Glossary

A

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Amendment

The process of adapting the text of a specification for a patent application (or, sometimes, a granted patent) to address objections that have been raised by the Patent Office (or other parties).  There are strict rules that apply to the amendment of a patent application once it has been filed.  In particular, it is not possible to add anything that wasn't already present in the application as filed.  This is the main reason why drafting is such a critical stage in a patent's life, because it sets the boundaries for what can (and can't) be done later on if issues arise.

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Assignment

The transfer of rights in (or ownership of) a patent or patent application.  It is generally advisable to register an assignment with the Patent Office responsible for the patent or patent application as failure to do so can, in some circumstances, result in a reduction of rights.  See also: Licence.  

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B

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Breach of Confidence​

An unauthorised disclosure of information that should have been kept confidential, such as that disclosed under a Non-Disclosure Agreement (NDA).  Where an invention has been publicly disclosed in breach of confidence, it may, in some cases, still be possible to successfully obtain a patent for that invention where it can be demonstrated that the disclosure was an "evident abuse" of the confidential information (i.e. that the information was disclosed with the intent to cause harm or the knowledge that it could do so).  However, it should be noted that there are strict time limits within which a patent application will need to be filed following such a disclosure (6 months in the UK).  See also: Non-Disclosure Agreement (NDA), Prior Art, and Grace Period.

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C

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Chartered Patent Attorney (CPA)

A patent attorney who is a Fellow of the Chartered Institute of Patent Attorneys (CIPA).  See also: Patent Attorney.

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Claims

A set of numbered statements contained in a patent specification that set out ​the scope of protection that is provided by a patent (or sought by a patent application).  There are two types of claims, independent claims and dependent claims.  Independent claims set out the broadest scope of protection.  Dependent claims refer to the independent claims and specify additional features (or "limitations") that further narrow the scope of protection.  The claims are arguably the most important part of a patent specification and are the main focus during examination when a patent office is deciding whether to grant a patent.  They are also used by a court to assess whether a third party is infringing a patent.  Identifying and defining an optimal scope of protection is therefore a key consideration when drafting a patent specification - too broad and a patent application may fail to pass the key patentability requirements for novelty and inventive step - too narrow and the patent application may be easy for a third party to avoid infringing any resulting patent.  See also: Design Around.  

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Computer-Implemented Invention (CII)

A term used to refer to inventions that involve the use of a computer system or network.  For example, software or AI-related inventions are a form of computer-implemented invention.  Special conditions apply to the evaluation of patentability for computer-implemented inventions.  In particular, it is generally necessary to demonstrate a technical effect that is achieved by the invention that goes beyond the normal physical interactions that result when software is run on a computer.

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D

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Design Around

The practice of modifying the design or implementation of a product or process to avoid infringing a patent while achieving similar functionality or an acceptable alternative.  See also: Freedom to Operate (FTO).

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Divisional Application

A patent application that is filed as a "child" of an existing "parent" patent application.  It can usually be filed at any point while the "parent" patent application is pending (i.e. before it is either granted or refused) - however, there are significant variations in the rules between jurisdictions.  A divisional (or child) application can be used to pursue protection for a different set of claims from those of its parent application.  The divisional application benefits from the same filing (and priority) date as the parent application.  However, the claims of the divisional application can only relate to subject-matter that has been disclosed in the parent application (whether in the description or the claims as originally filed).  Divisional applications are commonly used in response to unity objections being raised against the claims of the parent application.  They can also form a component of more advanced patent strategies.  See also: Unity.

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Drafting

The process of creating a patent specification to be filed as part of a patent application.  Arguably, this is the most important part of a patent application's life as, once a patent application has been filed, the options for changing what it contains are very limited.  In drafting the patent application, it is necessary to balance commercial and legal considerations, as well as to anticipate potential issues that may arise, in order to optimise both the chances of successfully obtaining a patent and the value of that patent to its owner.  See also: Specification. 

