A (very) rough guide to patenting your invention in the UK

What is a patent?

A patent is an exclusive right that is granted by a country’s patent office to work an invention in that country for a period of up to 20 years.

A UK patent can be obtained by filing an application directly at the UK patent office or by filing a European patent application.

What can be patented?

In the UK and Europe, an invention (either product or process) that is technical in nature can be patented.

Discoveries, scientific theories and mathematic methods are not considered to be inventions per se, but a practical application of these may be patentable.

Presented information, aesthetic creations, methods for performing mental acts, playing games or doing business, and computer programs, are also not considered to be inventions per se, but they may still have technical elements to them that may be patented.

Can I patent my product/process?

Products/processes can be patented if they are new and inventive.

To be new a product/process cannot have been publically described prior to the filing date of the patent application either by you or by anyone else.

To be inventive the product/process must have new features that would not have been obvious to use to someone in the relevant technical field of the invention.

How do I get patent rights?

Talk to us about your invention. We can advise on patentability, prepare and file a patent application, and prosecute the patent application through to grant.

Alternatively you may acquire or exclusively licence someone else’s patent. We can assist with due diligence in connection with this.

What is involved in the patent application process?

We can write a patent application and send it to you for approval. Once approved, the application can initially be filed at the UK patent office. On request, the UK patent office will search databases for existing documents that describe your invention. Then, on request, the UK patent office will examine your application to see if it meets the requirements for patentability. If the requirements are met, a patent will be granted for your invention.

How long does it take?

It typically takes around 3-4 years to obtain a direct UK patent.

Download a copy of our UK Patent Application Timeline

UK-Patent-flow-chart-thmb

Click to download a copy of our UK Patent Application Timeline

What does it cost?

It depends on the complexity of the invention and the nature of any objections that may be raised by the patent office.  It typically costs £4000-£6000 + VAT to obtain a UK patent. Annual renewal fees of a few hundred pounds each are then payable after grant.

Want to find out more?

If you would like to discuss your options in more details please contact us.

Looking after your trade mark

Congratulations – you’ve registered your trade mark!

Protect your IP when you trade overseas

Your trade mark

  • Protects your company’s name or logo
  • Gives you exclusive legal ownership of your brand name
  • Stops others using your registered trade mark
  • Gives you a valuable asset
  • Protects your domain name from those acting in bad faith
  • Ensures you are not infringing the registered rights of anyone else.
  • Allows you to protect the growing reputation and goodwill of your business
  • Stops others holding you to ransom.

Now what?

Depending on which territory you have registered your trade mark in, you will have a number of years during which your trade mark will continue to protect your brand.   Its protection should continue for as long as you continue to pay the maintenance fees.

But… you need to make sure you are using it correctly to prevent it being challenged and potentially revoked.

Use it or lose it

You can’t just register your trade mark and then do nothing with it.  It must be used within a 5 year period, and use may not stop for any continuous 5 year period, or it will be vulnerable to revocation.

For example, Lacoste have recently lost their crocodile trade mark in New Zealand after it was challenged by Crocodile International for lack of use.   http://www.nzherald.co.nz/business/news/article.cfm?c_id=3&objectid=11804566

Use your trade mark correctly

You should always use the trade mark in the form in which it is registered and for the goods or services for which it is registered.  Incorrect use can leave a trade mark vulnerable to cancellation by a third party.

Make sure it stands out

It is important that you make it clear that that it is a trade mark.  Failure to notify the public that your sign is a registered trade mark may affect your ability to claim full damages in an infringement action.

To make is stand out you can use…

  • Quotation Marks: “Sanderson & Co” trade mark attorneys.
  • Capital Letters: SANDERSON & CO trade mark attorneys.
  • Different Typeface: SANDERSON & CO trade mark attorneys.
  • Bold Print: SANDERSON & CO trade mark attorneys.
  • Colour: SANDERSON & CO trade mark attorneys.
  • Footnote: Place an asterisk next to the mark and then place at the end of the publication *trade mark.
  • Symbols: ® (if registered) or ™ (if not registered).

Generally, it is not necessary to mark every occurrence of a trademark or service mark in an article, press release, advertisement or on a website, etc;  but identification of the mark should occur at least once in each piece, either the first time the mark is used or with the most prominent use of the mark.   When in doubt it’s better to over mark it!

™ or ® – what’s the difference?

