This paper is written as a piece for participation in the Intellectual Property (“IP”) Course, April 2022. It gives a summary of patent law in the UK. Following our first lecture on patents in Canada, I decided it might be a good idea to briefly discuss the requirement for granting patents in the UK and the duration, particularly the ‘renewal and restoration’ period which apparently is not a Canadian concept.
The governing Act for patents in the UK is the Patents Act 1977[1] (the “PA” or “Act”) 1977). Section 1[2] provides that ‘a patent may be granted for an invention that satisfies the following conditions’:
- the invention is new;
- it involves an inventive step;
- it is capable of industrial application; and
- the grant is not excluded under subsections 2, 3 or 4A.[3]
Section 2 of the Act explains that an invention is new if it does not ‘form part of the state of the art’.[4] ‘State of the art is to be taken to comprise all matter…which has at any time prior to the priority date of that invention been made to the public…’.[5] This means that to satisfy the ‘new’ requirement, an invention cannot be made available to the public before the priority date (for priority date see notes on duration below).[6] Once an invention becomes part of the public domain, it becomes part of the state of art and therefore cannot be patentable. In my opinion, one might want to keep their invention ‘secret’ until an application is made i.e., no disclosure. This is a very important requirement and the UK intellectual Property Office (“IPO”) website even states: “do not try to patent an invention that is not new…before wasting large amounts”.[7]
Furthermore, for an invention to be patentable, it must involve an inventive step.[8] An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art.[9] This is similar to the Canadian ‘non-obviousness’ requirement under section 28.3 of the Patent Act 1985[10]. The test person is a ‘skilled person’ therefore, an expert familiar with the art. The question is whether it is an obvious step in the market.
The third requirement is that the invention is capable of industrial application.[11] Section 4[12] explains that an invention is presumed to be capable of industrial application if it can be made or used in any kind of industry. This is usually easy to satisfy provided an invention is put to use. In my opinion, this requirement is unnecessary as anyone who is going through the long and expensive process to make an invention patented is highly likely to put it to use. This is also a requirement under Canadian law.[13] The promise of the invention must be fulfilled for it to be useful and patented.[14]
Finally, a grant must not be excluded.[15] The following are specifically excluded from being patentable:
i. Section 1(2):
- Discovery, scientific theory or mathematical method;
- Literary, dramatic, musical or artistic creation (these are copyrightable);
- Schemes, rules or methods, computer programs, playing a game or doing business (computer programs almost invariably are copyright protected in the UK); and
- Presentation of information – this is not necessarily an invention anyway).
ii. Section 1(3) – an invention that will be contrary to public policy or morality is not patentable.[16]
iii. Section 4A[17] – a method of treatment of the human or animal body by surgery or therapy[18] and a method of diagnosis practiced on the human or animal body is not patentable.[19]
Duration
On filing an application to the IPO, if an application complies with the requirement under Section 1 of the PA as explained above,[20] a patent will be granted, and the patentee will be given exclusive right over its invention. The IPO website sets out the procedures, timelines, and fees.[21] Section 5 of the Act explains that a priority date to which an application for a patent relates is the date of filing an application[22] and the period is for 12 months.[23] This is a similar time frame in Canada.[24]Anything published before the priority period becomes a state of the art. It is usually advised to retain a patent attorney because the registration is quite complex and is usually a specialist job. [25]
Furthermore, Section 25 of the 1977 Act provides for the duration of patents. It provides that a patent shall continue in force until the end of the period of 20 years beginning from the date an application was made or as prescribed.[26] The IPO further explains that on the fourth year anniversary of when a patent is filed, it must be renewed.[27] After which, there must be subsequent renewals on a yearly basis.[28] Any renewal fee in respect of patent that is not paid by the end of the period prescribed for payment has the effect of ceasing such patent by the final month of that period.[29] This basically means that unlike Canada, in the UK, an annual renewal of patent is required, up to a total maximum of 20 years, starting from the fifth year anniversary. If you do not renew, you lose your patent i.e., the patent expires.