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E

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Employee Inventions

An invention made by an employee of a company.  In the UK, where an inventor is an employee of a company, there is a particular set of rules that are used to determine whether an employee invention is owned by the employee or the company.  In essence, the company will own the invention if it was made during the course of the employee's duties and those duties were such that an invention might reasonably be expected to result from those duties or where the employee owes a special obligation to further the interests of their employer.  Otherwise, the invention will belong to the employee.  It should also be noted that where the invention is considered to belong to the company, the employee may nonetheless be entitled to compensation if the invention is of "outstanding benefit" to their employer.  See also: Inventor.

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European Patent Attorney (EPA)

A qualified IP professional who is authorised to represent applicants before the European Patent Office (EPO).  The EPO maintains a searchable database of professional representatives [↗].​  All European Patent Attorneys are also members of the European Patent Institute (EPI) [↗] and must abide by its regulations and professional code of conduct.  See also: Patent Attorney and Chartered Patent Attorney (CPA).

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European Patent Office (EPO)

A regional patent organisation that centrally grants patents on behalf of a number of European countries that are members of the organisation (referred to as contracting states).  It was created and is governed by the European Patent Convention (EPC) which is a multilateral treaty that is distinct from, and outside of, the European Union (EU) and includes both EU and non-EU countries, including the United Kingdom.  A full list of contracting states [↗] is available on the EPO's website.  A single patent application (commonly referred to as a European patent application) can be filed with the EPO and prosecuted through to grant.  Upon grant, the European patent application is converted into a bundle of patents, each covering a contracting state in which patent protection is desired.  A subset of the contracting states that are also signatories to the Unitary Patent Convention may be collectively covered by a single Unitary Patent.  See also: Validation and Unitary Patent.

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Examination Report

A written communication issued by an examiner at the Patent Office outlining the examiner's objections to the patent application.  That is to say, the reasons why the examiner believes that a patent cannot be granted.  For example, the examiner may allege that the claimed invention is not new (lacks Novelty) or is obvious (lacks Inventive Step) from what was already publicly known when the patent application was filed.  These objections which will need to be overcome before a Patent can be granted.  The term "Office Action" is also commonly used to refer to these communications (particularly for US patent applications).  See also: Prosecution.

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Exclusive Licence

A specific type of licence that permits an entity (or licensee) to use the invention covered by a patent and also restricts the owner (or proprietor) of the patent from issuing further licences to other third parties.  An exclusive licence also generally precludes the owner of the patent from using the invention themselves.  Where the owner of the patent retains the right to use the invention themselves this is commonly referred to as a "Sole Licence".   Exclusive licences are generally considered more valuable than non-exclusive licences because the licensee receives exclusive use of the invention, thereby providing them with the full benefit of the monopoly granted by the patent.  Exclusive licensees are also empowered to bring infringement proceedings in their own name, without necessarily requiring the active involvement of the patent owner.  See also: Licence and Non-Exclusive Licence.

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F

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Filing Date

The date on which a patent application is filed.  For the first patent application that is filed in respect of an invention, this date is particularly significant because it determines what constitutes the prior art against which the invention will be assessed and also determines entitlement to a patent for the invention.  See also: Prior Art and First-to-File.  

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First-to-File

The rule by which patent offices determine entitlement to a patent for an invention in the case that an invention is independently created by different inventors.  Specifically, the first inventor to file a patent application for an invention is entitled to the patent for that invention whilst anyone who files a patent application for that same invention subsequently will not be entitled to a patent for that same invention.  Historically, some patent offices (notably the US) used a first-to-invent rule to determine entitlement.  However, this approach has now been phased out for new applications.  See also: Filing Date.

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Foreign Filing Licence

A permission granted by the Patent Office of a country that permits the recipient to file a patent application for an invention in a foreign territory.  Many jurisdictions, including the UK, restrict the filing of patent applications abroad where those applications relate to military technology or contain information that, if published, would be prejudicial to national security or public safety.  Such jurisdictions typically place requirements on applicants to seek prior permission or take various other steps before filing a patent application containing such sensitive subject-matter abroad.  Failure to do so may constitute a criminal offence.  Since the requirements of different jurisdictions vary and may attach to the nationality or residence of the inventors or the applicant, applicants may sometime be faced with a complex set of competing requirements - particularly when multiple inventors with different nationalities are involved.   Under the UK regime, foreign filing of patent applications containing such sensitive subject-matter is prohibited without first obtaining approval from the UK Intellectual Property Office (UKIPO).  However, it is also possible to file the first patent application for such inventions at the UKIPO and provided the UKIPO does not issue a direction requiring the application to be kept confidential on national security grounds (a "Secrecy Direction"), the applicant is permitted to file further patent applications for that invention after a period of six weeks has passed. ​​

