Patents

Applying for Patents

28 Aug 2005

This article introduces some of the excellent materials that are already published on the internet by the Patent Office, European Patent Office ("EPO"), World Intellectual Property Organization ("WIPO"), British Library and Chartered Institute of Patent Agents ("CIPA"). It also addresses some of the issues that applicants should consider when seeking patent protection. It is not intended, however, to be a guide in itself.

Need for Professional Advice
The first point to stress is that this is not a straightforward area of the law. Though professional representation is not compulsory, it is strongly recommended. The obvious source of such assistance is a patent agent. A local patent agent can be found from the Directory of Patent Attorneys on the CIPA website.

If there is a hearing, either before a Patent Office tribunal or the court, a specialist advocate may be required. Patent agents frequently argue cases before courts and tribunals and most do it well. But they are not specialist advocates and have no training or experience of the general law. For complex or tricky cases it often pays to instruct patent counsel or a solicitor with substantial experience of intellectual property advocacy.

National, EPO or PCT Application
Unless the application originates overseas, one of the first issues for an applicant to consider is whether

	protection is required for the UK alone,
	the UK and one or more other countries in Europe, or
	the UK and one or more other countries outside Europe.

Applying for a Patent
Applications for a British patent are made to the Patent Office and applications for a European patent designating the UK (a "European patent (UK)") to the European Patent Office ("EPO"). Applications for patent protection outside Europe may be made to the Patent Office, EPO or the International Bureau ("WIPO").

Applications for the UK alone

The application procedure is summarized in "How to apply for a patent" on the Patent Office website. This page gives advice on confidentiality, when to file, funding bodies, forms and information. Various leaflets can be downloaded from the "Downloadable Information" page. A good one to start with is "Patents Essential Reading". There is an abundance of useful material on the British Library Patents, Trade Marks and Designs Page. That page leads to the Library's catalogues, clinics and search services, FAQs and links to many other useful sites. Probably the best starting point is "How do you patent an invention?"

Applications for the UK and one or more other European Countries

All the member states of the EC plus half a dozen others are party to the EPC including such important countries as Switzerland and Turkey. Applications may be made for patents for any one or more of those contracting parties. As the substantive law is very much the same as in the UK, much of the Patent Office information mentioned above applies equally to European patents. However, there are a few other good introductions. The first is "The European route" guide on the Patent Office website. More detail is available in the Guide for Applicants in the Tool Box for Applicants on the EPO website. Yet another good introduction is the IPR Helpdesk guide to European patents discussed elsewhere.

Applications for the UK and one or more countries outside Europe

HM government is party to the Patents Co-operation Treaty ("PCT"), an international agreement that permits requests for patents for more than one country to be made by a single application. A good starting point for UK applicants is the "International patent protection" page of the Patents Office website which links to the "International route" page describing the PCT process in more detail. There is further information on the "About Patents" and "PCT Resources on the WIPO website.

Further Information

The British Library is part of PATLIB, a Pan-European network of patent libraries containing technical and legal information. Although it has the best resources in the UK there are other valuable collections in most large towns and cities. In the North there are PATLIB libraries in Leeds, Liverpool, Manchester, Newcastle and Sheffield.

Patent Clinics

Several of these libraries host clinics staffed by local lawyers and patent agents where more specific advice can be obtained free of charge. Similar services are available in Blackburn, Huddersfield and York.

Inventors' Groups

The Liverpool and Manchester libraries are collaborating with IdeasNW (a Blackburn inventors' group) to hold regular talks for inventors in their cities as well as in Blackburn. The Leeds Inventors' Group, a similar group, already meets at 18:00 on the third Wednesday of every month (except August and December) at Leeds Central Library. IP workshops are held at the Media Centre in Huddersfield between 11:00 and 13:00 on the last Friday of every month except August and December. Further information is available from the HIP (Huddersfield Intellectual Property) website or from our chambers manager, Ms Toni Wilson, on +44 (0)870 990 5081.