Processes and Timescales for Obtaining a Patent?
Broadly speaking, similar basic procedural steps are found in the patent systems of most jurisdictions. However, there are differences in how these basic procedures are implemented. In this article we summarise the main steps in obtaining a patent and comment on how some of these steps are implemented differently in the European and United States patent systems.
Filing an application
The first step towards obtaining a patent for an invention is to file a patent application. The application must include a detailed description of how to implement the invention and one or more claims defining the extent of protection that is sought. See our article Requirements for Filing a Patent Application for more details of this.
The date on which the application is filed (or the date on which a relevant earlier application is filed if priority is claimed or for a divisional application - see our articles: What is Priority? and Filing European Divisional Applications) is a critical date for the application. This date is generally referred to as its priority date.
The invention described in a patent application is kept secret by the patent office for the first 18 months from its priority date after which the application is published. (NB: some US patent applications are not published prior to the issue of a patent). If an applicant does not want the application to be published, e.g. because they decide they would prefer to keep the invention secret, they must withdraw the application sufficiently far in advance of the expected publication date.
A search is performed by the patent office to identify information known to the public before the priority date for the application which is relevant to the invention as claimed. In particular, the search is intended to identify the previously known information (the “prior art”), that will help determine whether the claimed invention is something that is new and inventive with respect to what has gone before.
The prior art found in the search will typically be printed publications, e.g. earlier patent applications, but could be any form of publicly available information, e.g. based on the use or sale of something similar to the invention.
An Examiner at the patent office will compare the claimed invention with the prior art found in the search to decide if the invention is new and not obvious. The Examiner will also consider whether the application meets various other requirements for obtaining a patent in the relevant jurisdiction, for example to decide if the invention is one that can be patented, and whether it has been sufficiently well described.
The Examiner will communicate the results of his analysis to the applicant in an Examination Report (Official Action). The Examination Report will set out any objections the Examiner has against granting a patent.
The applicant then has an opportunity to respond to the Examination Report to try to overcome any objections. An applicant may seek to overcome objections by argument if the objections are considered unfounded, or by amending the application. In particular it is common to amend the claimed scope of protection to focus on a more specific aspect of the invention when the prior art is found to include something covered by what was originally claimed.
Amendments can only be made based on what was originally described in the application. For example, it is not possible to amend the application to focus on an advance in the invention made after the application was filed.
After reviewing the applicant’s response, including any amendments, the Examiner will decide whether any objections remain. If objections remain there may be another round of Examination Report and response between the Examiner and applicant to see if the objections can be overcome. This process may be iterated until the Examiner is persuaded no objections remain and a patent may be granted, or the Examiner decides the application should be refused.
Grant or refusal to grant a patent
If the Examiner(s) decide a patent may be grant