Although the European Patent Office (EPO) is responsible for granting the majority of patents that are in force in the United Kingdom, the United Kingdom Intellectual Property Office (UKIPO) offers a number of services that are not provided by the EPO. Furthermore, until the Unified Patent Court opens for business, the UKIPO and the UK’s national courts will retain exclusive jurisdiction to hear patent disputes in the United Kingdom. Finnegan’s European patent attorneys have expertise in all aspects of patent practice in the United Kingdom.
UK Patent Filing and Prosecution

The UKIPO provides a quick and inexpensive route to obtain patents in the UK, in contrast to the delays and high official fees experienced at the EPO. This can be particularly helpful for companies hoping to take advantage of the tax savings offered by the Patent Box. At Finnegan, we tailor clients’ worldwide filing strategies to take advantage of the benefits afforded by applying for patents at the UKIPO.

Patent Office Proceedings

The UKIPO has jurisdiction to hear a wide range of inter partes disputes, including:

  • Inventorship: The UKIPO can be asked to decide whether a person has a right to be named as an inventor for a patent or patent application. Such a decision may be a precursor to the entitlement or compensation proceedings described below.
  • Entitlement: The UKIPO can decide disputes relating to the ownership of a patent or patent application. Many remedies are available in the event that a patent application has been filed by, or a patent has been awarded to, a party that was not entitled, including: revocation of a patent; refusal of a patent application; granting of a licence; transferring a patent or application to the entitled party; or an order that a new patent application may be filed by the entitled party.
  • Compensation for employees’ inventions: Under UK law, an employer is usually taken to be the owner of any inventions made by its employees in the course of their duties. However, the UKIPO may award compensation to an employee when the invention is of outstanding benefit to the employer.
  • Revocation: UK law does not allow patents to be attacked in the same way as European patents can be opposed at the EPO. However, it is still possible to seek revocation of a UK patent at either the UK courts or the UKIPO. This is particularly useful for attacking European patents that have been validated in the UK, but which are outside the nine-month period within which they can be opposed at the EPO.
  • Declarations of non-infringement: Anyone may ask the UKIPO to declare that their acts do not infringe a particular patent. A declaration of non-infringement is a useful defensive tool when a party fears being sued for infringement.
  • Opposition to post-grant amendments: A UK patent may not be amended in a manner that extends its scope of protection or results in new matter being added to the patent specification. Third parties may oppose any post-grant amendment that contravenes these requirements.

Finnegan advises clients in these types of disputes and, when necessary, can represent clients at hearings before the UKIPO.

Patent Office Opinions

The UKIPO can give an opinion on the validity and/or infringement of a UK patent. The impartial nature of these opinions makes them a useful tool for parties to assess the strength of their cases before deciding whether to proceed with litigation. Indeed, the outcome of a Patent Office opinion is often to encourage parties to settle their dispute out of court. Opinion proceedings also provide a low-cost option for challenging UK patents, as the UKIPO can revoke a patent that an opinion considers to be invalid. Finnegan’s expertise in written advocacy and deep technical understanding maximizes our clients' chances of securing a favorable opinion.

Intellectual Property Enterprise Court

The Intellectual Property Enterprise Court (IPEC), formerly called the Patents County Court, provides a forum for low-value patent disputes in the UK. The IPEC has streamlined procedures that focus upon achieving a quick outcome at a low cost, and which set the IPEC apart from the High Court. A further advantage of the IPEC for low-value disputes is that damages and the costs that can be recovered from the losing party are capped, such that potential litigants can estimate their financial exposure before embarking upon litigation. Finnegan has attorneys who are qualified to conduct patent litigation in both the IPEC and the High Court.

Contacts
Banks, Katherine
Trainee
+44 (0)20 7864 2800
katherine.banks@finnegan.com

Cornell, Clare
Partner, European Trade Mark and Patent Attorney
+44 (0)20 7864 2815
clare.cornell@finnegan.com

Cupitt, Philip
Partner, European Patent Attorney
+44 (0)20 7864 2811
philip.cupitt@finnegan.com

Ford, Hazel
Partner, European Patent Attorney
+ 44 (0) 20 7864 2820
hazel.ford@finnegan.com

Hyden, Martin
Partner, European Patent Attorney
+44 (0)20 7864 2810
martin.hyden@finnegan.com

Morozova, Yelena
European Patent Attorney
+44 (0)20 7864 2819
Yelena.morozova@finnegan.com

Tridico, Anthony
Partner
+44 (0)20 7864 2888
anthony.tridico@finnegan.com

Wall, Leythem
Partner, European Patent Attorney
+44 (0)20 7864 2814
leythem.wall@finnegan.com