UK Law and Practice Contributed by: Nicola Dagg, Jin Ooi, Ray Cheng and Nevyn Fournel, Kirkland & Ellis
1. Intellectual Property Rights and Granting Procedure 1.1 Types of Intellectual Property Rights Under UK law, inventions are protected through patents. There is no protection granted by way of design patents, and registered design rights must not be used to protect a feature that is purely technical in nature. The legal protection from patents is primarily governed by statute (the Patents Act 1977), but the statute is interpreted by judges such that the case law will inform the likelihood of an invention being afforded protection. 1.2 Grant Procedure To obtain a patent in the UK, an applicant may complete the relevant paperwork and formalities (including filing the claims, description and full text of the patent) and apply directly to the UK Intellectual Property Office (the “UK IPO”). As the UK is a member of the European Patent Con- vention (EPC), a prospective patent holder may also apply to the European Patent Office (EPO) for the grant of a European Patent designating the UK amongst the states in which the Euro- pean Patent should be granted. Later, once that European Patent has been granted, the patentee should apply to the UK IPO and complete the formal registration step. Patentees should note that applications filed with the EPO in English must also be translated into French and German. It is also possible to first file an international pat- ent application (PCT) via the UK IPO, which will be provided to the World Intellectual Property Organisation (WIPO) for processing. The EPO is involved in granting a PCT, acting in the capacity of an International Search Authority. Following publication of the application, the prospective patentee must then apply in the jurisdictions in
which it would like the patent to be considered for grant and ultimately effective. 1.3 Timeline for Grant Procedure The timeline to grant varies. Patents filed with the EPO typically take four years or more to be granted. Applicants may request an accelerated examination in the EPO, which is subject to the EPO’s discretion and may only be accepted where practically feasible. Patents filed with the UK IPO can take between two-and-a-half and four-and-a-half years to be granted, although the time to grant can be significantly less. Any third-party observations made during the course of the grant procedure will inevitably delay the grant as the Patent Office will consider these objections. In most cases, representation is not required, but given the specialised nature of drafting a pat- ent application, patent agents are used in most instances. If the applicant has neither residence nor their principal place of business in an EPO contracting state, the applicant must appoint a representative. The costs associated with granting intellectual property rights vary depending on the type of rights and any representation retained. A rough estimate for filing a patent application ranges from GBP4,000 to GBP7,500. Additionally, the costs for filing a patent with the UK Intellectu- al Property Office (UK IPO) are approximately GBP300 to GBP350, depending on the number of claims and the patent length. 1.4 Term of Each Intellectual Property Right The term of a patent is 20 years from the filing date. The term can be extended for up to five additional years by Supplementary Protection
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