TerraLex Cross Border Patent Guide

In the UK, the main statute governing patents is the Patents Act 1977. The statute itself is divided into three sections:

1. Part 1 which enacts a code of domestic patent law.
2. Part 2 which enacts provisions which meet the UK's obligations under three key international conventions: (1) Patent Co-operation Treaty 1970; (2)
   European Patent Convention 1973; and (3) Community Patent Convention of 1975.
3. Part 3 which deals with legal proceedings and the creation of the Patents Court.

Employee inventions are covered by the Patents Act 1977, which states that an invention belongs to the employer if:

1. It was made in the course of the normal duties of the employee or in the course of specifically assigned duties which would normally fall outside their duties; or
2. It was made in the course of the duties of the employee and the employee had a special obligation to further the employer's interest.

However, under section 40 of the Patents Act 1977 there is a renumeration regime which can award compensation to an employee-inventor. The central principle behind this scheme is that if an employee's invention provides an outstanding benefit to an employer, the employee-inventor should receive a fair share of that benefit. This obligation is not automatic, and only arises after the employee-inventor asserts their right to renumeration. There is no obligation on an employer to notify their employees of this right.

Patentable inventions fall under two broad categories, either products or processes.

This is covered by the Patents Act 1977 which lists certain creations which are not inventions for the purposes of the Act. These are:

1. a discovery, scientific theory or mathematical method;
2. a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
3. a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer; or
4. the presentation of information.

However, these exclusions prevent something from being treated as an invention only to the extent that a patent or application relates to that thing as such.

As software-related inventions commonly fall under the categories of mathematical methods and/or programs for a computer as such, they are often not patentable. Additionally, software-related inventions that have a 'non-technical' purpose are not patentable. However, where software has a technical purpose, it can be patented.

Although AI inventions are computer-implemented inventions which rely on mathematical methods (which are not patentable), when the task or process performed by an AI invention makes a technical contribution to the known art, the invention is not excluded and is patent-eligible.

In an application, you must include:

1. a description of your invention that allows others to see how it works and how it could be made;
2. legal statements that set out the technical features of your invention that are to be protected (known as ‘claims’); and
3. a summary of all of the important technical aspects of your invention (known as the ‘abstract’).

You can also include any drawings which could assist in illustrating the description of the patent.

The application is filed online at the UKIPO, along with a filing fee of £60 or £75 depending on the timing of the payment. The application filing establishes the Priority Date of the patent.

After you have filed your application, the UKIPO will:

1. carry out a search to confirm that the invention is new and inventive;
2. publish the application (this does not mean the patent is granted); and
3. carry out a 'substantive examination' of your application to consider its patentability.

Once these steps are completed, the patent can be granted.

Approximately 18 months after the application has been filed, the UKIPO will publish the application in full. The UKIPO will then conduct its thorough 'substantive examination' which the applicant must request. The UKIPO aims to compete the substantive examination within 4 years of the request, with an average timescale of 2-3 years.

Yes, the UKIPO offers methods of fast-tracking the patent application process, which accelerates the examination of a patent application if examination work has already been conducted by another intellectual property office.

There is also an additional fast track program for patent applications which confer an environmental benefit. To opt into this "Green Channel", applicants must request accelerated processing under the scheme in writing, indicating:

1. How the patent application in question benefits the environment; and
2. Which actions in the process they wish to accelerate:- examination, search and examination, and/or publication.

There are no additional costs for requesting a fast track application under this scheme.

Once a patent is granted, you must renew the patent on the fourth anniversary of the priority date.

You can renew your patent for up to a maximum of 20 years from the date of filing.

The price of a patent renewal increases yearly, starting at £70 for the first renewal, and £610 for a renewal for the 20th year. In addition to the UKIPO fees, there may also be costs associated with instructing a patent agent or patent attorney to assist with patent maintenance and any required filings.

For an invention to be patentable, it must be:

1. new - it must not have been made publicly available anywhere in the world;
2. inventive - it cannot be an obvious change to something that already exists;
3. either something that can be made and used, a technical process, or a method of doing something; and
4. not excluded from patentability.

