Science, People & Politics. Issue Two (April to June), Volume ii, VII, 7th April, 2011.

Divided by a common language:US and UK Patent Law
By Jane Lambert

In 2004 the European Patent Office (EPO) commissioned Roland Berger Market Research to ascertain the cost of obtaining and maintaining a typical European patent over 10 years1. The researchers found that a European company could expect to pay Euros 31,600 whereas a US company would expect to pay about Euros 10,250 in respect of a similar patent for the US2. Much of the difference was attributable to the need for translations into the languages of each of the designated states, a requirement now reduced by the London Agreement3. Nevertheless, the US is still perceived as a friendlier jurisdiction for inventors than the UK, particularly for inventors who are private individuals, or members, or employees of small businesses. That perception no doubt explains why the US Patent and Trademark Office received 425,966 applications in 2006 of which 47.9% were from non-residents while the UK Intellectual Property Office received only 25,745 of which 67.2% were from British residents4.

The word patent derives from the term letters patent, which basically means open - as opposed to unsealed - letters to the public from the Sovereign, and authenticated until 1883 by the Great Seal. Thereafter patents sealed with the seal of the Patent Office had the same effect. Only after the 1 June 1978, when the Patents Act 19775 came into force, did the Intellectual Property Office and European Patent Office issue certificates of grant instead of a seal. Patents are a means by which the Crown grants privileges of all kinds: not just monopolies of new inventions, though in both the US and the UK a patent does confer a monopoly of a new invention, which may be a product or a process. In the case of a product the patent confers an exclusive right to prevent third parties not having the owner's consent from making, using, offering for sale, selling, or importing the product6. If the invention is a process, the patent prevents third parties not having the owner's consent from using the process, offering it for sale or importing products obtained directly by that process7.

In the US a patent can be granted for any "new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement8." That definition is broad enough to include anything under the sun9 made by man, and has been held to include software and business method inventions that are fundamental to the modern information economy. Under US law a patent can also be granted for distinct and new varieties of plants, including those cultivated, and mutants, hybrids, newly found seedlings, other than tuber-propagated plants, or plants found in an uncultivated state10, and for new, original, and ornamental designs for articles of manufacture11. In the UK new plant varieties are protected as plant breeders' rights under the Plant Varieties Act 199712, and new designs having individual character as registered designs are protected under the Registered Designs Act 194913. Patents for inventions are known as utility patents in the US to distinguish them from plant and design patents.

By contrast s.1 (2) (c) Of the UK 1977 Patent Act excludes from the definition of a patentable invention:

"(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer".

That exclusion prevents such matter from being treated as an invention for the purposes of the Act only to the extent that a patent or application for a patent relates to that thing as such. Although the words "as such" have enabled the Court of Appeal to establish guidelines that allow some software implemented and business method inventions to be patented14, applications for patents for the following inventions have been refused:
a computer system for optimizing an investment portfolio to reflect the investor's wishes on risk, investment spread and investment limits;

• an internet-based system for allowing individuals to club together to benefit from bulk purchase discounts: those who commit themselves early get a better price;

• a reminder system which sends a single consolidated reminder for all the actions necessary in the next week or month, rather than sending lots of separate reminders;

• a reverse auction system which also monitors a purchaser's purchasing history so as to recommend further purchases that are likely to be of interest;

• an online betting system that automatically adjusts the odds to ensure that payouts will be of rounded amounts;

• an online trading system which allows a bid to have visible and concealed portions, so a bidder can enter the market without distorting it;

• a system for automatically optimizing the scheduling of airline crew;

• an internet-based grocery shopping system which tells customers how much freezer space their order will require;

• a system for sharing information about semiconductor product design; and

• a system for managing a debt-recovering process15.

Though the US Supreme Court has recently restricted the scope for software patents in Bilski and Others v Kappos 16 it is likely that at least some of these inventions disallowed in the UK would have been patentable in the US.

In the US an application for a patent must be made or authorized by the inventor17, and, indeed, he or she must make an oath "that he believes himself to be the original and first inventor18 of the process, machine, manufacture, or composition of matter, or improvement thereof ...".

This requirement can be dispensed with only where,

"an inventor refuses to execute an application for patent, or cannot be found or reached after diligent effort19 .

