IP Cases & Commentary – Details
25 March 2010
What are the Requirements for Filing a Patent Application?
Cathrine McGowan and Simon O'Brien
The requirements for filing a patent application are illustrated in this article with reference to the filing of a patent application in the United Kingdom (UK).
What do I need to file a patent application?
If you want to obtain patent protection for an invention in the UK, you can file a patent application at the United Kingdom Intellectual Property Office (UKIPO). Your application will consist of:
- A request for the grant of a patent: the UKIPO publishes a special form for the request (Patents Form 1), use of which ensures that the proper information is provided. This includes the name and address of the patent applicant, who may be a company or an individual. Applications can be jointly filed in two or more names.
- A specification: this is a document describing your invention. It includes a written description, claims and possibly drawings. Preparing a specification which will give you a robust granted patent is a skilled task, so applicants typically employ a patent attorney for this.
How should my application be drafted? Should the application include examples of my invention?
The written description of your invention should be sufficiently clear, complete and detailed to enable a person skilled in the relevant technical field to work the invention. If there are different variants and examples of the invention, these should be described. The description usually begins with a summary of what is already known in the technical area of the invention, followed by the description of the invention and the advantages it offers or problems it solves. You also need a title which indicates the subject matter of the invention, and an abstract, which is a brief summary of the invention. If you keep the description concise, this will reduce costs for translating the application if it is later filed abroad. You can use English or Welsh for the description for filing at the UKIPO. If you need to use another language, the UKIPO will ask for a translation into English or Welsh.
What are claims?
The claims are a set of statements which follow the description, and define the protection you want for your invention. There should be an “independent” claim, which sets out the combination of features that defines the invention in its broadest form and distinguishes the invention from what is already known. The independent claim can be followed by “dependent” claims, which include all the features of the independent claim, plus one or more extra features. Independent claims in different categories of invention (apparatus, product, substance, method, process, etc.) can be included in one application. However, within one application, the claims should relate to just one invention or inventive concept.
Do I need drawings or figures in my patent application?
Drawings can be used to supplement the description if appropriate. These might include line drawings, representative figures and cross-sectional diagrams of products, devices and apparatus, flow charts of methods and computer programs, graphs, diagrams of chemical structures, and the like. Parts shown in figures are typically labelled with reference characters which are used in the description when referring to those parts. The drawings should be grouped together after the claims, and the description should include a list of the individual figures.
Is there a fee for filing a patent application?
The UKIPO charges a small application fee. This can be paid when the application is filed, or later. The fee does not need to be paid to obtain a filing date for the application. Further fees are payable for the application to be searched and examined, but these can also be paid after filing.
Must I disclose who invented my invention?
It is a legal requirement to identify the inventor(s) of the invention described in a patent application. The UKIPO publishes a form for this (Patents Form 7).
Are biological deposits required for biological inventions?
The patent application must disclose the invention in sufficient detail for a person skilled in the relevant technical field to carry out that claimed invention. If an invention involves the use of or concerns biological material which is not available to the public the invention shall only be regarded as being disclosed if a sample of the biological material has been deposited with a recognised depositary institution.
Where and how should biological deposits be submitted?
The biological sample must be submitted to a depositary institution which carries out the function of receiving, storing and furnishing biological material. Using a depository institution recognised under the Budapest Treaty eliminates the need to make a deposit in each country in which patent protection is sought. A list of such depository institutions can be found here.
Are nucleotide/amino acid sequences required in the patent application?
A patent application relating to a polynucleotide or polypeptide should contain the sequence of the polynucleotide or polypeptide in the specification.
How should nucleotide and amino acid sequences be submitted?
Nucleotide and amino acids sequences must be listed in a sequence listing which complies with the requirements and standards adopted under the Patent Cooperation Treaty for the presentation of sequence listings in patent applications. A further copy of the sequence listing in electronic form is required.
Do I need a patent attorney to file my patent application?
No. Applicants can file their own applications at the UKIPO. However, you can appoint a patent attorney to represent you if you wish. The attorney can file the application on your behalf, or you can appoint one later.
How do I file my application?
The UKIPO accepts applications filed on paper or digital media and delivered by mail, facsimile or by hand to its premises in Newport (Wales) or London. You can also file on-line through the UKIPO’s website. Electronic filing using special software is available for registered users. The forms, details of current fees, and instructions for filing applications can be found at the UKIPO’s website.
Can I file my application abroad?
For a UK resident, if the invention contains information relating to matter that is related to matters of defence or national security, a first application must be filed at the UKIPO. Other national requirements can apply for inventions made in countries or for inventors or applicants resident in other countries.
Subject to the considerations as to where a first application must be filed, a patent application can be filed at patent offices around the world to obtain patent protection in other countries. The European Patent Office accepts applications which can cover over 30 European countries. The World Intellectual Property Organisation administers the Patent Cooperation Treaty, which streamlines the initial application process for many countries. In both cases, the requirements for a patent application are very similar to those for the UK. However, the filing, search and examination fees are much higher, reflecting the larger number of countries involved.
Filing an application directly with a national patent office is also possible, to obtain patent protection in that country only. Requirements for new applications vary according to local law. D Young & Co can prepare a single specification that is suitable for use in many countries, subject to any translation requirements.