The owner of a patent has a monopoly right, preventing third parties from operating within the scope of the patent claims. This even applies where the third-party invention has been developed independently of the patent.

An inventor of a patent benefits from moral rights, regardless of whether they are the owner of a patent. It gives the inventor the right to be named as an inventor and to be mentioned on patent certificates.

Patents in the UK have a duration of 20 years from their filing date, subject to renewal.

SPCs (Supplementary Protection Certificates) are granted in the UK under European legislation.

To improve the protection of patents in the pharmaceutical sector, the SPC regime provides for an additional period of protection if market authorisation for a pharmaceutical product is not granted more than 4.5 years after the patent is filed. The SPC runs from the expiry of the patent, and the duration is equal to the period elapsed between the patent filing and grant of the first market authorisation (in the UK or the EEA) up to a maximum of 5 years.

The first owner of a patent is the inventor of the patent, unless the patent was invented by an employee in the course of employment in which case the employer will be the first owner.

In some circumstances, two or more parties can be joint owners of a patent. In these circumstances, a patent cannot be assigned or otherwise dealt with (such as being licensed) without the consent of all joint owners. However, any owner may use or exploit the patent without consent of the other.

A patent can be assigned in a straightforward document, which clearly identifies the rights to be transferred, and the amounts paid in consideration. An assignment of a UK patent is void unless it is in writing and signed by, or on behalf of, the assignor.

There are no specific formalities for a patent licence, however it is preferable for it to be in writing to confer certainty as to its terms.

Both an assignment and a grant of a licence should be registered at the UKIPO.

Direct infringement is governed by section 60(1) of the Patents Act 1977. A person infringes a patent if they do any of the following things in the UK without the proprietor's consent:

• where the invention is a product, they make, dispose of, offer to dispose of, use, import or keep it;
• where the invention is a process, they use the process or offer it for use when they know, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement;
• where the invention is a process, they dispose of, offer to dispose of, use, import or keep any product obtained directly by means of that process.

Indirect infringement is governed by section 60(2) of the Patents Act 1977. A person infringes a patent if, without the proprietor's consent, they supply or offer to supply in the UK a person (other than a person entitled to work the invention) with any of the means, relating to an essential element of the invention, for putting the invention into effect when they know, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the UK.

The UK law has changed relatively recently to explicitly include a doctrine of equivalents, as per the UK Supreme Court decision in Actavis v Lilly [2017] UKSC 48.

The questions that a court should ask in relation to whether a given variant from literal construction falls inside or outside the claim of the patent are as follows:

• Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, ie the inventive concept revealed by the patent?
• Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?
• Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?

To establish infringement in a case where there is no literal infringement, a patentee would have to establish that the answer to the first two questions was "yes" and that the answer to the third question was "no".

The Supreme Court stressed that these questions are guidelines, not strict rules.

Exceptions to infringement are set out in section 60(5) of the Patents Act 1977. Key exceptions include acts:

• done privately for purposes which are not commercial;
• done for experimental purposes relating to the subject-matter of the invention; and
• consisting of extemporaneous preparation in a pharmacy of a medicine for an individual in accordance with a prescription given by a registered medical or dental practitioner or consisting of dealing with a medicine so prepared.

Regarding the experimental purposes exemption, section 60(6D) clarifies that anything done in or for the purposes of a medicinal product assessment which would otherwise constitute an infringement of a patent for an invention is to be regarded as done for experimental purposes relating to the subject-matter of the invention. Section 60(6E) further clarifies that "medicinal product assessment" includes any activity undertaken to provide data for obtaining or varying an authorisation to sell or supply, or offer to sell or supply, a medicinal product, whether in the UK or elsewhere.

