WIPR Annual 2020 Business Brief: UK
Patents
How are patent rights registered or secured?
National applications are filed at the UK Intellectual Property Office (IPO). European patents filed at the European Patent Office (EPO) can be validated in the UK.
The UK and the EPO are members of the Patent Cooperation Treaty, which allows applicants seeking patent protection internationally to consolidate their applications in one initial filing.
Information on existing patents can be found on the IPO patent register, the EPO patent register and the Espacenet patent database.
What are the costs of obtaining a patent, and the costs of defending it?
A typical UK patent may cost £5,000 to £10,000 ($6,200 to $12,400) for drafting and filing dependent on subject matter. Costs for prosecution through to grant are dependent on the nature of the objections raised by the IPO.
Actions for infringement may be brought before the Patents Court or the Intellectual Property Enterprise Court (IPEC) (for claims below £500,000). Hearings in both courts are before a single judge without a jury.
A High Court action may cost £175,000 to £350,000 for a full trial. Costs are awarded to the successful party, but recovery is limited to costs that are proved to be proportionate to the value of the case. A special small claims track is available at IPEC for claims with a value up to £10,000.
Is there anything unusual about the UK’s patent law that companies should be aware of, and what are the most common mistakes businesses make?
Publicly disclosing an invention before filing an application is likely to invalidate it.
Businesses should ensure that inventorship and ownership of inventions are properly determined, with execution of assignments if required, before filing in order to avoid disputes or difficulties with formalities later.
Unjustified threats to bring infringement proceedings in respect of certain acts can be actionable in the UK.
Trademarks
How are trademark rights registered or secured and what protection do they grant?
By filing a trademark application at the IPO, or an international trademark at the World Intellectual Property Organization designating the UK. A registration gives the owner the exclusive right to use the mark for the goods/services applied for.