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Freedom to Operate (FTO)

The freedom to make, use, import, or sell a product or process without infringing third-party patents.  The possession of a granted patent for your product or service does not itself provide freedom to operate.  It is possible, and common, for a product or process to be covered by many different patents (e.g. relating to different parts of the product or process or to distinct improvements).  Any such patent may therefore be used to prevent commercialisation of that product or process.  Searches (commonly referred to as FTO searches) can be performed to try to identify potentially problematic patents or patent applications and allow mitigating action to be taken to reduce risk.  See also Infringement.

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G

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Grace Period

A period of time, available in some jurisdictions (most notably the United States, but not the UK or Europe) that provides for a period of time following a public disclosure of an invention during which a patent application may still be filed without that disclosure being treated as prior art against the patent application.  However, it is important to note that in jurisdictions where such grace periods are not available (such as the UK or Europe), any public disclosure of an invention before a patent application is filed will be treated as prior art and will adversely impact the novelty of any patent application subsequently filed for that invention.  Indeed, even in jurisdictions where grace periods are provided, relying on them can be problematic.  Inventors and businesses should therefore exercise caution before publicly disclosing an invention and seek professional advice before doing so.  This term may also be used in other contexts, such as in relation to the provisions allowing for late payment of renewal fees.  See also: Prior Art, Novelty, and Breach of Confidence.

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Grant

A significant milestone in a patent application that marks the patent office's formal decision that the patent application meets all the requirements for patentability.  From this point, the patent application becomes a granted patent with enforceable rights that may be asserted against third parties to prevent them from making, using, importing or selling the patented invention. 

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H

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- None -

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I

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Infringement

An action performed by a third party without the permission of a patent owner that falls within the scope of the claims of a patent.  That is to say, where the third party makes, imports, keeps, sells, or offers to sell a product or uses or offers to use a method having all the features mentioned in a claim of the patent within the territory covered by that patent.  In the case of method claims (which are generally the most significant type of claim for software patents), it is necessary for a single entity to perform all the steps of a claim if infringement is to be found.  Where different entities perform different steps of a claim, no direct infringement will generally be found.  However, it is possible in some cases for the entities to be treated as "joint tortfeasors" where they are found to be acting pursuant to a common design to perform the patented method.   Similarly, a finding of contributory infringement may be found against one or more of the entities if they supply (or offer to supply) within the United Kingdom "means essential" to putting the invention into effect where "he knows, or it would be 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 United Kingdom".  

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Invalidity Proceedings

An official proceeding before a patent office or court to seek revocation of a granted patent on the grounds that it does not meet the requirements for patentability.  There is a presumption that a granted patent is valid.  However, this presumption can be overcome through new arguments or evidence (e.g. prior art) that was not considered during examination of the patent.  Invalidity proceedings may be brought in isolation by an entity wishing to remove the threat posed by a patent (i.e. for Freedom-to-Operate purposes) or as a counterclaim where infringement proceedings have been brought.  See also: Freedom-to-Operate and Opposition.

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Inventive Step

A core requirement of patentability that must be satisfied in order for a patent to be granted.  In order to satisfy this requirement, the invention claimed in a patent application must not be obvious from that which was publicly known prior to the date on which the patent application was filed (the "prior art").  The way in which this requirement is assessed varies between different Patent Offices.  See also: Prior Art and Novelty. 

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Inventor

A person involved in the creation of an invention - specifically in devising the inventive concept behind the invention.  By default, the inventor (or inventors) is treated as being the person entitled to apply for a patent application unless there is some other reason, such as a contract or employment relationship, that means that this right should belong to another entity.  It is necessary to identify the inventors of an invention in a patent application and care should be taken to ensure that this information is correct as providing the wrong inventorship information can be detrimental, potentially giving rise to validity or entitlement issues.