Section 61 of the Patents Act 1977 sets out the remedies that can be sought by the proprietor of a patent in respect of infringement:

• Injunction (interdict in Scotland) restraining the defendant/defender from any apprehended act of infringement.
• An order to deliver up or destroy the infringing product or any article in which the product is inextricably comprised.
• Damages in respect of the infringement or an account of the profits derived from the infringement.
• Declaration (declarator in Scotland) that the patent is valid and has been infringed.

Under Section 69 of the Patents Act 1977, damages are recoverable back to the date of publication of the patent application, provided that the acts complained of would have infringed not only the granted patent but also the claims in the patent application immediately before the preparations for its publication were completed by the Patent Office (i.e. the Intellectual Property Office). The usual rules on recoverability of damages apply.

In England and Wales, the primary remedy for infringement is damages and the other remedies (which are equitable) are at the court's discretion.

The remedy for invalid patents is revocation. The power to revoke patents is governed by section 72 of the Patents Act 1977. The only grounds for revocation are that:

• the invention is not patentable (because it is not new, it does not involve an inventive step, it is not capable of industrial application, and/or it is excluded from patentability);
• the patent was granted to a person who was not entitled to be granted that patent;
• the specification of the patent does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art;
• the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent as filed; and/or
• the protection conferred by the patent has been extended by an amendment which should not have been allowed.

Yes – whether the claim is brought in the Patents Court, the Intellectual Property Enterprise Court, or in the Court of Session in Scotland, infringement and validity will be decided in the same proceedings. There is no bifurcation in the UK.

Preliminary injunction (interdict in Scotland) proceedings are available.

In England and Wales, applications for interim injunctions are considered on the principles set out in American Cyanamid [1975] AC 396. The court must ask:

• Is there a serious issue to be tried on the merits?
• Are damages an adequate remedy for the claimant if the injunction is not granted but the claimant succeeds at trial?
• If not, are damages under the cross-undertaking in damages an adequate remedy for the defendant if the injunction is granted but the defendant succeeds at trial?
• If damages are not an adequate remedy for either side, where does the balance of convenience lie?

Application for preliminary injunction is normally made as part of, and heard during the early stages of, a claim for infringement. Typically, the application for preliminary injunction is heard within a month or so of the claimant filing their application, and the application hearing typically lasts for one or two days.

In Scotland, an interim interdict (the Scottish equivalent of a preliminary injunction) can be applied for at any time before the final judgment. Crucially, if a caveat is not lodged on behalf of the alleged infringer, an interim interdict can be obtained without advance notice being given. There is no requirement to give contractual cross undertakings as a pre-condition for the grant of interim interdict or to file detailed witness statements. When deciding whether or not to use its discretion to grant an interim interdict, the court will consider whether:

• There is a prima facie case (i.e. one which has a proper legal foundation and reasonable prospects of success), and whether
• The inconvenience of not granting the interim interdict outweighs the inconvenience to the alleged infringer of granting the interim interdict (known as the "balance of convenience" test).

Infringement of a patent is not of itself a criminal act.

However, infringement in breach of an injunction or interdict can be subject to criminal sanctions. A criminal standard of proof applies to the facts of such a breach. Maximum sanctions are an unlimited fine or imprisonment (of directors in the case of breach by a corporation) of up to two years.

Damages can either be calculated to put the claimant back into the position they would have been in but for the infringement or, at the patentee's option, an account of profits can be ordered.

Damages are typically assessed on the basis of the licence fee (where the patentee grants licences), or on the basis of a reasonable royalty (where they do not). Further complication is introduced when assessing the loss to a manufacturing patentee; in such cases, loss could be calculated from lost sales, or from the price reduction caused by the infringer's competition, or a combination of the two.

In England and Wales, as with other torts, the time limit is governed by the Limitation Act 1980, in particular section 9(1) thereof, which states: "An action to recover any sum recoverable by virtue of any enactment shall not be brought after the expiration of six years from the date on which the cause of action accrued."

In Scotland, an obligation to make reparation prescribes (i.e. extinguishes) after 5 years without any claim having been made and without the obligation having been relevantly acknowledged by the infringing party.