  • ™ can be used if you are claiming something is a trade mark
  • ® should only be used if you have REGISTERED it as a trade mark
  • It is an offence to use ® if it is not registered

Avoid Genericide

The term genericide refers to the way in which careless and incorrect use of a trade mark can lead to it becoming a generic term for the product that it describes.  This causes it to lose distinctiveness and therefore no longer be registerable.  eg ASPIRIN, ESCALATOR, KLEENEX, BAND-AID, YO-YO, THERMOS and WINDSURFER

To avoid genericide always use your trade mark as an adjective rather than a noun or verb.

E.g.  LEGO toy blocks or OREO cookies

Top tips for using your trade mark correctly…

Use it or lose it

Make sure the trade mark stands out in any materials

Use as an adjective NOT a noun

Use it as it is registered and for the goods or services for which it is registered

Monitor and act immediately on any misuse of the mark

Regularly review the protection you have to ensure it remains relevant for your evolving business

BREXIT – what happens to UK and EU Intellectual Property Rights…?

IP rights and BREXITWell in reality, it will be business as usual for at least the next 2 years.  During that period the Chartered Institute of Patent Attorneys (CIPA) and the Institute of Trade Mark Attorneys (ITMA) will work with the UK Government to negotiate for the best outcome for intellectual property rights holders.

Patents

  • NO CHANGE
  • The European patent system is independent of the EU, and so Brexit will have no effect on European patents or applications. The UK’s membership of the World International Property Organisation (WIPO) will also be unaffected.
  • UK patent attorneys will still be able to prosecute European patent applications for all UK and overseas clients.
  • European patent applicants will not lose any rights and patents already obtained via the European patent office are unaffected.
  • UK patent attorneys can still prosecute Patent Cooperation Treaty (PCT) patent applications – which provide protection in the applicant’s chosen countries – for all UK and overseas clients.
  • PCT patent applicants will not lose any rights.

 

Trade Marks & Registered EU Designs

  • NO IMMEDIATE CHANGES… There will be a negotiation period of at least two years before the UK leaves the EU – and that period will only start once the UK officially notifies the EU of its intention to leave, which may not happen straight away.
  • European Union Trade Marks (EUTMs) and Registered Community Designs (RCDs) will therefore still give protection in the UK until at least June 2018.
  • The Institute of Trade Mark Attorneys (ITMA), the UK’s Intellectual Property Office and the Minister for Intellectual Property will work to ensure the best possible outcome for owners of intellectual property rights and for practitioners in the UK.
  • They will also work to ensure the transition of all EU-based trade mark and design rights to UK-based protection to be simple and cost effective.

For further information, or to discuss the implications of Brexit on your UK and European Intellectual Property Rights, please contact James Sanderson or Jerry Walder on 01206 571187.

Protecting your Intellectual Property when trading overseas

Protect your IP when you trade overseasWhen you are considering trading internationally you need to make sure that you are protected against your invention being copied or your name, logo or brand being used inappropriately.

Protecting your intellectual property through the use of patents, trade marks and registered design rights defends you against other companies or individuals who may try to copy your goods or pass themselves off as your company.

Do your homework

It is important when looking to move into foreign markets to ensure that you will not be inadvertently infringing the existing rights of other companies within those markets. It is essential to do your research with robust intellectual property searches before embarking on costly and time consuming sales and marketing programmes.

Do I have rights in other countries?

Intellectual property rights are generally territorial. A granted patent or trade mark / design registration in the UK does not give you automatic rights for protection in another country.  You must have applied for and been granted a patent, trade mark or design registration in a particular country in order to have those rights in that country.

Protection within the EU

Having a UK patent, trade mark or registered design does not give you automatic protection within other EU countries. You can file individual applications in each country you would like to seek protection.  Alternatively, you can apply for a European patent or European Community trade mark or design registration.

A European patent application is a single application which if successful will result in a single European patent. To have effect, the granted European patent must then be validated in each European country where protection is required.  This incurs separate fees for each country.

A European Community trade mark or design registration covers all 29 countries of the EU.

Protecting your inventions outside the EU:

Separate patent applications can be filed in each country where you would like to seek protection. Alternatively you can file an International patent application.

There is no such thing as an International patent – only an International application. At a particular point in the process an International application must be converted into separate national applications in the countries of interest and the cost at this stage is comparable to filing separate national patent applications.  Each separate national application then proceeds in the same way as a standard national application.

An International application is ultimately more expensive than filing separate national applications but it gives you more time to decide on the particular countries where you wish to seek protection and also delays expenditure.