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J - K

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L

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Licence

An agreement between the owner (or proprietor) of a patent (or patent application) and a third party (or licensee) providing the third party with permission to use an invention covered by that patent.  It may form part of a larger agreement between the two parties and may include restrictions on the use of the invention.  See also: Exclusive Licence and Non-Exclusive Licence.

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M

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- None -

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N

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National Phase

The stage of a patent application under the Patent Cooperation Treaty (PCT) which is performed separately before the national or regional patent offices covering each territory in which patent protection is desired.  The start of this stage is commonly referred to as "entering the national phase" and occurs at approximately 30 months after the first patent application for an invention has been filed (although this varies from country to country).  The beginning of this stage marks a significant milestone, being the point at which it is necessary to decide which territories patent protection will be sought in and at which the costs of continuing to pursue the patent application increase significantly (owing the need to pay official fees and take various procedural steps separately in each of those territories, as well as the need to engage local representatives in each territory).  See also: Patent Cooperation Treaty (PCT).

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Non-Disclosure Agreement (NDA)

A legally binding agreement between two or more parties to treat information disclosed between them confidential.  They are used to protect confidential information when it is necessary to share that information with a third party.  For example, an NDA may be used when disclosing details of an invention to a third party to prevent that disclosure of the invention to the third party from being considered a public disclosure of the invention (which would otherwise adversely impact the novelty of any patent application that is subsequently filed).  An explicit NDA is not required in situations where a party is already under a duty to keep information confidential, such as when a client discloses an invention to their patent attorney who has a professional obligation to keep such information confidential.  See also: Breach of Confidence, Trade Secret, and Prior Art.

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Non-Exclusive Licence

A specific type of licence that permits an entity (or licensee) to use the invention covered by a patent but does not restrict the owner (or proprietor) of that patent from issuing further licences to other third parties.  This type of licence is generally considered less valuable than an Exclusive Licence because the licensee does not receive exclusive use of the invention and may face competition from other licensees.  See also: Licence and Exclusive Licence.

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Novelty

A core requirement of patentability that must be satisfied in order for a patent to be granted.  In order to satisfy this requirement, the invention claimed in a patent application must be new over anything that was publicly known prior to the date on which the patent application was filed (the "prior art").  Provided that the claimed invention is different from the prior art in some way, this requirement will be met.  See also: Prior Art and Inventive Step. 

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O

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Opposition

A contentious proceeding before the European Patent Office (EPO) initiated by a third party ("the opponent") following the grant of a European Patent to seek the revocation of that patent.  It may be initiated by a third party at any point during a 9-month period following the grant of a European Patent.  The proceeding involves a series of written submissions in which the opponent sets out their arguments and accompanying evidence as to why the patent is invalid and the owner (or "proprietor") of the patent responds to those arguments and/or requests amendments to the claims of their patent which address the issues raised.  The proceeding will usually conclude with an oral hearing attended by both parties (referred to as "Oral Proceedings") held before an impartial panel at the EPO (referred to as the "Opposition Division").  At the end of the proceedings, the Opposition Division issues a decision to either: maintain the patent; maintain the patent in an amended form; or revoke the patent.  This decision can be appealed.  See also: Invalidity Proceedings. ​​​

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P

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Patent

A legal right granting a monopoly over an invention within a particular territory for a limited period of time - typically 20 years from the date of filing.  It gives its owner the right to prevent others from making, using, importing, or selling the patented invention without their permission.  A patent can be sold, licenced or mortgaged in the same way as any other property.  To obtain a patent, it is necessary to file a patent application with a patent office responsible for granting patents in the territory in which protection for the invention is desired.  The patent office will assess the patent application and grant a patent provided that the requirements for doing so are met.  These requirements include the requirements of novelty and inventive step.  Where protection in multiple territories is desired, it will be necessary to obtain a separate patent for each of those territories.  The patent application that is filed includes a patent specification that includes claims setting out the scope of protection that is sought and a description that provides sufficient detail about the invention to allow others to understand and reproduce it.  This patent specification will usually be published by the patent offices.  This means that others will be able to understand and use the invention on expiry of the granted patent (or in the event that the patent application is refused without a patent being granted).

