Patent briefing papers:
Regulated by IPReg | Registered in England & Wales No: 07491607
© Hutchinson IP Ltd, 2012
UK and European patent law bars inventions that relate, at their core, to abstract
ideas, such as business methods, games, software, mental acts, artistic creations,
etc. It should be noted, however, that the patentability bars differ from country
to country, so whilst an idea may be unpatentable in the UK or Europe, this does
not necessarily rule-
In addition, whilst the UKIPO and EPO have very similar patentability requirements, the implementation of the UK Patents Act is somewhat different to the corresponding European Patent Convention, making it possible, in certain circumstances, for an application to be refused in the UK, bit for an identical European application to be allowable: a European patent being legally enforceable in the UK in exactly the same way as a "direct" UK patent. As such, even though the grant of a UK or European patent may be precluded, there may be scope for obtaining patents that are legally enforceable in other countries or via different routes.
As such, it is sometimes possible that an invention may be inherently unpatentable, in other words, the prospects of prosecuting the application to grant in a commercially useful form, are slim. So, what should the Applicant do if/when such a situation arises?
The first thing to note is the fact that when a patent application has been filed,
the applicant is able, and indeed recommended, to market the product to which the
application relates as a "patent pending" product. This alone can provide a useful
commercial advantage because it may deter would-
Once filed, it is possible to keep a UK patent application pending for up to 4 ½
years from its filing date, provided all the necessary steps are taken to keep the
application "alive", that is to say, the Examination fees are paid, responses are
timely filed, and so forth. As such a UK patent application can remain "pending"
until it reaches the 4 ½ year cut-
Whilst a merely pending patent application does not confer any right on the Applicant
to sue for infringement, the publication of an application confers "provisional protection"
as of its publication date. The provisional protection effectively allows patentees
to make a backdated claim for damages should the patent eventually grant, and be
infringed. As a competitor wishing to copy a "patent pending" technology, this muddies
the waters considerably because until such time as the application is either granted
or refused, its scope is uncertain (the Applicant is allowed to amend the scope of
his claims, within the ambit of the application as filed, until such time as it is
granted or refused), which prevents the competitor from obtaining any degree of certainty
about his/her potential liability for infringement. Indeed, it is a well-
If you put yourself in the shoes of a competitor wanting to go to market with a potentially infringing product, you quickly realise the value of an "uncertain" patent application. At the very least, the competitor will need to spend a significant amount of money seeking a patent attorney's and/or counsel's opinion on the likelihood of 1) a patent ever granting in a valid and enforceable state, and 2) infringement should the application ever mature into a granted patent. Even so, the competitor will have no way to be certain whether what he/she plans to do may land him/her in hot water at a later date!
With that in mind, you can easily see the benefit of keeping a patent application
pending for as long as possible. A good way to extend the period of uncertainty
is to file an international patent application under the Patent Cooperation Treaty
(PCT). A PCT application is essentially a single patent application that is equivalent
to a bundle of national applications in over 140 countries. By default, the PCT
application "buys time" because it remains pending for 30+ months (depending on the
countries concerned). At the 30-
The prosecution of a European patents can be quite slow, sometimes taking from 4-
All the time that there is a pending application in place, the Applicant can create
uncertainty in the marketplace, which may be all that is needed to gain a competitive
edge by being first-
This briefing paper is for information only and is intended to provide a basic overview of some of the procedures and options available. It is not legal advice, and should not be relied upon as such because the facts of each specific case will determine what is possible and where. For more information, please contact us.
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