UK Patent Law

Introduction

Patent law in the United Kingdom is governed by the Patents Act 1977 (PA 1977), which provides a statutory framework for the grant and protection of patents. The Act implements the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT), ensuring that UK patent law is harmonised with the patent systems of other major jurisdictions. The UK Intellectual Property Office (UKIPO) is responsible for the examination and grant of patents, and the Patents Court of the High Court and the Court of Appeal handle patent litigation.

Patentability

Section 1 of the PA 1977 sets out the requirements for patentability. An invention is patentable if it is new, involves an inventive step, is capable of industrial application, and is not excluded from patentability.

Novelty requires that the invention not form part of the state of the art at the priority date. The state of the art includes everything made available to the public anywhere in the world by written or oral description, by use, or in any other way, before the priority date. The test for novelty is strict: any prior disclosure of the invention prevents a patent from being granted.

Inventive step requires that the invention not be obvious to a person skilled in the art, having regard to the state of the art at the priority date. The test for inventive step was established by the Court of Appeal in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd (1985) and refined in Pozzoli SpA v BDMO SA (2007). The court identifies the inventive concept of the claim, identifies the differences between the prior art and the claim, and determines whether those differences would have been obvious to a person skilled in the art, considering any secondary evidence of inventiveness.

Industrial application requires that the invention be capable of being made or used in any kind of industry, including agriculture.

Excluded Subject Matter

Section 1(2) of the PA 1977 excludes certain subject matter from patentability, including: a discovery, scientific theory, or mathematical method; a literary, dramatic, musical, or artistic work; a scheme, rule, or method for performing a mental act, playing a game, or doing business; a program for a computer; and the presentation of information. These exclusions apply only to the extent that the patent relates to the excluded subject matter as such.

The excluded categories have been the subject of extensive litigation. In Aerotel Ltd v Telco Holdings Ltd (2006), the Court of Appeal adopted a four-step test for determining whether an invention is excluded: properly construe the claim; identify the actual contribution; ask whether the contribution falls solely within excluded subject matter; and check whether the contribution is technical in nature.

Patent Infringement

Section 60 of the PA 1977 defines patent infringement. A person infringes a patent if, while the patent is in force and without the consent of the proprietor, they: make, dispose of, offer to dispose of, use, or import the patented product; keep the patented product whether for disposal or otherwise; use or offer to use a patented process; or dispose of, offer to dispose of, use, or import any product obtained directly by means of a patented process.

Contributory infringement under section 60(2) applies where a person supplies or offers to supply a person not entitled to work the invention with any of the means essential for working the invention, knowing or having reason to know that those means are suitable for putting the invention into effect.

The UKIPO

The UK Intellectual Property Office (UKIPO) is the government body responsible for granting patents in the United Kingdom. The patent application process involves: filing the application; a preliminary examination and search; publication of the application; a substantive examination; grant; and post-grant opposition.

The application must include a description of the invention, claims defining the scope of protection, any drawings necessary to understand the invention, and an abstract. The claims define the legal scope of the patent, and their interpretation is a matter for the court.

European Patent Validation

The UK is a member of the European Patent Convention (EPC) , enabling applicants to apply for a European patent through the European Patent Office (EPO). A European patent may be validated in the UK, where it has the same effect as a UK national patent. The UK has not ratified the Unified Patent Court (UPC) Agreement and does not participate in the Unitary Patent system.

Amendment and Revocation

A patent may be amended after grant with the approval of the UKIPO or the court. Amendment is limited and cannot extend the protection conferred by the patent. A patent may be revoked on the grounds set out in section 72 of the PA 1977, including: the invention is not patentable; the patent was granted to a person not entitled to it; the specification does not disclose the invention adequately; the matter disclosed extends beyond the original application; or the protection conferred has been extended by amendment.

Conclusion

UK patent law under the Patents Act 1977 provides a robust framework for the protection of inventions. The requirements for patentability, the exclusions, the infringement provisions, and the role of the UKIPO and the courts in granting, enforcing, and revoking patents ensure that the patent system balances the interests of inventors, competitors, and the public.