A guide to how patent law works

Patent law is essential to enabling organisations to be able to gain protection for the innovations that they develop.

The result of the latest dispute between Apple and Samsung has highlighted the importance of intellectual property and patent law when taking products to market.

According to the BBC, the dispute between the two technology giants began back in 2011 when Apple argued that Samsung had infringed patents associated with the iPhone. A year later, Apple was awarded $1.05 billion in damages and Samsung has fought against the ruling ever since.

In the latest verdict, a damages payment of $539 million was awarded to Apple for the infringement of the design patents and two patented functions.

Samsung has stated that they should only have to pay Apple $28 million because they believe that the sum should be limited to profits directly related to the components or features covered by the patents. Apple argued for the much larger figure calculated on the profits made from an entire iPhone. While the latter has been awarded a damages claim it is less than a quarter of the sum of $2.5 billion that they originally asked for.

Patent law is crucial in protecting the futures of products and inventions to ensure that their profitability is only enjoyed by those that developed them.

What is a patent?

A patent is granted by the government and enables an inventor to have the right to restrict others, for a stated time period, from making, using or selling an invention without permission. Not everything is patentable. For an invention to be eligible for protection it must be new. It must not have been made public in any way before the application is filed. It must also be considered “inventive” it cannot just be a basic modification of something that already exists. An invention also needs to be able to be used by some kind of industry to be issued with protection.

Some inventions are not patentable. For example, if it is a scientific theory or mathematical method it cannot be issued with a patent. Aesthetic creations such as literary, dramatic or artistic works are also not eligible for protection. Before beginning the process of registering your invention it is advisable to ascertain whether it fits with the eligibility criteria.

What kinds of patents are there?

There are two systems which may grant a patent that cover the UK: the national system and the European system. Each of the systems can be preceded by an application made under the international system.

A patent application made under the national system is made to the UK Intellectual Property Office (IPO). Any natural or legal person may make an application in the UK, as long as they are the inventor or entitled to the property in it.

An application made under the European system is made to the European Patent Office (EPO). It enables the centralised application, prosecution and grant of patents. It’s an easier and cheaper alternative than filing individual applications if you want protection in multiple countries that are part of the European Patent Convention (EPC).

What are the steps to obtaining a patent?

When applying under the national system, the first step to obtaining protection for an invention is to file an application which then provides a date of filing. The application will need to include a written description of the invention, any drawings and (optionally at filing, but needed within 12 months) claims and an abstract.

If the requirements are met and the fees are paid, the application process will then include a preliminary examination, grant and publication. The protection will be for a term of 20 years from the date of filing the application as long as the renewal fees are paid.

The fees to be paid to the UK Intellectual Property Office for processing the application are usually around £300-400, in addition to any professional services costs.

How do you maintain a patent?

After the fourth anniversary of filing, the patent will need to be renewed annually. Renewal fees are payable on the last day of the month in which the application was originally filed and increase each year. If a renewal fee is not paid within the stated period the patent will lapse.

However, if the renewal fee and late payment fee are paid within 6 months of the due date, the patent would be viewed as though it had never expired. If 6 months has passed from the renewal date, the only way to restore protection is through making an application to the Comptroller. The Comptroller will reinstate protection if they are satisfied that the failure to pay was unintentional.

What protection does a patent provide?

If a third party’s actions infringe (or would infringe) a patent, the court will award relief to counter the statutory tort of infringement. It’s important to note that the patent’s mere existence does not entitle the proprietor (owner) to relief. Relief is awarded by the order of the court when an infringement (or threatened infringement) is found that enables the need to protect the monopoly that has been granted.

How can a patent be infringed?

In the UK, there are a number of ways in which a patent can be infringed and therefore enable the proprietor to make an application to court.

If the invention is a product then it is an infringement to make, dispose of, offer to dispose of, use, import or keep it without the consent of the proprietor.

If the invention is a process then it would be an infringement to use or offer it for use in the UK without the consent of the proprietor. It would also be an infringement to dispose of, use or import any product that is obtained directly through that process or to keep such a product for disposal or otherwise.

Why are patents needed?

As seen in the Apple vs. Samsung case, patents are essential to protecting your intellectual property. The protection offered enables you to pursue legal action when your product or innovation has been taken advantage of without your consent. It will ensure that you have the right to pursue any profit that you may have lost through your intellectual property being misused.

Our Insights and Resources are recommended for businesses considering the application process for patent protection. We will update you regularly with information from our legal experts on patent law, as well as other sectors and services you may be interested in.