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Patent Attorney

A qualified IP professional authorised to advise on all aspects of the patent system and represent clients before patent offices and certain tribunals.  In the UK, the titles of "Patent Attorney" or "Patent Agent" are protected and may only be used by those who are suitably qualified and admitted to the register maintained by the Intellectual Property Regulation Board (IPReg).  This requirement distinguishes patent attorneys from those using non-protected titles such as "IP Consultant" or "IP Strategist", which generally require no such qualification or regulatory oversight.  Patent attorneys based in the UK hold both technical and legal qualifications. See also: Chartered Patent Attorney (CPA) and European Patent Attorney (EPA).

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Patent Box

A tax scheme that is intended to incentivise research and development by offering a reduced tax rate for profits derived from a patented invention.  Under the UK's Patent Box regime, qualifying profits derived from a patented invention are taxed at a reduced rate of 10% rather than the rate of 25% that is usually experienced.  It should be noted that there are various conditions that are required to qualify for tax relief under this regime and specialist tax advice is recommended to determine eligibility.

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Patent Cooperation Treaty (PCT)

An international treaty that enables an applicant to file a single patent application (referred to as a PCT or international patent application) which can be used to obtain patents in each of the countries that are signatories to the treaty (also referred to as contracting states).  There are currently 158 contracting states to the PCT, including most countries in which patent protection is commonly sought.  It should be noted that although the PCT enables a single patent application to be filed initially, that application will ultimately need to be forwarded to (or "entered into") the patent office(s) of each territory for which patent protection is ultimately sought.  Each patent office will then independently assess the application against their own patentability requirements to assess whether a patent should be granted for that territory.  One of the main benefits of the PCT is that it enables the decision of which countries to pursue protection in (and some of the cost of doing so) to be deferred.  See also: National Phase.​

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Patent Lawyer

A term sometimes used when referring to a patent attorney or other legal professional, such as a solicitor or barrister, specialising in patents.  It is more commonly used in other jurisdictions, such as the US.  In the UK, the title "Patent Attorney" is the legally protected title.  See also: Patent Attorney.

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Patent Portfolio

A collection of patents and patent applications owned by a company or individual.  When strategically curated, a patent portfolio can be worth more than the sum of its parts.

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Prior Art

The corpus of information that was publicly available before a patent application has been filed (i.e. before its filing date or priority date as applicable).  This information includes any information that has been made publicly available in any way, and includes oral disclosures and the availability, or demonstrations, of  existing products, as well as written documents such as published articles or the specifications of other patent applications.  It should be noted that this includes any public disclosures that have been made by the inventor(s) themselves, although some jurisdictions do provide a grace period for filing a patent application following such disclosures (although this is not the case in the UK or Europe).  In examining a patent application, an examiner will carry out a search to identify prior art that is relevant to assessing whether a patent should be granted for that application.  In particular, the examiner will try to identify any prior art disclosures that either disclose the invention in its entirety, or from which the invention would have been obvious when combined with other prior art disclosures.  In order for a disclosure to be relevant as prior art, it must be sufficiently detailed to enable the skilled person to reproduce the disclosed material.  See also: Search Report, Novelty, Inventive Step, and Grace Period.

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Priority

A mechanism established by the Paris Convention for the Protection of Industrial Property of 1883 that enables patent applications to be treated as having been filed on the same day as an earlier patent application that has been filed for the same invention.  This process is commonly referred to as "claiming priority to" the earlier patent application and is available in all the contracting states that are party to the Paris Convention (of which there are currently 181 members).  The filing date of the earlier application to which priority is claimed is commonly referred to as the priority date of the subsequent application and determines what constitutes prior art when assessing that application.  This mechanism enables a commonly used patent filing strategy of filing a first (or primary) patent application in a home jurisdiction and then filing one or more subsequent (or secondary) patent applications within the following year.  This has the advantage of deferring costs until a better understanding of the invention's patentability is gained (via the Search Report for the primary application) and also providing up to an additional year of protection for the invention (since the term of the secondary patents is determined from their respective filing dates not the claimed priority date).  See also: Filing Date and Prior Art.

