Self-filing a UK Patent Application - a quick guide

by Amy Green⁽¹⁾
Innovate Product Design

A common misconception about patenting is that the process is always expensive. Whilst it is true that patent agents (or patent attorneys) can command large fees, there is a more cost-effective way for individuals wishing to protect their inventions on a much smaller budget - this is known as self-filing. This article will provide a step-by-step guide to self-filing a patent application with the UK Intellectual Property Office (IPO) without tearing your hair out!

What is self-filing'?

There are two main routes to file a patent application. The first is to hire a patent agent, also known as a patent attorney. A patent agent is a legal professional trained to represent clients seeking to obtain a patent. They can draft your patent application for you and file it on your behalf, acting as a mediator between yourself and the UK Intellectual Property Office. Patent agents can be expensive, charging between 1000 and 3000 to draft and file your initial application with an hourly fee of around 200 for further work (correct as of August 2009). If you do have the budget for this, it is often a good idea to use the services of a patent agent as they can bring a wealth of experience and knowledge to your patent application. Should you choose this route, you need to ensure that your patent agent is registered with the Chartered Institute of Patent Attorneys (CIPA).

If the services of a patent agent fall outside of your budget, it is entirely possible to draft and file an application alone without the help of a legal professional. Instead of hiring a patent agent to draft and file your application, you can draft it and send it to the IPO yourself. Essentially, this is the process of self-filing'. Though it may appear daunting to negotiate the system of rules and regulations surrounding intellectual property without the guidance of a lawyer, many individuals have done so before with great success. Following this guide, self-filing need not be a stressful experience!

The Patent Specification

The first step in the self-filing process is to prepare a patent specification. The patent specification outlines exactly what you are trying to protect, how it works and why it is needed. As the inventor of the idea, you have probably thought about these questions already and therefore have a great insight into how they might be answered. Before sitting down to write your application, it may be useful to write rough answers for each of these questions in note form to gather your thoughts.

A patent specification can be structured in a number of ways, but there are some features that are almost always present:

Abstract - in brief, what is your invention? A few sentences explaining in general what your invention is and briefly how it works.

Field of the invention what area does the invention relate to? For example, for a new accessory for a motor car you may write "this invention relates to motor cars, more specifically an accessory for a motor car".

Background of the invention why is the invention necessary or useful, and what has it developed out of? Continuing with the motor car accessory example, it may be that your accessory is an improvement on a previously existing accessory. Here you can discuss why the improvement is needed. It is also usually a good idea to discuss some prior art' here patents that have already been filed by someone else relating to your idea. To find relevant prior art it is advisable to commission a patent search. Companies such as Innovate Product Design can provide this service for a small fee.

Detailed Description how exactly does your invention work? Here you should describe in detail the exact components, systems, methods and so on that make your invention work so that someone else skilled in the area would be able to build it using your instructions.

Claims what exactly are you trying to protect? This is the legal part of the document and can often be the most tricky, as there are specific conventions for wording, punctuation, grammar and structure. The idea is to write precise, one-sentence statements defining what your invention is. These statements will outline exactly what is being protected in your name and what people may be held legally liable for if they infringe upon it. For this section in particular, it is a good idea to find a self-help book. There are many on the market and can easily be bought online or in good bookshops.

Drawings what does your invention look like? You need to include black and white line drawings reflecting your detailed description, perhaps showing the components making up your invention.

Filling out the forms

Once you have your patent specification written, all that remains is to sort out the paperwork. To file your patent application, all you need to do initially is send a copy of your patent specification and a completed copy of Form 1, Request for grant of a patent' to the UK IPO. The form is very straightforward, requiring a name, address and the number of pages you are submitting as your patent specification. This may either be done by post or online. To obtain a hard copy of the form to post call the Intellectual Property Office on 08459 500 505. Alternatively, to send the forms and specification online visit http://www.ipo.gov.uk

Once you have sent these to the IPO, you should receive a receipt within a few days which includes your patent application number and filing date.

After you have received these, you have up to twelve months to inform the IPO that you would like to proceed with your patent application and that they should investigate the idea further to decide whether or not to grant you a patent. To inform them of this, you must fill out Form 9a Request for a search' and Form 10 Request for a substantive examination'. These can be obtained from the IPO as above. Along with these forms, you must also send the appropriate fees - 130 with Form 9a, and 70 with Form 10 (correct as of August 2009). Once these have been sent, the IPO will start their work on your application and decide whether or not to grant you a patent.

Next Steps

With all of the correct forms in, all that's left to do is wait! It may take some time for the IPO to come to a decision, but in the mean time you will be able to say patent pending' and approach industry with your idea. For maximum protection during this period, it is always a good idea to ask those you approach to sign a confidentiality agreement, a legally-binding document ensuring they cannot further your idea or discuss it with anyone else without your express permission.

For further information on self-filing a patent application, contact the IPO. Alternatively there are companies who can help with self-filing, such as Innovate Product Design.

Best of luck with your application!

Article submitted Monday, September 14, 2009 & read 150 times.

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» left by Ronyae (2 years 146 days ago.)

Amy, good article. I'm wondering if there is 'self filing' in the U.S.? Thanks for sharing this information with us.
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