0191 499 8 499 info@archer-ip.co.uk

Use IP law to protect how things work with a Patent

A patent is a deal between the inventor and the state.  When an inventor registers their invention with the state (at the Patent Office) by explaining how it works the inventor will have 20 years exclusive use of their invention.

For a product a patent protects the function, it does not matter what it looks like.  Ifa competitor’s product functions in the same way as the inventors patent defines, it will be regarded as an infringement and can be stopped.

A patent can protect products and processes and this can involve software, hardware and machine processes as long as they are all new and involve an inventive step.

The patent must be filed before public disclosure or the patent will be invalid and unenforceable.

We would recommend that you file in the UK first and if protection overseas is needed you can file outside the UK up to 12 months later.

We can file applications in the UK, Europe and the US and have associations with legal firms in territories both in and beyond Europe. The International filing systems we use can significantly reduce the cost of filing overseas.

A patented invention will be protected for 20 years, if you pay the annual renewal fees.

Patents protect all inventions, both big and small. But your budget should be appropriate to the benefit of the patent to your business and this is a calculation that should be made early on in the process.

Patents can be fast tracked so the process time is reduced to less than a year but there are cash flow implications associated with this approach. If the filing of the patent progresses at the standard rate it may take 3 or 4 years, or even longer during which time the innovation would remain patent pending. However, patent applications are published after 18 months.

Patents – The Process

Review & Advice

We are happy to discuss any new invention at a half-hour meeting free of charge to work out whether an invention can be and is worth protecting.

Brief / Search / Report

Before filing a patent application it is important to know what similar products or methods are likely to be cited against your application (particularly if you are working in a field in which you have limited experience or moving into a new field). 

A novelty search will find some of the most relevant documents giving a good indication of whether it is worth filing a patent application. This will help us get an idea of the scope of protection you might ultimately get and provide a starting point for preparing the application.  It is not definitive search telling you that you will or will not get a patent but it offers a useful indication of likely outcomes and we can weed out unpatentable inventions. 

Straight UK filing giving an initial 1 years security

To get the application process started an application can be filed at the UK IPO.  The cost of preparing and filing a new UK application to obtain one year’s patent pending protection but not paying any fees or engaging with the UK IPO in the application process, is typically £3000 to 5000 plus VAT.

Straight UK filing as above plus Search and Examination

If you would like your application processed quickly the UK IPO allows you to request search and examination immediately on filing and this costs £600 plus VAT on top of the cost of preparing and filing the application as set out above. 

Requesting search and examination immediately is useful firstly to see what the UK IPO makes of the application, if they are likely to grant it this is a useful indicator of likely outcomes at other patent offices. 

Secondly, if the application is processed quickly and goes through to grant (which can take less than 12 months) this can be particularly useful if you are looking to attract investment in relation to the invention. By getting the UK patent granted quickly, this proves to potential investors you have a real invention and allows applications in other countries to run along at a slower and more normal rate taking a few years to proceed to grant, thereby spreading the cost over those years. 

Thirdly, the sooner a UK patent is granted, the sooner you can claim UK Corporation Tax relief via the Patent Box. 

Responding to UK Search & Examination

If Search and Examination are requested on filing an Examination report is likely to be produced around six months later. Generally the Examination report will site prior art documents that the Examiner has found and which may limit the protection you can obtain. 

In order to get a patent granted it is necessary to respond to the examination report.  We offer a fixed-price response which is often sufficient to get the application through to being granted (assuming the Examiner does not search out more documents).  Cost £500 to £2000 plus VAT.

International Patent Protection

To protect your invention outside the UK the most efficient system to use is to file an International (PCT) application.  This will keep your application pending in over 150 countries for up to 2½ years after the first UK application was filed.  After these 2½ years it is necessary to pursue the application at each patent office in each country you wish to get a patent.  The International application is particularly useful for deferring the time at which you have to decide where to pursue the application, this can be for up to 2½ years.  The cost of filing an international application is around £4000 plus VAT.

PATENT TIMELINE

To help you understand how IP law works this Patent filing flowchart maps the Patent filing process so you can see the order of activity and the options that are available as part of the filing process.

Major savings in corporation tax using the tax saving government initiative Patent Box

In our experience every company involved in innovation should review their inventions whether patented or not to explore the potential use of Patent Box to generate major savings in Corporation Tax.

Patent box is a government scheme that enables UK companies benefit from Tax incentives designed to support patented innovation. 

Under this scheme a UK company can reduce their Corporation Tax bill in respect of profits relating to inventions protected by a UK patent or other qualifying European patents.

Patent Box savings relate to worldwide qualifying profits on patented inventions.  This can reduce your company’s Corporation Tax rate to just 10% on profits from patented items, patent royalties from licensing, sales of patents, sales of products which incorporate a patented element, sales of products made using patented processes and profits from the operation of patent to process. This can include income from existing as well as new IP rights.

Companies claiming the reduction in Corporation Tax must have in some way contributed to the development of the invention as well as own the patent or be an exclusive licensee.

If you already hold IP rights relating to the products you sell it is well worth reviewing your portfolio with an eye to identifying a new patent development that could be covered under Patent Box.

If you do not yet have any patents but you have been responsible for innovations that could potentially be categorised as a patented invention, it would be worthwhile talking to us so that we can help you assess the Patent Box potential of your invention.

The patent box tax relief applies to companies that hold existing patents, not just those filing new patents.