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Prosecution​

The process of moving a patent application through to grant (or rejection).  This is an iterative process that involves considering and responding to objections that have been raised by the Patent Office by submitting suitable arguments and/or amendments to the application.  See also: Examination Report.

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Publication

A significant milestone in the life of a patent application.  Publication of a patent application typically occurs about 18 months after the first patent application for an invention has been filed, before any patent has been granted.  It is possible to request that the application is published earlier than this.  It is also possible to prevent publication by withdrawing the application before it is published.  Although the patent specification is kept confidential by the patent office before publication, after publication the details about how to perform the invention and the scope of protection being sought, will be publicly available.  The date on which a patent application is initially published can be significant when damages are assessed should a patent ultimately be granted and subsequently enforced. 

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Q

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R

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Renewal Fee

A recurring fee that is payable to a patent office at various intervals in order to keep a patent or patent application active.  It is sometimes also referred to as a maintenance fee (particularly in the US).  Generally, a renewal fee is only payable once a patent has been granted.  However, there are some instances, notably for patent applications with the European Patent Office (EPO), where renewal fees are due for a pending patent application prior to grant.  In the UK, renewal fees are due for granted patents annually from the 4th anniversary of the filing date.  The amounts of the official patent renewal fees for UK patents [↗] are available on the UK Intellectual Property Office's website.  It should be noted that failure to pay a renewal fee will result in a potentially irreversible loss of rights.  

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S

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Search Report

A written report prepared by a patent examiner at a Patent Office to provide the results of their search for prior art that is relevant to a patent application.  Each item of prior art listed in the report will be categorised into categories indicating their relevance to the claimed invention.  For example, category "X" prior art is considered to be relevant to the novelty of the claimed invention.  Similarly, category "Y" prior art is considered to be relevant to the inventive step of the claimed invention.  The prior art that is identified in the search report typically forms the corpus of prior art against which the patent application will be examined (although it is possible for additional prior art to arise later on in the proceedings).  In some cases, the search report may be accompanied by an examination report (sometimes referred to as a "search opinion") providing the examiner's reasoned objections against the patent application based on the prior art that has been found.  See also: Prior Art, Examination Report, Novelty and Inventive Step.

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Specification

A document filed as part of a patent application which describes an invention for which patent protection is sought.  It consists of four main parts, the description, the claims, the drawings, and an abstract.  The claims define the scope of protection for which a patent is sought.  The description, with the assistance of the drawings, explains to a skilled person how the invention can be performed.  It is a core requirement of a patent application that the specification must sufficiently describe the invention to enable it to be reproduced by a skilled person.  Failure to meet this requirement can result in a patent application being refused (or a granted patent being revoked when challenged).  This specification will usually be published by the patent office.  See also: Claims, Drafting and Publication.

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T

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Territory

The geographical area in which a patent has legal effect.  Patents are territorial rights, meaning that a patent granted in one country does not provide protection in any other countries.  It is therefore necessary to obtain patent protection separately in each country or territory in which protection is desired.  To make the process of obtaining a patent more efficient, some countries may belong to regional patent organisations, such as the European Patent Office (EPO).  These organisations typically allow patent protection to be sought in multiple countries at the same time through a single patent application filed with the regional patent organisation.  See also Patent, European Patent Office (EPO), Validation, Patent Cooperation Treaty (PCT) and National Phase.  ​

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Third Party Observations (TPOs)

A submission made by a third party to bring the patent office's attention to additional arguments, prior art, or both.  Provided they are submitted before the patent office has made the formal decision to grant a patent, these submissions will be taken into consideration.  Third Party Observations (TPOs) can be a cost effective way of challenging a patent application.  Furthermore, since they can be submitted anonymously, they can help avoid any commercial or reputational consequences that might result from such a challenge.  See also: Opposition and Invalidity Proceedings. 

