Patents provide protection for inventions, and in particular provide a right to prevent third parties making, using, selling, or otherwise commercially exploiting the invention which is defined by the claims of the patent. New products, and articles which function in a new way are patentable, as are machines, methods, processes, compounds and compositions. However, the item to be patented has to be new and unobvious at the date of the application for the patent.
First Steps
An initial patent application is filed with a specification, which is intended as a document of record, to establish a priority date for the invention for which a patent is sought. The specification must, essentially, include a description of the invention and be accompanied by drawings. It is our recommendation to include claims, which define the scope of protection being sought by way of the patent, at the outset.
Any patent granted, in due course, in pursuance of the application will not be invalidated by a subsequent disclosure of the subject matter disclosed in the specification. Therefore, once the first application is on file, the applicant is free to take steps to commercialise the invention. This may involve manufacturing and selling goods, or otherwise making details of the invention public. In contrast, such steps taken before the application has been filed can result in the application being invalid.
The country in which the first application is filed is generally chosen in accordance with cost and convenience. A first application filed at the United Kingdom Intellectual Property Office (UKIPO) requires the payment only of low official fees and will also provide an early search from a UKIPO Examiner. Where it is particularly important for clients to obtain patent protection in the United States of America, it can be advantageous to make the first filing in the US.
It is a skilled job to draft a patent specification. It has to describe an invention in sufficient detail to enable someone skilled in the art to perform the invention. The claims, which have to be supported by the description, define the scope of the protection, and therefore need to be as broad as possible without covering prior art. As inventions are frequently protected in more than one country, it is also necessary to ensure that the final documents do not offend against the differing requirements of various countries.
We are skilled and experienced at drafting. In consultation with inventors, we will produce a patent specification for filing in the chosen jurisdiction which is sufficiently robust to withstand the citation of relevant prior art and is generally in accordance with requirements worldwide, despite regional differences.
The Priority Year
Within one year of making the initial application, a decision must be made as to the future of the first application, and as to where protection might be required.
Under various international agreements, a first patent application automatically provides a basis for claiming priority in practically all the countries in the world. This means that further applications in respect of the invention can effectively have the same date as the initial application provided that those further applications are filed within twelve months of the first application date. This twelve month priority period is not extensible.
Typically, an applicant filing in the UK in the first instance might choose to continue that UK case. However, within the priority year applications in countries outside the UK might be filed, to claim the UK priority date, and to provide protection for the invention in those other countries.
We often recommend that any subsequent patent applications be filed accompanied by a final specification which has been amended since the first application was filed. For example, the specification could include details of all improvements and modifications made to the invention since the first patent application was filed.
The Procedure For Applications In The UK
A request that the invention be searched, and the relevant official fee paid, must be filed within the first twelve month period from the filing of the first application. As indicated above, when the first filing is made at UKIPO, we often request search on filing. Thereafter an official search is carried out by the UKIPO to determine whether the invention is new and unobvious. The results are typically available within three months from the date on which the search request is filed.
At a date approximately eighteen months after the filing date of the first patent application in the UK, the final specification as filed is published by the Patent Office. A request for substantive examination has to be filed, and the relevant official fee paid, within six months of that publication. We determine with the applicant, at that time, whether to continue with the application having seen the result of the official search.
The next stage is that the specification is examined in detail by an examiner in UKIPO who will assess the novelty and inventiveness of the invention and will raise any relevant objections to the application. When all such objections have been overcome by negotiation with the examiner, the patent is granted and the specification is published in its final, accepted form
The maximum term of the patent is twenty years from the filing date of the final specification in the UK.
Annual renewal fees are payable to the UKIPO in respect of the fifth and subsequent years of the term. Non-payment of a renewal fee will result in the patent ceasing to be in force after the date on which the relevant fee was due.
Protection Overseas
There are three main routes for obtaining patent protection both in the UK and overseas. These are:
- an individual national application in any country required,
- a European application at the European Patent Office (EPO), and
- an International application under the Patent Cooperation Treaty (PCT).
National Patent Application
Clearly, a national patent application can be filed at the respective national patent office of each country where protection is required.. Each patent office thereafter conducts its own processing of the application and, if the application succeeds, a national patent is granted.
There is, of course, an individual cost for filing each patent application, and this can be quite substantial if the specification has to be translated into the local language. There are also costs in each country for prosecuting the application. These prosecution costs, and the length of time from filing to grant, vary enormously from country to country and from application to application. In countries such as South Africa there are virtually no prosecution costs whereas in the more expensive countries, for example Japan or USA, both filing and prosecution costs can be substantial. In many countries there are additional fees upon grant.
European Patent Application
A single European patent application can be filed at the European Patent Office (EPO). The European patent application is prosecuted before the EPO and, if successful, results in the grant of a European patent which is subsequently registered in some or all of the originally designated countries. Currently there are 36 member countries of the European Patent Convention (EPC) which can be designated in a European patent application. These 36 countries include all 27 member countries of the EU and 7 others. Post grant registration is a mere formality and there is no further examination by the national patent offices.
On filing a European patent application, a search fee is payable to the EPO. Eventually, a search report is issued and then published. Six months after the publication of the search report, the examination fee and a flat designation fee has to be paid.
For European patent applications, maintenance fees must be paid to keep the application pending. There will also be attorney fees to pay during the prosecution of the application. Once the Examiner has indicated that the application can proceed to grant, grant formalities have to be completed at the EPO. The applicant then registers the patent in a selection of the originally designated countries. There is no requirement to register in all those countries initially designated; a selection can be made at the end of the prosecution. National renewal fees will then become payable in each country in which the European patent is validated in order to maintain the national patents in force.
There is likely to be a cost saving in following the European route rather than the national route where protection is required in three or more countries However, the EPO are particularly slow in dealing with applications, and are "raising the bar" to prevent grant of increasing numbers of applications. The European system also provides post grant opposition, enabling competitors to seek to revoke the patent for all countries.
International Patent Application
A single International patent application under the Patent Cooperation Treaty (PCT) can be filed to potentially provide protection in any of 141 countries.
The International application is subjected to a search, and the search
report is issued about four to six months after filing. There is also an opinion issued as to the patentability of the invention.
Within a term which is generally 30 months from the earliest priority date, it is necessary to convert the International application into national and regional patent applications at the local patent offices concerned.
There are two major advantages of the PCT. First, the result of the search of the International application is available before a decision has to be made concerning the filing at the national or regional patent offices. If an unfavourable search report is received, then the cost of these filings can be avoided. The second advantage is that the costs involved in making the national or regional filings are deferred for eighteen months. The system also provides a means to keep open the option of filing the application in countries for which no final decision has yet been made as to whether to seek patent protection.
We determine, with our clients, the best route to choose to obtain patent protection, taking into account the nature of the invention and the clients' commercial needs.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