In those circumstances,"a person to whom the inventor has assigned or agreed in writing to assign the invention or who otherwise shows sufficient proprietary interest in the matter justifying such action may make application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage."20

In the UK any person may make an application for a patent either alone or jointly with another. S.7(2) of the UK Patents Act 1977 provides that a patent for an invention may be granted primarily to the inventor or joint inventor21, though "any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, or who was or were at the time of making the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom" may be granted the patent in preference to the inventor or joint inventors22.

The American requirement that a patent application must be made by or on behalf of the inventor points to another important difference between the laws of the US and UK (and for that matter most of the rest of the world), namely that patents are granted in the US to the first to invent whereas patents are granted in the UK and most other countries to the first to file. That gives rise to an administrative procedure in the US known as an "interference"23 which enables a determination of who is entitled to the invention where there are two or more people who claim to have been the first inventor. In an interference a tribunal called the Board of Patent Appeals determines questions of priority of the inventions and may determine questions of patentability. The practical effect of these provisions is that inventors (and their employers), in the UK as well as the US, must keep a detailed log of their research and development work in order to put themselves in a position in which they can take the oath that they are "the original and first inventor" if they wish to apply for a patent in what is still the wealthiest economy on earth.

One of the conditions of patentability in all countries is that the invention must be new. In the UK and most other countries an invention is new only if it does not form part of the "state of the art"24. S.7 (2) of the UK Patents Act 1977 defines the state of the art in the case of an invention as "all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way." If the invention is used, published in a scientific paper or described in a presentation by the inventor or otherwise, then it is made available to the public and the right to apply for a patent for the invention in the UK is lost.

In the US the law is rather more forgiving in that a patent may still be granted if "the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States."25 A case that illustrates the difference in approach between the two jurisdictions is Boston Scientific Ltd and Another v Palmaz and Another26, where Professor Palmaz's patent was challenged on the ground that he had disclosed the invention in a 5 to 10 minute presentation to 40 members of the Radiological Society of North America.

In all countries a patent is infringed if a product or process falls within one or more of the patent's claims. A "claim" is usually one of a several numbered paragraphs that appear in a patent specification after the description of the invention. The purpose of the claims is to set out the scope of the monopoly that the applicant claims for his or her invention. In the UK. as in the rest of Europe, claims are interpreted in accordance with article 69 (1) of the European Patent Convention:

"The extent of the protection conferred by a European patent or a European patent application shall be determined by the terms of the claims. Nevertheless, the description and drawings shall be used to interpret the claims."27

This article is amplified and clarified by the Protocol on the Interpretation of Article 69 EPC28&$32;which provides:

"Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties."

This article and protocol has spawned a massive case law in the UK culminating in the decision of the House of Lords in Kirin-Amgen Inc and Others v Hoechst Marion Roussel Ltd and Others29. In that appeal the law lords held that claims have to be given a purposive construction but the meaning of a claim must still be anchored on the wording used by the person who drafted the patent application.

In the US the Courts have developed a rule known as "the doctrine of equivalents" that extends protection outside the language of the claims to cover matter that performs substantially the same function in substantially the same way to obtain the same result as the claimed matter. The rationale for that doctrine, as explained by Judge Learned Hand in Royal Typrewriter Co. v Remington Rand Inc30, is to "temper unsparing logic and prevent an infringer from stealing the benefit of an invention."

Though superficially very attractive, that doctrine creates uncertainty as to what is or is not included within a monopoly and, in some cases creates injustice because an applicant has defined a claim narrowly in order to overcome an examiner's objection. In order to correct that injustice the American courts have had to develop a countervailing doctrine known as "file wrapper estoppels" that prevent patentees claiming in infringement proceedings what they had previously disclaimed in prosecution.

It will be appreciated that this is an enormous topic and that an article of this length can be no more than an introduction. At least as important as a comparison of the substantive law in explaining why the US provides a more favourable framework for innovation would be a comparison of the way in which the law is applied in each country. For instance, small and medium enterprises and individual inventors are deterred from enforcing their intellectual property rights in England by the high cost of litigation and the prospect of paying the other side7's costs if they fail. In most cases in the US each party pays his or her own legal fees regardless of the outcome whereas in the UK the successful party is entitled to a substantial contribution to his or her costs from the unsuccessful one.

If anyone wishes to discuss this article further he or she can call the author on 0800 862 0055 or contact her through her website at www.nipclaw.com.


