How to apply for a patent

Making the application

An application for a patent to be registered in Great Britain is made by completing form 1, which can be obtained from the Intellectual Property Office or down loaded from their website.

The application should include a full description of the invention to which the application relates, including any drawings, and should include a set of claims defining the invention and a short abstract summarising the technical features of the invention.

Once form 1 has been completed it should be sent to the Intellectual Property Office, together with the application fee and form FS2 (the “fee sheet” which can also be obtained from the Intellectual Property Office or downloaded from their website).

The claims, abstract, application and search fee must be sent to the Intellectual Property Office within 12 months of the date upon which the application is received by the Intellectual Property Office or the priority date.

A “request for search” should also be sent to the Intellectual Property Office. This can be sent with the application or within 12 months of the date upon which the application was received by the Intellectual Property Office or the priority date. A “request for search” is made by completing and sending to the Intellectual Property Office form 9A, the claims and abstract and the search fee. Form 9A can be obtained from the Intellectual Property Office or downloaded from their website and up to date information as to the fee payable and how payment can be made can be obtained from the Intellectual Property Office or found on their website.

If the applicant is not the inventor or if there is more than one inventor or if the inventor is a company, the applicant must also send a “statement of inventorship” to the Intellectual Property Office. This is done by sending form 7 to the Intellectual Property Office and by the applicant explaining the ground upon which they have the right to apply for the patent. Form 7 can be sent to the Intellectual Property Office by post or electronically via their website. It should be sent within 16 months of the date upon which the Intellectual Property Office received the application or the priority date if the applicant is claiming priority from an earlier application. Form 7 can be obtained from the Intellectual Property Office or downloaded from their website.

Form 1, the application fee, form FS2 and any accompanying documents can normally be sent to the Intellectual Property Office by post or electronically via its website. However, if the application contains information which if published may be prejudicial to national security or public safety the application must be hand delivered to the Intellectual Property Office during opening hours and marked for the attention of Room GR70.

The application fee varies depending upon how the application is made (there is a discount for applications made on line). Up to date information on the fees payable and how payment can be made can be obtained from the Intellectual Property Office or found on their website.

Acknowledgment of the application

Once an application has been made the Intellectual Property Office will acknowledge receipt of the application and will confirm the date upon which the application was received and will provide the applicant with an application number. This will done within 3 days of receipt of the application.

Checking the application

The Intellectual Property Office will then check the application against published patents and documents in order to establish whether the invention is new and inventive and check that the application is in order.

The Intellectual Property Office will also carry out a “security check”, the purpose of which is to ascertain whether an application contains any information which if published, would be prejudicial to national security or the safety of the public.

Publication of the application

If the Intellectual Property Office is satisfied that the application meets its requirements it will then publish the application in the Patents Journal just after 18 months from the date upon which the application was received or the priority date.

Other parties can make observations to the Intellectual Property Office in relation to an application once it has been published. Any such observations should be made within 3 months of the date upon which the application was published.

Substantive examination

If an applicant wishes to proceed with its application it must request “substantive examination” within 6 months of publication of the application. This is done by the applicant completing and sending to the Intellectual Property Office (by post or electronically via their website) form 10 together with a fee.

Form 10 can be obtained from the Intellectual Property Office or can be downloaded from their website and up to date information on the fee payable and how payment can be made can be obtained from the Intellectual Property Office or found on their website.

The “substantive examination” process involves the Intellectual Property Office considering the application in great detail and can take up to 4 ½ years. It is, however, possible to accelerate the process and to obtain a patent in less than a year.

During this process the Intellectual Property Office will consider the following matters:

  • whether the application claims an invention that the Intellectual Property Office can grant a patent for;

  • whether the invention to which the application relates is new and not obvious;

  • whether the description of the invention is sufficiently detailed and clear to be made or carried out by a person who has good knowledge of the technical area to which the application relates;

  • whether the claims of the invention are clear and agree with the description contained in the application.

The Intellectual Property Office will inform the applicant of any problems with the application and allow the applicant to make representations in relation to any problems raised.

Granting a patent

If an application is successful the Intellectual Property Office will grant the applicant a patent, will publish it in its final form and send the applicant a certificate.

Other parties can make objections to the grant of the patent at that stage. The time limit for making an objection varies.