Stage 1 - Priority

This is the first patent application filed for your technology which determines the Priority date; this date is important for the examination of novelty during stage 3. Usually, we file a UK national patent application as the priority application as it’s often the cheapest option, but this only gives limited protection. Under the Paris Convention, further applications can be filed within 12 months and take advantage of the same priority date so we wait up to 12 months before stage 2.

Stage 2 - PCT

The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an "international" patent application. There is a list of member countries hereLink opens in a new window

This stage lasts for 18 months and postpones the major costs associated with national phase applications while we work out where we need protection and find a licensee. A PCT application is published 18 months after the Priority date, at which point there is no longer any reason to keep your invention secret, although you should be careful only to disclose what is covered by the patent application and not any new data that isn’t included.

Stage 3 - National Phase

Once the PCT stage expires we file national applications in the most important countries for developing, manufacturing and selling the technology. This stage is costly, so we have to decide between adequate protection and cost and will consult any licensees.We usually file applications in Europe and the USA as a minimum.

The applications in each territory can now be considered as separate applications, collectively a Patent Family. Each separate national application will be examined by the national patent office for novelty (based on the state of the art at the Priority Date) and inventive step (could anyone skilled in the art have done this, what’s the clever bit?). Hopefully examination will go well but there may be quite a few rounds of objections from the examiner, each of which we will try to overcome. Some compromises may need to be made and there’s always a chance the application may be rejected in one or more territories.

If an application is granted then it stops being a patent application and is now a granted patent. It can now be used to enforce the owner’s rights to prevent third parties from using the technology without the owner’s consent. If renewal fees are paid when due then the patent will usually be valid for approximately 20 years from the filing date, depending on the territory.

What an inventor can expect from WI:

• WI fully funds patent applications prior to licencing, subject to the terms and conditions of any grant funding.
• WI works with a variety of tendered patent attorneys to draw on different areas and specialties
• Business Development Managers (BDMs) actively manage patent application cases, coordinating communications, establishing meetings and providing guidance and assistance to the academic at each stage of the process
• BDMs will assist you in making any patent disclosures to third parties including NDA drafting

What WI needs from the inventor to facilitate the process:

Do not disclose the invention before an application is filed and then only after consultation with WI.

• To kick start the process, we will need the inventor to complete a Record of Invention form.
• We will need your help to review patent drafts and contribute to the examination process.
• The patent process is full of deadlines so please try to respond to us in a timely fashion. Failure to respond to deadlines may result in the patent application being jeopardised.
• Please don't contact the patent attorney directly. WI need to manage the process to keep track of deadlines and costs.
• A patent is a costly asset. WI can't support it into the National stage (stage 3 fig.1), so we must find a suitable licensee. Your advice and contacts will be invaluable in this process.
• If we can't find a licensee by the national phase we will, at our discretion, abandon the application.

Common Patent FAQs

If I’m an MSc Student does Warwick pay my patent fees?​

If you are on a research project as part of your MSc then the patent application process will be instigated via your principal investigator and initiated by ourselves at Warwick Innovations.

I heard I can’t tell anyone about my work during a patent application?​

Yes, it’s important to keep your invention confidential during the initial stages of the patent application process. Publicly disclosing your invention before priority filing can jeopardize your ability to secure patent protection. It's best to consult with your Warwick Innovations BDM on how to properly handle any disclosures.

Does getting a patent mean I can’t publish my work ever?​

No, getting a patent does not mean you can't publish your work. However, you should file your patent application before publicly disclosing or publishing your invention. Once the patent application is priority filed, you can freely publish your work without jeopardizing your patent rights.

Why can I tell another member of staff at Warwick about my patent but not my external collaborators?​

There is a Non-Disclosure Agreement (NDA) in your academic employment contract that specifies what constitutes university confidential information that cannot be disclosed to third parties, such as intellectual property. As an employee of Warwick University, you must maintain the confidentiality of this information whether it is originating from your own activities or those of other Warwick researchers and not disclose to researchers or third parties outside of Warwick unless explicit permission is granted.

Who owns the patent?​

Warwick (and most other UK universities) has a specific intellectual property policy stating that the university owns all intellectual property resulting from research conducted by its employees or using university resources.