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Trade Secret

Confidential commercial information that provides a competitive advantage to the business it belongs to.  In order to qualify as a trade secret, the information must meet various criteria and the business must take various steps to protect it, such as actively maintaining confidentiality by restricting access and through the appropriate use of non-disclosure agreements (NDA).  If these requirements are satisfied the information will automatically qualify for protection as a trade secret allowing various actions to be taken against those who disclose or misappropriate the information.  This protection is relatively weak compared to a registered right, such as a patent, because it does not prevent others from independently deriving the same information.  Furthermore, once confidentiality of the information is compromised, it will probably lose its eligibility for protection as a trade secret.  Nonetheless, in some cases, keeping information as a trade secret may be the best approach to protecting that information.  See also Breach of Confidence, Non-Disclosure Agreement (NDA), and Patent.

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U

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UK Intellectual Property Office (UKIPO)

The official body responsible for the grant of patents covering the UK.  As a contracting state to the European Patent Office (EPO), European Patents granted by the EPO may be validated in the UK, coming under the purview of the UK Intellectual Property Office thereafter.  See also: European Patent Office (EPO) and Validation.

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Unified Patent Court (UPC)

A multi-national court established as part of the creation of the unitary patent system for participating EU member states.  Where a unitary patent has been obtained, any actions, such as infringement or revocation actions, involving that patent fall under the exclusive jurisdiction of the UPC (as opposed to the national courts of the participating member states).  During a transitional period, non-unitary European patents in the participating member states (i.e. those patents that have been individually validated in those states) may have actions brought in either the national courts or the UPC.  To prevent actions being brought before the UPC it is possible (during this transitional period) to "opt-out" European Patents from the jurisdiction of the UPC, thereby requiring actions to be brought against or under the patent in the national courts of each country in which the patent has been validated.  As European Patent Attorneys, UK-based attorneys with the relevant qualifications that are registered representatives with the UPC can represent clients before the UPC.  See also: Unitary Patent and European Patent Office (EPO).

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Unitary Patent

A single patent having unitary effect across all participating EU member states (not all EU member states participate).  It can be obtained from a European patent application by requesting unitary effect with the European Patent Office (EPO) within 1 month of the patent being granted.  Up until that point there is no difference in the procedure from a normal European patent application.  As a result of Brexit, a unitary patent will not have effect in the UK - a European patent application will need to be separately validated in the UK to provide protection in the UK.  The advantage of the unitary patent is that it avoids the administrative burden and cost of validating and maintaining the European patent in each of the states covered by the unitary patent.  The cost of the unitary patent is positioned such that it is likely to be a more cost effective option than validating the European patent in 4 or more of the participating member states, but not when validating in fewer than that.  However, a potential downside of a unitary patent is that it can be revoked in a single action.  See also: Unified Patent Court (UPC) and European Patent Office (EPO).

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Unity

A requirement that a patent application should only relate to a single invention.  This requirement is met (in the UK) if each of the claims relates to the same inventive concept.   Where the patent office considers this requirement is not met, it will be necessary to amend the claims by deleting claims such that the remaining claims do meet the requirement.  However, it is still possible to pursue protection for the claims that have been deleted through the filing of a divisional patent application.  See also: Divisional Application.

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V

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Validation

The process by which a granted European Patent gets converted into a bundle of national patents in the contracting states to the European Patent Convention (EPC).  Each contracting state may specify their own requirements for validating a granted European Patent in that state before it will take effect in that country.  These requirements may include requirements such as filing a translation of the specification of the patent into a national language of that country, and recording an address for service in that country. See also: European Patent Office (EPO) and Unitary Patent.

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W

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Withdrawal

The process of actively informing the patent office that you no longer wish to proceed with a patent application.  It is not necessary to actively withdraw a patent application you are no longer interested in pursuing - the patent office will eventually deem it to be withdrawn when a deadline for taking action is missed.  In some cases this passive approach to abandoning a patent application may be preferable as it maintains flexibility to change your mind up until the point it is deemed to be withdrawn for missing a deadline.  By contrast, actively withdrawing a patent application has near immediate effect and is irrevocable.  Nonetheless, there are occasions where actively withdrawing a patent application is beneficial.  For example, by actively withdrawing a patent application before the patent office has completed their preparations to publish a patent application, the publication of the patent application can be prevented - this may be desirable, for example, when faced with an unfavourable search report.  Similarly, in some situations, partial or full refunds of official fees may be available if a patent application is withdrawn at a particular time.  

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