Protecting your trade marks outside the EU:

There is no such thing as a single worldwide trade mark registration.  There is an International trade mark application procedure known as the Madrid Protocol which allows a single application to cover a large number of different countries.

Under the Madrid Protocol there must be a ‘home’ trade mark registration or application, for example in the UK or the EU.  As such, you must first file a UK or EU application before you can use the Madrid Protocol system to cover other states.

Protecting your designs outside the EU:

Most countries require separate individual design applications to be filed in that country in order to obtain protection. There is no such thing as a single worldwide or ‘global’ design registration.  There is an International design application procedure known as the Hague Agreement but at present this covers only a limited number of countries.

Do I have to apply straight away in every country?

From the filing date of a first patent application, there begins a 12-month priority period within which further patent applications may be filed in other countries.  These further patent applications may then take the priority of the initial filing date which means that they will be considered as having been filed on the same date as the first application.

Following the filing of a first trade mark or design application there is a 6-month priority period within which design/trade mark applications (for the same design/trade mark) may be filed in other countries.  Those applications can then claim the initial “priority” date of the first application.

The priority period enables you to spread the costs and also allows you to assess the commercial viability of your product before deciding where you wish to seek protection.

Take some advice

Obtaining the most appropriate IP rights for you can be complicated. While much information and application forms are available through the UK Intellectual Property Office and the European registry (OHIM), a qualified patent or trade mark attorney will be able help you to develop an effective strategy for your IP protection and guide you through the process.

Sanderson & Co offer a free half hour consultation at our office in Colchester or London if you would like to discuss your options for international IP protection.

Caroline Ward

Caroline Ward

Contact us to discuss your options.

Caroline Ward
Sanderson & Co
tel: 01206 571187
sandco@sandersons.co.uk
www.sandersons.co.uk

How does IP help small companies grow?

Some companies think that investing in Intellectual Property isn’t right for them…. it’s something that the big boys do…  Wrong!  IP isn’t just for large companies with deep pockets.  UK SME’s file over 10x as many patents and trade mark applications as big companies.   The time and money that you have invested in your innovation and business should be protected by IP rights.

  • IP encourages investment in your company
  • IP protects against unsafe and counterfeit goods
  • Inventions that are protected by patents are valuable business assets
  • Registering your trade mark allows you to safely extend its business use
  • IP protects and supports innovation
  • Innovation promotes business growth
  • Profits from patented inventions attract reduced UK corporation tax through the Patent Box so you get to keep more of your profits to re-invest in business growth

Below is a short film from Ideas Matter – www.ideasmatter.com

IP By Numbers: Video from Ideas Matter on Vimeo

Contact Sanderson & Co to talk about how you can make the best use of IP rights.

Could you benefit from tax incentives for innovation?

research and development innovationsInnovation can be a powerful driving force for businesses, offering opportunities for growth and expansion.  For smaller organisations, taking the decision to invest in the necessary research and development can seem daunting, but the UK government offer a number of financial incentives to encourage investment and promote innovation.

Knowledge Transfer Partnerships

If you don’t have the expertise in-house, or feel you would benefit from some external academic knowledge and experience, you might like to consider a Knowledge Transfer Partnership (KTP).

A KTP is a partnership between your business and an academic institution (such as university, further education college or research and technology organisation), enabling you to access skills and expertise to help your business develop.  A KTP is part-funded by a Government grant with SME’s only expected to contribute about a third of the costs involved in a project.

KTPs can help business to:

  • find innovative solutions for business challenges
  • enhance your competitive advantage
  • expand market opportunities
  • generate a significant increase in profit
  • improve business performance
  • use graduates to accelerate innovation
  • get advice and support from experts

University of Essex Knowledge Transfer Partnerships

For more information visit http://www.ktponline.org.uk/

Enhanced Corporation Tax Relief for Research and Development

Enhanced Corporation Tax relief is available for expenditure on eligible Research and Development (R&D) activities.

For small and medium sized entities this relief can be as much as 225% of their expenditure on R&D, every £1 spent attracts tax relief of £2.25. For larger entities the relief reduces to 130%.

Eligible R&D activities are those that seek to achieve a scientific or technological advance and the qualifying costs include the following:

–          Employee costs relating to the R&D activities
–          Materials used for the purpose of the R&D
–          The cost of utilities used in the R&D activities

For more information visit the HMRC website at http://www.hmrc.gov.uk/ct/forms-rates/claims/randd.htm

Patent Box

Patent Box allows companies to apply a lower rate of Corporation Tax to profits earned from their patents. The relief is being phased in from April 2013 with the full benefit of 10% Corporation Tax being available from April 2017.

