Preliminary Prior Art Search

This consists of a search of books, papers, patents and patent application publication, together with other sources of information which may reveal that your invention has previously been disclosed elsewhere in the past.

Drafting

Preparing a patent specification suitable for filing a patent application will involve writing:

• An abstract of the invention
• A summary of the technological field of the invention
• A summary of the invention
• A description of the invention
• Drawings, if applicable
• A set of claims (i.e. what you are declaring the invention to be)

An important, but optional step, involves performing a preliminary prior art search before drafting. This will provide you with valuable information about whether your proposed invention or aspects of your proposed invention are novel and inventive. This also allows the drafter to pitch the scope of the claims at the correct level to ensure that you have the best shot at securing claims that are as broad as possible in view of the prior art.

 

Filing

A patent application is filed by lodging an application for a patent at a National or Regional Patent Office in the jurisdiction of interest. The application is generally made up of the written patent specification, and an application  form. It must be accompanied by the correct application fees.

As patents are territorial in scope,  it is essential to file a patent application in each county where patent protection is required. However, for a significant portfolio of patent applications, this can be quite expensive, since the application may have to be translated and individual  fees will have to be paid in each country of interest.

Fortunately, Regional and International Patent applications offer a more economical alternative to a bundle of individual national applications. This is because such an application can be filed, searched and examined (if necessary) in the one language. For example, a European patent application can become a French, German or UK patent, if it is successfully granted. An International (PCT) application originally filed in English can later be turned into a Chinese patent application. One important point to note is that the PCT application never matures into a granted patent. It simply allows the applicant to carry out the initial stages of the process centrally at one Intellectual Property office and in one language, rather than at each individual National Intellectual

Property Office, thereby saving the applicant significant amounts of money during the early stages of the patenting process.

The type of product and your plans on how to market it will determine your patenting strategy.
For example, depending on  your budget and your commercial strategy for a product or a process, you may decide to file some of the following types of Patent applications:

1. National Patent Applications (e.g. Irish, US, UK, Chinese or Japanese patent application)
2. Regional Patent Applications (e.g. a European or a Eurasian patent application)
3. International Patent Application

Prior Art Search

After the application has been assigned a filing date, an Examiner will search the prior art for the subject matter of the invention as defined in the claims section of the application. The results are reported in the form of a Search Report and are often accompanied by the Examiner’s opinion on the patentability of the invention.  When the Examiner finds relevant prior art documents, he will categorise these documents as being either prejudicial to the novelty and/or the inventive step of the invention.

The search results allow the applicant to decide whether or not they wish to proceed with the application process. For example, if all of the claims lack novelty, the Applicant may consider abandoning the application. Alternatively, there may be a suitable amendment to the claims which may be made to render the claimed subject matter novel and inventive over the prior art found in the search.

Formalities Examination

After the application is lodged, a formalities examination is carried out to ensure the application meets the statutory requirements in order for a filing date to be assigned. If the requirements are not met, then a filing date will only be assigned when any deficiencies noted by the Examiner have been corrected.

Substantive Examination

After filing a patent application for your invention, you must be prepared to engage with the Intellectual Property Offices in the territories in which you are seeking protection for your invention during the examination of your application. This phase of the application process is known as ‘prosecuting the patent application’. The Examiner in the country of question will assess the claims for compliance with the legal requirements for grant of a patent in that country. If all requirements are deemed to be met after examination, the Examiner will  grant the patent.

Rounds of Prosecution

Frequently, the Intellectual Property Office will object to your application, by alleging that it is not clear, or lacks novelty or inventive step. It will be up to you and your Patent Attorney to devise arguments as to why you believe your application is patentable or, alternatively, you may have to amend your application in order to overcome the objections. Much of the correspondence from the Intellectual Property Office sets extremely strict deadlines for responding to the objections.

If you do not respond in time, you risk losing your patent rights.

Refusal Phase

If your application is refused, there may be a number of options available to appeal the decision.

Grant Phase

If an Intellectual Property Office  accepts that the subject matter of the invention is novel and inventive, or has accepted your arguments as to why your invention is patentable, the patent will be granted.

The whole process from application to grant may take anywhere from 3 to 5 years. It could take considerably longer, depending on factors ranging from the  technology area to the territories in which patent protection is sought.