Section 25, 28 and 28A deals with the renewal of patents[30]. Section 25(6) grants a ‘grace period’ of six months for failure to renew a patent.[31] Subject to additional late payment fees, if you renew six months within the prescribed period of renewal passing, your patent will be treated as if it never expired, thus if it was infringed within that period, you can bring a claim.[32]However, if more than six months lapses and a patent ceases to have effect because of failure to renew it, you can make an application to restore your patent,[33] provided it is less than 19 months (i.e. the six months grace period plus an extra 13 months restoration period).[34] The effect of restoration does not provide for renewal of patent. If during the restoration period, patent is infringed, an action cannot be brought.[35] Finally, you lose your patent forever if it is not renewed or restored.
To conclude, the requirement to register patent in the UK is quite similar to Canada. Canada also requires novelty, usefulness (utility), and non-obviousness.[36] Canadian IP also explicitly excludes mere scientific principles from being patented.[37]Canadian Case law has also been interpreted to exclude professional arts,[38] and methods of medical/ surgical treatment. Although Motorola has succeeded in patenting a mathematical algorithm on its claim that it is part of a machine.[39] The major difference which is highlighted is the ‘renewal’ and ‘restoration’ period the UK imposes. In general, the cost to prepare and file an application can be between £5000 and £10000.[40] The renewal fee is listed on the IPO website and ranges from £70 (5th year) to £610 (20th year).[41] Late fee charge is currently £24 per month.[42] The cost of renewal usually increases year by year and it is argued that the renewal fees create constant periodic investment barrier.[43] This is because it is expensive for holders to keep a patent in force throughout the 20-year period. It is assumed that on average, renewal fees are paid only if it is presumed that a patent will produce foreseeable economic benefits[44] thereby promoting the idea of ‘use it or lose it’ in patents.
[1]The Patents Act 1977, https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/950221/consolidated-patents-act-1977.pdf
[2] The Patents Act 1977, s 1(1).
[3] ibid.
[4] ibid, s (2).
[5] ibid, 2(2)
[6] See note 21 and 22.
[7] ‘Before You Apply for A Patent’ (GOV.UK) <https://www.gov.uk/guidance/before-you-apply-for-a-patent > accessed 1 April 2022.
[8] The Patents Act 1977, s 1(1)(b).
[9] ibid, s 3.
[10] Patent Act, RSC 1985, c P-4, s 28.3.
[11] The Patents Act 1977, s 1(1)(c).
[12] ibid, s 4.
[13] Patent Act, RSC 1985, c P-4, s 2.
[14] Teva Canada Limited v Pfizer Canada Inc, 2012 SCC 60, para 38.
[15] The Patents Act 1977, s 1(1)(d).
[16] ibid, s 1(3).
[17] ibid, s 4A.
[18] ibid, s 4A(1)(a).
[19] ibid, s 4A(1)(b).
[20] See, notes 2 and 3.
[21] ‘Intellectual Property Office’ (GOV.UK) <https://www.gov.uk/government/organisations/intellectual-property-office> accessed 2 April 2022.
[22] The Patents Act 1977, s 5(1).
[23] ibid, s 5 (2A).
[24] Patent Act, RSC 1985, c P-4, s 28.3(a).
[25] ‘Before You Apply for A Patent’ (GOV.UK) <https://www.gov.uk/guidance/before-you-apply-for-a-patent > accessed 1 April 2022, see section on “Speak to an IP professional”.
[26] The Patents Act 1977, s 25(1).
[27] ‘Renew A Patent’ (GOV.UK) <https://www.gov.uk/renew-patent > accessed 2 April 2022; see also: The Patents Act 1977, s 25(3).
[28] ibid.
[29] The Patents Act 1977, s 25(3).
[30] The Patents Act 1977.
[31] ibid, s 25(6).
