We take a look at the basic patent process, including how and where to file an initial patent application, what happens after filing, and how to expand your protection overseas.
A patent is a legal right enabling the owner to stop someone else making use of an invention. As patents are territorial rights, a patent is required in each country of interest if protection is required in multiple countries. The patent process involves several stages – here’s a typical filing strategy followed by timescales and how long the patent lasts once granted.
An example of a typical filing strategy involves filing a national patent application initially (for example a UK patent application) and following up with an International application, otherwise known as a Patent Cooperation Treaty (PCT) application.
The UK patent application includes a description of the invention with reference to one or more drawings and a set of claims defining the scope of the invention. The application is usually filed with a search request. If you desire accelerated prosecution, the application can be filed with both a search request and an examination request. About 6 months after filing, the UKIPO will normally issue a search report indicating documents that are considered to be relevant to the patentability of the invention. If an examination request was also filed on filing, the UKIPO will issue a combined search and examination report indicating not only relevant documents but also a patentability opinion. This effectively starts the prosecution process and the UKIPO communication will indicate a date by which to reply to the combined search and examination report.
Meanwhile, a deadline of 12 months from filing the UK patent application is set to file applications overseas. A popular option is to file an International patent application, whilst claiming priority from the initial UK patent application. The International application reserves your right to later seek patent protection in more than 150 countries, with a view to pursuing widespread patent protection. The International application is essentially a mechanism for buying a further 18 months of time before you have to commit to separate applications in each country of interest as well as to undergo the associated costs.
Around 18 months after filing the initial UK application, the application will be published such that the whole content will be visible to third parties.
Within 18 months of filing the International patent application, namely about 2.5 years after filing the initial UK patent application, separate patent applications would need to be filed in the countries that are of interest to you. For example, separate patent applications can be filed in key markets such as Europe, the US, China, Japan and/or Australia. This is referred to as national or regional phase entry.
In some cases, it may be appropriate to skip the International patent application, and instead file separate national patent applications straight away at the 12 month priority deadline. This route can have a slightly lower overall cost, but it brings forward your decisions about country coverage, and it also brings forward the peak cost point for an international filing programme compared to the route using the International application. The most appropriate route for you will depend on your commercial context and company goals.
For most countries, the patent process typically takes about 2 to 5 years to complete, depending on how many cycles of issuing examination reports and filing responses are required. Particularly complicated cases could take longer. In many countries, mechanisms exist for speeding up the process where necessary.
For UK patent applications, Applicants have 4.5 years from the initial filing, or 12 months from the first examination report (whichever is later), to get the application in order for grant.
In Europe, on average it takes about 3 to 5 years from the initial filing for a European patent to be granted.
Once granted, a patent can last for 20 years from the filing date of the patent application, if maintenance/renewal fees continue to be paid throughout the life of the patent. Maintenance/renewal fees are due at regular intervals, usually annually, until 20 years from the filing date.
Get in touch if you would like to know more about the patent application process!
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