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The Patent System

» Posted on: 18 May 2010
» Posted by: Tony Catterall
» Service area: Intellectual Property

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TWe are often asked by clients with IP in their businesses to provide an explanation of the patent system. Here our guest author, specialist intellectual property barrister Jonathan DC Turner of 13/14 Old Square, Lincoln’s Inn, London, WC2A 3UE http://www.13oldsquare.com/jonathan_dc_turner.htm provides a layman’s guide to some basic aspects of the patent system.

The different parts of a patent.

A patent contains three elements:

  1. A description of the invention;
  2. drawings referred to in the description; and
  3. claims

The patent as a whole must disclose the invention in a manner which is sufficiently clear and complete for the invention to be performed by a person skilled in the art (i.e. the relevant field). This function is achieved essentially by the description and drawings.

The function of the claim or claims is to define the extent of the invention and hence the protection accorded to the patentee. They must be clear and concise and they must be supported by the description.

The scope of the claims

The scope of the claims determines:

  1. whether the patentee can object to the manufacture and sale of a product or the use of a process without its licence; and
  2. whether the requirements for a valid patent, such as novelty and inventive step, are satisfied.

A patentee can, in principle, object to the manufacture and sale of a product or the use of a process without its licence if, but only if, the product or process is within the scope of one or more of the claims. On the other hand, if the scope of a claim covers a product or process which is not new and inventive, a patent should not be granted. If a patent has been granted with such a claim, it is invalid and should be revoked.

A claim of a patent typically specifies a combination of features, known as “integers”. The patentee can, in principle, object to the unlicensed manufacture and sale of a product or the use of a process if the product or process contains each of the integers specified in one or more of the claims. On the other hand, a claim lacks novelty or inventive step if, but only if, the combination of all of the specified integers has previously been made available to the public (the “state of the art”) or is obvious from the state of the art.

Use of multiple claims

Patent applications and patents normally contain one or more series of claims of differing scope, so that if the broadest claim lacks novelty or inventive step, the application or patent can readily be amended by the deletion of that claim. Usually the broadest claim in the series is placed first.

It is common to present a principal claim (“independent claim”) which sets out each feature of a claimed combination, followed by other claims (“dependent claims”) which specify the combination referred to in the independent claim by reference together with one or more additional features, eg

“2. A trundlehumper as claimed in claim 1 with a widget to stop the motor automatically when a red line is crossed”.

In this example, claim 2 comprises all of the integers in claim 1 with the additional feature that there is a widget to stop the motor automatically when a red line is crossed.

In the above example, claim 1 is broader than claim 2, in that the scope of protection of claim 1 extends to trundlehumpers with the features specified in it whether or not they also have a widget to stop the motor automatically when a red line is crossed. But claim 1 is also more vulnerable than claim 2, in that it lacks novelty if a trundlehumper as claimed in it was already known to the public; whereas claim 2 would survive if it was not known or obvious to have a trundlehumper as claimed in claim 1 with a widget to stop the motor automatically when a red line is crossed.

Applying for a patent

To obtain a patent it is necessary to apply to the patent office. A national patent office (such as the UK Intellectual Property Office) can grant a patent for the national territory, but not for other countries. So if protection in Germany (for example) is desired, it is necessary to apply for a patent in the German patent office.

Alternatively, the European patent office can grant a patent for most countries in Europe, including the UK and Germany. It is also possible to file an international patent application (sometimes called a world patent application) for patents in numerous countries around the world, but this has to be converted into separate national applications and/or a European application at a later stage in the procedure.

Drafting a patent to obtain effective protection requires considerable skill. Professional advice from a patent attorney is highly advisable.

Fees are payable to patent offices at different stages of the procedure. The amounts vary depending on the office and the number of claims, but can add up to a substantial sum, particularly if protection in a number of countries is sought.

Search for prior art

When an application for a patent is made in the UK or Europe, the patent office first searches the literature (particularly previously published patent applications and patents) to see if the invention as claimed is already available to the public or obvious from what is already available (called the “prior art”). The patent office then publishes the application under a number ending in ‘A’ together with its “Search Report” identifying any relevant prior published documents which it has found.


The patent office then examines the patent application against the prior art identified in the Search Report and provides a further report (the Examiner’s Report) indicating whether it considers that the requirements for granting a patent have been met and if not, why not.

The applicant is given an opportunity to respond to any objections taken by the Examiner, either by arguing that they are incorrect or by submitting amendments to the application which overcome them (or possibly both).


An amendment often involves adding a feature or features to one or more of the claims, where a claim as drafted lacks novelty or inventive step, but a combination of the features of that claim and a further feature or features would satisfy these requirements. Where a feature is added to an independent claim, it is also added (by reference) to each of the subsidiary claims which depend on that independent claim.

A feature added to a claim by an amendment must be present in the description or another claim of the patent application as filed, because it is not permissible to add matter to the application as filed.


If the applicant’s response satisfies the Examiner, the patent is then granted (as amended, where applicable) and published under the same number as the published application but with the suffix B.

The patent office file, including the Examiner’s Report and the patentee’s response to it, is available to anyone who asks the patent office.

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