[32] ibid, s 25(4).
[33] ibid, s 28(1).
[34] ‘Renew A Patent’ (GOV.UK) <https://www.gov.uk/renew-patent > accessed 3 April 2022.
[35] ibid, s 28A.
[36] Patent Act, RSC 1985, c P-4, s 2; 28.3.
[37] ibid, s 27(8).
[38] Lawson v Canada (Commissioner of Patents) (1970), 62 CPR 101.
[39] Re Motorola Inc’s Patent Application No. 2,085,228 (1998), 86 CPR (3d) 71 (Patent Appeal Board and Commissioner of Patents).
[40] ‘Introduction To UK Patents – AA Thornton’ (Aathornton.com, 2022) <https://www.aathornton.com/resources/introduction-to/introduction-to-uk-patents/ > accessed 2 April 2022.
[41] ‘Renew A Patent’ (GOV.UK, 2022) <https://www.gov.uk/renew-patent > accessed 2 April 2022
[42] ibid.
[43] Marc Baudry and Beatrice Dumont, ‘Market Maturity, Patent Renewals and the Pace of Innovation: the Case of Wind Power in Germany’ (2016) 2 Journal of Innovation Economics & Management <https://www.cairn.info/revue-journal-of-innovation-economics-2016-2-page-131.htm > accessed 3 April 2022.
[44] ibid.
Bibliography.
Cases:
Lawson v Canada (Commissioner of Patents) (1970), 62 CPR 101.
Re Motorola Inc’s Patent Application No. 2,085,228 (1998), 86 CPR (3d) 71 (Patent Appeal Board and Commissioner of Patents).
Teva Canada Limited v Pfizer Canada Inc, 2012 SCC 60.
Journal:
Baudry M, and Dumont B, ‘Market Maturity, Patent Renewals and the Pace of Innovation: the Case of Wind Power in Germany’ (2016) 2 Journal of Innovation Economics & Management <https://www.cairn.info/revue-journal-of-innovation-economics-2016-2-page-131.htm > accessed 3 April 2022.
Legislations:
The Patents Act 1977, https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/950221/consolidated-patents-act-1977.pdf
Patent Act, RSC 1985, c P-4, s 28.3.
Websites:
‘Before You Apply for A Patent’ (GOV.UK) <https://www.gov.uk/guidance/before-you-apply-for-a-patent> accessed 1April 2022.
‘Intellectual Property Office’ (GOV.UK) <https://www.gov.uk/government/organisations/intellectual-property-office> accessed 2 April 2022.
‘Introduction To UK Patents – AA Thornton’ (Aathornton.com, 2022) <https://www.aathornton.com/resources/introduction-to/introduction-to-uk-patents/ > accessed 2 April 2022.
‘Renew A Patent’ (GOV.UK) <https://www.gov.uk/renew-patent > accessed 2 April 2022.
Communications Law
Thanks for sharing, Funto! I wasn’t aware that other jurisdictions have patent renewal and restoration requirements until you mentioned it in class the other day.
I’d be curious to see some statistics on patent maintenance – ie. how many patentees allow their patents to lapse before 20 years are up, at what point in time patents are most often allowed to lapse, etc. (After a quick search online, I couldn’t find any readily-available, comprehensive data without submitting an FOI request to the UK’s IPO). Of course, the decision to renew will depend on the patent/patentee in question, and the perceived value of patent protection.
Although the renewal requirement creates an additional hurdle for patent holders, I think it’s consistent with the underlying goals of patent law – namely, to foster societal progress by having inventions enter the public domain. In contrast to copyright law, the focus of patent law is on the invention/work itself, rather than on the inventor/creator. Renewal requirements can serve as a way of expediting an invention’s entry into the public domain: where a patentee decides not to renew their patent, the invention will enter the public domain much faster than it otherwise would have (ie. anywhere from 5 to 19 years after the patent is granted, as opposed to 20).