1. A specification consisting of 18 pages (11 of description, 3 of claims and 4 of drawings) with 10 pages designating France, Germany, Italy, Spain, Switzerland and the UK
2. Roland Berger Research Study on the Cost of Patenting, EPO Munich 2005.
3. Agreement on the application of Article 65 of the Convention on the Grant of European Patents.
4. WIPO World Patent Report 2008 (the US whereas the UK IPO received 25,745 of which 32.1% were non-residents).
5. http://www.ipo.gov.uk/patentsact1977.pdf
6. Art. 28 (1) (a) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (Annex 1C of the Marrakech Agreement Establishing the World Trade Organization, signed in Marrakech, Morocco on 15 April 1994.) (TRIPS) 7. Art. 28 (1) (a) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (Annex 1C of the Marrakech Agreement Establishing the World Trade Organization, signed in Marrakech, Morocco on 15 April 1994.) (TRIPS)
8. http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_101.htm
9. http://www.ipo.gov.uk/regdesignactchanges.pdf
10. USC 35 161 (http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_161.htm)
11. USC 35 171 (http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_171.htm)
12. http://www.legislation.gov.uk/ukpga/1997/66/contents
13. http://www.ipo.gov.uk/regdesignactchanges.pdf
14. Symbian Ltd v Comptroller General of Patents (2008) EWCA Civ 1066 (8 Oct 2008) [2009] Bus LR 607, (2008) EWCA Civ 1066, (2009) RPC 1 (http://www.bailii.org/ew/cases/EWCA/Civ/2008/1066.html)
15. http://www.ipo.gov.uk/pro-types/pro-patent/p-law/p-pn/p-pn-businessmethod.htm
16. 561 U.S. ___ (2010)
17. 35 USC 111 (a) (i) http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_111.htm
18. 35 USC 115 http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_115.htm
19. 35 USC http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_118.htm
20. 35 ibid
21. S. 7(2)(a). An inventor is defined by s.7 (3) as ?the actual deviser of the invention?.
22. S.7(2)(b).
23. 35 USC 135 (http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_135.htm)
24. S.2(1) Patents Act 1977 (http://www.ipo.gov.uk/patentsact1977.pdf)
25. 35 USA 102 (b) http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_102.htm
26. (2000) EWCA Civ 83 (20 March 2000) (http://www.bailii.org/ew/cases/EWCA/Civ/2000/83.html)
27. http://www.epo.org/law-practice/legal-texts/html/epc/1973/e/ar69.html
28. http://www.epo.org/law-practice/legal-texts/html/epc/2010/e/ma2a.html
29. (2005) RPC 169, [2005] RPC 9, [2004] UKHL 46, (2005) 28(7) IPD 28049, [2005] 1 All ER 667 31. (http://www.bailii.org/uk/cases/UKHL/2004/46.html)
30. 168 F 2d 691,682

Peter Groves. A Dictionary of Intellectual Property Law, Edward Elgar, Northampton. 2011. ISBN 978-1-84980-777-7.
Roland Berger ResearchS tudy on the Cost of Patenting, EPO Munich 2004.
Richard Miller QC and Others. Terrell on the Law of Patents, 17th Edition. Sweet & Maxwell.

*Jane Lambert is a barrister of Lincoln's Inn and of the Northern Circuit.'After education at the University of St. Andrews and post graduate research in history at UCLA (University of California, Los Angeles) she worked as a research consultant for the Economist Intelligence Unit and as an analyst for the motor components industry, for a clearing bank and then for a firm of stockbrokers before reading for the Bar. After pupillage in the chambers of Roy Beldam QC (later Lord Justice Beldam) and Paul Baker QC (later Judge Baker QC) she practised first at the Chancery bar in London.'In 1983 she was legal adviser to VISA International for the Europe, the Middle East and Africa, where she learned her intellectual property and information technology law. Returning to practice in Manchester she developed a reputation as the first provincial barrister to specialize in intellectual property and technology law. In 1997 she opened NIPC as the first,'and so far only, intellectual property and technology chambers outside London. She has appeared in several leading cases on patents, copyright,'passing off and computer contract law and is the author of several books and articles on these topics.

Commissioning editor, Helen Gavahan. Production, Helen Gavaghan. Between 1984 and 1987 Helen Gavaghan was the technology news editor of New Scientist and was delighted to edit a patent page, written by Barry Fox, within the magazine's technology section.


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