Legal costs for an English Patents Court (High Court) patent action involving both infringement and validity are currently in the order of £2m to £3m, although trials involving highly valuable technology and/or expert witnesses in multiple technical fields may cost more than £3m. In the Intellectual Property Enterprise Court, where damages are limited to £500k, costs can nevertheless exceed £300k-£400k for actions involving both infringement and validity.

Adverse costs are typically recoverable from the losing party. The winner can recover a high percentage (close to 100%) of costs from the loser. However, issues-based costs awards are common; where the overall winner was not successful on all points run, the winner may be penalised by being denied their costs with respect to the points they lost, or even by having to pay the loser's costs with respect to those points. After trial on the merits, interim payment on account of costs is typically ordered in the amount of around 60% of costs awarded. In the Intellectual Property Enterprise Court, adverse costs are capped at £60k.

In Scotland, the initial cost of issuing an action in the Court of Session is £373 no matter the value of the claim. Proof (i.e trial) costs are usually lower than those in the courts in England and Wales as there is no automatic discovery or disclosure of evidence and there are specific case management rules for all IP court actions, which aim to make litigation as swift and cost efficient as possible. The level of adverse costs exposure is generally around 50-60% of the other party's costs.

In respect of England and Wales, in the UK Patents Court (High Court), patent proceedings typically take roughly one year to first-instance trial, followed by a further nine months to one year for the appeal. These timelines can be further foreshortened on application for expedition. Timeline to first-instance trial in the Intellectual Property Enterprise Court is typically slightly shorter than in the UK Patents Court.

In Scotland, as mentioned above, there are specific case management rules for all IP court actions raised in the Court of Session. The judge has wide discretion and powers from an early stage in proceedings to quickly focus the real issues in dispute and move the case towards a final hearing. A debate (strike out hearing) could take place in a matter of months and a proof (trial) could take place within a year.

Yes. The rights holder can make an Application for Action to the UK Border Force to detain suspected infringing products. If suspected infringing products are detected, Border Force will contact the applicant to confirm whether or not the products are infringing.

1. The UKSC's judgment in the Thaler / DABUS case was handed down on 20 December 2023. Along with the courts of most jurisdictions around the world (with the notable exception of South Africa), the UKSC held that an artificial intelligence (AI) cannot be an inventor. More specifically, the UKSC held that an "inventor" within the meaning of the Patents Act 1977 must be a natural person; Dr Thaler's AI, DABUS, is not a person at all, let alone a natural person. However, arguably, the real conclusion of the UKSC judgment comes in a paragraph that quotes from the Court of Appeal judgment: "If patents are to be granted in respect of inventions made by machines, the 1977 Act will have to be amended". In other words, the real question is: will legislators in the UK (and elsewhere) now seek to change the law to allow AI to be named as an inventor on patent applications, or to allow some other mechanism by which developments generated by AI might be afforded patent protection?

2. On 2 July 2024 the High Court handed down its decision in Pfizer & BioNTech v Moderna relating to Moderna's pledge not to enforce its patent rights. In October 2020, Moderna had stated that "while the pandemic continues, Moderna will not enforce our COVID-19 -related patents against those making vaccines intended to combat the pandemic". Moderna subsequently revised that pledge in March 2022, stating that "In non-AMC 92 countries, [Moderna] expects those using Moderna-patented technologies will respect the Company's intellectual property". The court held that the consent given by Moderna's original pledge was revocable, meaning that Moderna was entitled to revise its patent pledge. The court also held that there was no unilateral contract under Massachusetts law, and there was no waiver under US Federal law.

As discussed above, two hotly anticipated future developments are:

1. Will legislators in the UK (and elsewhere) now seek to change the law to allow AI to be named as an inventor on patent applications, or to allow some other mechanism by which developments generated by AI might be afforded patent protection?

2. Will the UK Court of Appeal partially or wholly reverse the High Court's decision in Pfizer & BioNTech v Moderna, affecting the binding nature of pledges not to enforce patent rights in the future?