To qualify for Patent Box a company must have been involved with the development of the patent and must own or exclusively license them.

All granted UK and European patents qualify for Patent Box regardless of when they were granted, as well as patents from the following countries in the European Economic Area: Austria, Estonia, Hungary, Romania, Bulgaria, Finland, Poland, Slovakia, Czech Republic, Germany, Portugal, Sweden, Denmark

Qualifying income can arise from a number of sources including:

  • The sale of patented products or a product incorporating a patented invention including the sale of spare parts of such products even if the spare part itself is not patented.
  • Licence fees and royalties from a right granted over the patent.
  • Proceeds from the sale or exclusive licence of the patent.
  • Income received as compensation for patent infringement.
  • A notional royalty where a patented process or patented tool is used to generate profits that would not themselves qualify for the Patent Box relief.

For more information visit the HMRC website at http://www.hmrc.gov.uk/ct/forms-rates/claims/patent-box.htm

Could Patent Box work for you?

Previously companies may have felt that it was not worth the expense of applying for a patent, especially if the product was likely to have a relatively short life span.  With the total cost for securing a UK patent grant likely to be around £3000 to £3500, it may be that Patent Box allows the cost benefit calculations to swing back towards aquiring a patent.

Patent Box also shifts the focus of patent protection away from trying to establish as broad a protection for the product as possible: a more narrow focus can make it easier to get a granted patent while still allowing a company to make a claim using the Patent Box regime.

“Having a granted Patent is a prerequisite for anyone wishing to take advantage of the Patent Box scheme. However, potential users of the scheme need to bear in mind that a patent application must be filed before any public disclosure of the invention takes place. You cannot wait until you are sure you have a commercially successful product before deciding to patent it, in order to get the Patent Box tax breaks. So, SMEs will need to be pro-active in determining at an early stage in product development process, which inventions to patent.”
Jerry Walder – Partner

For more information and advice about how you could take advantage of the Patent Box scheme please contact Sanderson & Co.

 

The importance of protecting your brand or company name

The importance of trade mark strategyWhen starting a business, trade mark registration may not be the first thing on your mind. But, failing to protect your chosen brand or company name early enough could have huge implications for your business in the future.

This is graphically illustrated by the recent experiences of Pinterest, the social media website, who have lost the right to use its trade mark name in Europe.

In a globalised economy, particularly for online businesses where the aim is for your brand and company name to spread rapidly worldwide, it is vital that you take a strategic approach to IP protection for your brand or company name at an early stage.

Timing is everything…

Pinterestwas launched as a business in the US in 2010, but didn’t apply to register the word PINTEREST at the US Patent and Trademark Office (USPTO) until 1 March 2011.  The USPTO’s records show that Pinterest failed to supply the supporting documents required for the application to mature to registration, which resulted in the application initially being abandoned. The application was revived in January 2012, published for opposition in March 2012 and then approved for registration (in the US) in May 2012.

Unfortunately, on 31st January 2012 a London-based start up, Premium Interest Ltd., had applied for a European CTM trade mark for the word PINTEREST for use on its corporate website news feed.  Although the company has not yet started to use the mark, under European trade mark law, trade mark owners have five years from the date of registration to begin using the mark before a third party can initiate cancellation proceedings.

Pinterest brought opposition proceeding against the PINTEREST application citing the existence of PINTEREST as an unregistered trademark in the EU as a whole and in the UK in particular. The case for use in the EU was dismissed by OHIM due to lack of supporting evidence.

This means, in effect, that Pinterest cannot use its trademark in Europe without the prior consent of Premium Interest Ltd.

Premium Interest has now also applied to register the trademark PINTEREST in Australia, New Zealand, Brasil, Turkey, Malaysia, South Korea, India and Japan.   Even if Pinterest can successfully challenge the registrations in these other jurisdictions it will take many years and will be very costly.

Pinterest’s failure to secure its global trademark rights highlights the importance of implementing a strong trade mark policy as early as possible.

Expert advice can save you money in the long run

UK Trade marks can be straightforward to register, but, if you hope to, or already, operate in an international market, it is advisable to speak to a specialist trade mark attorney in order to ensure that your brand is protected correctly.

Sanderson & Co. offers full, world-wide trade mark searching and registration services at a competitive rate.   We can represent your interests to ensure your trade marks are protected and take action if your rights are infringed.

If you would like information on trade marks, please contact one of our attorneys.