on the patentability of your invention.

24-30 months

6. File a request for substantive examination 

After your application is published, you have 6 months to decide whether to continue with your application, and if so, which countries to "designate" for your patent to take effect in.

36+ months

48+ months

7. Substantive examination by EPO

If you decide to continue with your application, the EPO will conduct a substantive examination to determine whether your patent application meets the requirements of the European Patent Convention and should be granted accordingly.  It may be necessary for you to amend your patent application and for the EPO to conduct a second examination.

8. EPO decides whether to grant patent

If the EPO decides to grant your patent, its decision will be reported in the European Patent Bulletin. The decision to grant will take effect from the date it is published.

3 months after '8.'

9. Validation in designated states

Your patent will need to be validated in each of the countries you have designated within a specific time limit. In some contracting states, you may need to file a translation of the patent specification in an official language. Additional fees may also be payable.

48+ months

10. Opposition

Third parties (e.g. competitors) have 9 months to oppose your patent centrally through the EPO if they believe it should not have been granted (e.g. because it is not novel).  After the 9 month opposition period expires, European patents may only be challenged in national courts.
The effect of a successful opposition at the EPO is that the patent is revoked centrally and protection is lost in all member states where the patent has been validated.  In contrast, successful challenges in national courts only result in revocation of the patent in the country where the challenge was initiated.

This project was joint-funded by the National Institute for Health Research (NIHR) Brain Injury MedTech Co-operative based at Cambridge University Hospitals NHS Foundation Trust and University of Cambridge. The views expressed are those of the author(s) and not necessarily those of the NHS, the NIHR or the Department of Health.

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