The UK patent system – 5 differences to be aware of
In many ways, the UK patent system is roughly harmonized with many other European countries thanks to the UK’s membership of the EPC (European Patent Convention), which allows a UK patent to be obtained via the European Patent Office. Similar considerations apply in the UK for novelty, inventive step (non-obviousness) and the other requirements for patentability, which will be familiar to many readers. Importantly, this will not change after Brexit, since the EPC is a separate agreement to the EU and will not be directly affected by the UK’s withdrawal.
Nevertheless, the EPC does not touch on all aspects of patent law, which leaves room for several important differences between UK patent law and the national law of other European countries. These differences are worth knowing for any company operating in the UK.
According to UK patent law, an invention automatically belongs to the employer if it is made in the course of the normal duties of the employee or in the course of duties specifically assigned to them. In both cases, the circumstances must be such that an invention could be reasonably expected to result from the carrying out of those duties.
This is also the case if the employee has a special obligation to further the interests of the employer’s undertaking. This generally applies to employees in senior positions, such as company directors.
The UK approach stands in contrast to the situation in many other countries, for example Finland and Germany, where the invention belongs to the employee by default, but the employer can acquire the rights in the invention if they wish.
If your company has UK-based employees, then the rights in any invention that they develop may be dictated by UK patent law, even if those employees are not UK citizens. A company operating in Finland might have an established invention board which reviews employee inventions and decides which of those inventions to acquire the rights to. However, this process may not be necessary where the inventions are produced by UK employees.
There are also differences in the way that employees are compensated for their inventions. In general, UK employee-inventors are not entitled to compensation for their inventions except in rather specific cases. For an employee-inventor to be entitled to compensation from their employer for a given invention, a patent must have been granted for the invention and the patent must be of outstanding benefit to the employer.
In this context, “outstanding benefit” depends entirely on the circumstances, i.e. the size and nature, of the employer’s business. To qualify, the invention must be something out of the ordinary when looked at in the total context of the activities of the employer concerned and, in general, would not be something that one would normally expect to arise from the duties that the employee is paid for.
In one (in)famous UK court saga, the monetary benefit to the employer from an employee’s invention was said to be around £24.5m. For a smaller company, this would certainly be an outstanding benefit. Unfortunately for the inventor in this case, his employer was part of the Unilever group of companies, and in the context of Unilever’s business activities, £24.5m was not considered to be of outstanding benefit.
This approach differs greatly from the approach followed in Finland and many other European countries, where employee-inventors typically receive compensation of a few hundred Euros or more for each invention acquired by the employer.
One possible consequence of the UK approach could be the lack of motivation for UK employee-inventors to reliably inform their employers about new inventions. Those inventions are often not captured at an appropriate stage and are therefore not subsequently protected by a patent. This might go some way towards explaining the UK’s lacklustre approach to patenting, despite relatively high levels of R&D. Thus, even if employee compensation for inventions is not necessary in the UK, there could still be a good business case for it.
National Security/Foreign Filing
UK patent law states that UK residents cannot cause a patent application to be filed abroad, when publication of that application might be prejudicial to national security, unless written permission is given by the patent office or the application was filed first in the UK and no direction restricting publication/foreign filing is issued within 6 weeks.
The UKIPO (UK Intellectual Property Office) publishes a long list of technologies that fall within this restriction. The list includes things you would expect, such as military technology, but also includes high-precision measurement instruments, navigation systems and encryption technology, which have many uses outside of the military too.
Importantly, this restriction applies to all UK residents – it does not matter who the employer is or where they are located. Thus, any company that employs inventors based in the UK needs to carefully think about whether their technology falls under this restriction. The consequences of failing to comply with the provision range from a fine to a maximum of two years in prison.
If you have a UK patent, you might be tempted to threaten patent litigation to any competitors or other parties operating in the market. UK patent law sets out very specific circumstances regarding when and to whom it is OK to make such a threat.
It is generally not OK to threaten someone with infringement proceedings unless, if the invention is a product, the alleged infringer is making or importing the product or, if the invention is a process, the alleged infringer is using the process.
It is, however, OK to give notice that a patent exists (without explicitly threatening infringement) and to try to discover who the manufacture/importer of an infringing product or user of an infringing process is.
Making such threats can result in an injunction or an award of damages against the threat-maker, so any letters or other communications to competitors regarding patents or infringement should be carefully reviewed by a qualified patent attorney or other UK lawyer first.
The final item in this list is not about UK patent law per se, but the services offered by the UKIPO. The UK patent office offers a low-cost opinion service that can be used to obtain opinions on whether a given UK patent is infringed or valid, based on submitted evidence. These opinions are non-binding, but they can be helpful if a dispute is looming, in licencing negotiations, or if your client is worried about a particular patent. Furthermore, since the assessment of novelty and inventive step is fairly similar across Europe, as mentioned above, an opinion from the UKIPO on the validity of a patent can be useful in licensing negotiations across multiple jurisdictions.
As a potential infringer or defendant in patent litigation, UKIPO opinions can be requested without revealing who the ultimate requestor is, e.g. without a representative revealing the identify of their client. This can again be useful to test the water without necessarily alerting the patent proprietor to your interest in the patent.
Given the low cost (the official fee is only £200), UKIPO opinions are an under-utilized and often effective tool that should be considered, especially for European patents which have the same claims validated in multiple states.