What do you do if, before you have obtained a granted patent, a third party starts selling a product that looks like your invention? Is there anything you can do to stop the third party? Does your patent application provide you with any rights before the patent is granted? Parminder Kaur Lally and Simon Ambroz answer these questions in the article below.
About the authors:
Parminder Lally is a senior associate at Appleyard Lees IP LLP. Parminder specialises in drafting and prosecuting patent applications for computer-implemented inventions. She has built a substantial reputation working with high-growth start-ups, spin-outs and SMEs in Cambridge, and has in-house experience.
Simon Ambroz is a trainee patent attorney. He primarily specialises in prosecuting and drafting patent applications for computer-implemented inventions and helping start-ups and SMEs to grow.
Start-ups should consider protecting their technical innovation by filing a patent application. Some reasons for doing so are explained in our earlier article here: https://appleyardleesgreenshoots.com/intellectual-property-for-start-ups-in-a-post-covid-world/.
Once your application for a UK patent is granted, the resulting granted patent gives you the right to prevent others from making, disposing of (e.g. selling or supplying), offering to dispose of, using, importing, or keeping your invention in the UK, where your invention is defined by the claims of your granted patent. It is important to note that it is possible to enforce your patent rights against the others only after the patent has granted. However, the journey to the grant of a patent may take several years, usually around four and a half years in the UK. What do you do if, before you have obtained a granted patent, a third party starts selling a product that looks like your invention? Is there anything you can do to stop the third party? Does your patent application provide you with any rights before the patent is granted? This article answers these questions.
Provisional protection in the UK
Many UK-based companies file their patent applications in the UK first, and then a year later, may file patent applications in other jurisdictions. So, we first look at whether you have any pre-grant rights in the UK.
In the UK, you may benefit from provisional protection. In short, where an application has been published, the applicant has the same right to bring infringement proceedings for any acts occurring between publication and grant that would eventually infringe the patent. However, there are certain conditions for obtaining provisional protection.
- the application must be published in English;
- the infringement proceedings must begin after the patent is granted; and
- the infringing act must infringe the claims as originally published as well as the claims in the granted patent.
With respect to the last point, if the patent is granted with claims of a different scope than the published claims of the patent application, the amount of damages awarded is reduced, where it was not reasonable to expect that a patent covering the act of infringement would be granted.
Typically, patent applications are published 18 months from the earliest priority date. However, if you suspect someone is copying your invention without your permission, you can bring publication forward so that you can benefit from the provisional protection provided by the publication of your patent application. It is possible to request early publication of your UK patent application. A reason for this expedition is needed. Possible infringement is a valid reason for early publication.
After early publication is requested, you will most likely want to use every other tool in the toolbox to expedite prosecution of the patent application because as mentioned above, only granted patents may be enforced. For example, in the UK and Europe, it is possible to request the search and examination processes be accelerated. In the UK a reason for the acceleration is required, whereas acceleration can be requested at the EPO without needing to give a reason. There are also other things that you can do to speed-up the process to getting a granted patent. At Appleyard Lees, we have the expertise to help you when you find yourself in this situation.
Provisional protection in other countries
As you may know, patents are jurisdictional. It means that if you have a UK patent, but you want to protect your invention in Germany, you cannot use the UK patent to enforce your rights in Germany. You will need a patent in Germany as well.
As mentioned above, many UK companies start with a UK patent application. To spread-out some of the costs, UK companies may file a PCT patent application a year later. A patent application filed under the PCT scheme is sometimes called an “international application”. The main benefit of the PCT scheme is that it allows you to pursue patent protection in multiple countries via a single patent application. Once you file an international application, you have several months (up to 30 or 31 months from the earliest priority date) to decide in which countries you want to obtain patent protection. After you decide in which countries you want to protect your invention, you must ‘convert’ the PCT application into national patent applications in the countries of interest. In most instances, this means filing some forms at the national patent office of the countries you are interested in, and paying patent office fees, and in some cases, filing a translation of your patent application in the local language. After this ‘conversion’ is performed, each national patent application gives you the same rights as if the patent application was initially filed in that country.
However, how does provisional protection work under the PCT scheme?
The good news for UK companies is that since your PCT publication will be prepared and published in English, you will automatically receive provisional protection in certain countries where English is an official language, such as the USA and Canada, without needing to take any specific action. This is good news because the USA and Canada are important markets for many companies. Of course, you would still need to obtain granted patents in these countries if you wish to enforce your patents and benefit from provisional protection.
The laws of some countries, such as Brazil, Mexico, and Japan do not provide provisional protection. The only way of obtaining enforceable rights in these countries, and many others, is by filing your patent application in these countries (e.g. by ‘converting’ your PCT application into a Japanese patent application), providing a full translation of the entire specification and prosecuting the patent application to the grant.
It is also possible to obtain provisional protection in Europe. There are two methods to do so. Provisional protection may be obtained by ‘converting’ your PCT patent application into a European patent application (by taking the necessary steps at the European Patent Office). Alternatively, provisional protection may be obtained by ‘converting’ your PCT application into a national patent application in a particular country in Europe (e.g. Germany Which of these two methods you use depends on how many European countries you wish to obtain patents in, but the following steps to obtain provisional protection apply to both methods. Briefly, you will need to translate the claims of your PCT application into the official language of each country in which you wish to obtain provisional protection, and file the claims at the relevant patent office. For example, if you want to obtain provisional protection in the Czech Republic, you will need to translate your claims into Czech and file them at the Czech patent office. The translation of the claims will be published, which satisfies one of the above-mentioned conditions to obtain provisional protection.
If you have filed a patent application and are worried that someone may be copying your invention without your permission, get in touch with us. We can advise you on whether you have, or will be able to get, provisional protection, and what steps you need to take to get a granted patent you could enforce. There are other actions we can take to help you deal with any potential infringers too. If you find yourself in this situation, do not hesitate to contact any one of the patent experts at Appleyard Lees for guidance.