Jane Lambert

22 Jan 2017

A patent is a monopoly of a new invention.  It the invention is a product, a patent confers on the person to whom it is granted (known as "the patentee") the right to stop others from making, disposing of, offering to dispose of, using or importing the product or keeping the product whether for disposal or otherwise. If the invention is a process, a patent confers the right to stop others from using the process.  It also includes the right to prevent them from offering the process for use in the knowledge (or where it is obvious) that the invention's use without the patentee's consent would infringe the patent. Finally, a patent for a process includes the right to stop others from disposing of, offering to dispose of, using or importing any product obtained directly from t the use of the patented process or keeping such product whether for disposal or otherwise.

Patents are territorial. They are granted for defined territories.  In most cases, those territories are countries but there are some countries, such as the member states of the Gulf Cooperation Council, that grant patents for their combined territories and others, such as China, where there are patents for certain regions (like the Special Administrative Region of Hong Kong) and other patents for the rest of the country. There is, as yet, no such thing as a "world patent" though the term is used for simultaneous applications to many of the world's intellectual property office from a single filing under an agreement known as the Patent Cooperation Treaty. Nor is there such a thing as a "European Union patent" though patents granted by the European Patent Office are called "European patents" to distinguish them from patents granted by national intellectual property offices that are sometimes referred to as "national patents."

These monopolies are granted as a reward for teaching everyone in the world (or at least everyone in the world with the relevant skills and knowledge known as "persons skilled in the art") how to make or use a new invention.  In order to get a patent, the owner of the invention must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art. If he or she fails to do that the patent can be revoked (that is to say, taken away from the patentee).

The document in which an invention is disclosed is known as a specification. The specification should contain
  • a description of the invention, 
  • one or more claims, and 
  • any drawing referred to in the description or any if the claims.
The claims are very important for they define the matter for which the patentee or applicant for a patent seeks protection. The United Kingdom's Patents Act 1977 provides:
"an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly."
Every claim must, therefore, be clear and concise, supported by the description and relate to one invention or to a group of inventions which are so linked as to form a single inventive concept.

A patent is granted only if an invention is new, inventive, useful and falls outside a number of statutory exceptions.  A patent is "new" if it falls outside the sum of human knowledge at the time of the application known as "the state of the art".  The British Patents Act mentioned above defines "the state of the art" as follows:
"The state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way."
 The "matter" to which the statutory definition refers does not have to be in English and it does not have to have been made available in the United Kingdom. All that is required is for the public to have had access to the material. A treatise in a language that is not widely spoken which is deposited in a public library in a remote city will be enough. Indeed, so too could the amusements of a 12 year-old boy on a beach off Hayling Island so long as he is in clear view of the public.

The body that considers on behalf of a government or group of governments whether the requirements for a patent have been met is known in some countries as the "patent office" and in others as the "intellectual property office". In the UK, the Intellectual Property Office in Newport examines applications for patents for the UK alone (the "national patents" referred to above), However, the British government is also party to an international agreement known as the European Patent Convention ("EPC") which established the European Patent Office ("EPO") that I also mentioned above. The EPO considers applications for patents on behalf of the governments of all the countries that belong to the EPC and can grant European patents on those governments' behalf. A European patent may designate any one or more of the contracting countries as a country in which the patent applies. In each of those designated countries, a European patent is treated for almost all practical purposes as though it were a patent granted by its national intellectual property office.

A patent is infringed by doing any of the acts mentioned in the first paragraph in respect of any of the claims which are also discussed above. If a patent is found or admitted to have been infringed, the patentee can claim either damages (compensation for the infringement) or an account of profits (assessment of any moneys or other benefits that the infringer may have gained from his or her infringement and their surrender to the patentee) plus an injunction (order of the court) to refrain from further infringements. Actions for injunctions and other relief for the infringement of a patent as well as actions and counterclaims for the revocation of a patent can be brought in the High Court of Justice in England and Wales. Actions that can be tried in no more than two days where the amount sought from the infringer is £500,000 or less can be brought in the Intellectual Property Enterprise Court ("IPEC") which is a court within the High Court with judges specializing in intellectual property work known as "enterprise judges". All other actions are brought in the Patents Court, another specialist court, also with specialist judges known as "assigned judges".

The patent law of the United Kingdom is largely codified by the Patents Act 1977 which I mentioned above. The Patents Act 1977 was enacted to enable the UK to give effect to the European Patent Convention and the Patent Cooperation Treaty that I have also mentioned above. It has been amended many times since its enactment. The IPO has published an unofficial consolidation of the statute as amended on its website at The Patents Act 1977 (as amended). It is also necessary to consult the European Patent Convention from time to time.

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