IP Cases & Commentary – Details
19 March 2010
What are the 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 granted, and the applicant completes the formal procedures required for grant in the relevant jurisdiction (e.g. paying a grant fee), the applicant will be granted a patent. It should be noted, however, that further steps are generally required to ensure the patent maintains legal effect. For example, maintenance fees are payable in most jurisdictions, and for European patents it is necessary to separately validate the patent in most of the different European countries.
In proceedings at the European Patent Office, if the Examiner(s) decide the application should be refused, the applicant will generally be provided with an opportunity to present their case in person at a hearing at the patent office, if this has been requested. If the applicant is still unable to persuade the Examiner(s) a patent should be granted, the application will be refused (rejected). However, the applicant will normally have an opportunity to file an appeal against the refusal. The application will then be reconsidered by an Appeal Board who may decide to order the grant of a patent or to finally refuse the application.
Search and examination procedures for obtaining a European patent
Search and examination are formally separate procedures in the European patent system. However, the distinction has become blurred in recent years.
A search fee must be paid when the application is filed. The results of the search are sent to the applicant in a Search Report, typically one to three years later. The Search Report is accompanied by an Opinion setting out objections to the application.
The Search Report is published with the application if it is ready in time, but is otherwise published later. If the applicant wishes to proceed with the application they then have 6 months to request examination and pay the fee, and comment on any objections. The applicant is required to respond to the search Opinion which accompanies the Search Report.
A first Examination Report will typically issue within a year or two and give an applicant four months to respond. The number of rounds of Examination Report and response is not fixed in the European system. However, only one or two rounds might be allowed before the application is refused (possibly after oral proceedings, if this has been requested).
If the Examiner(s) decides a patent may be granted, translations of the claims into French and German must be filed and fees for grant paid. It is then necessary to take additional steps to bring the patent into effect in most of the European countries that are signed up to the European patent system. This typically involves filing a translation of some or all of the patent into the local language.
The overall timescale for obtaining a European patent might typically be between 3 and 6 years, but can easily take longer.
Search and examination procedures for obtaining a United States patent
Search and examination procedures are combined in the United States and fees for search and examination must both be paid when the application is filed. A first Examination Report will typically issue within two or three years and set out both the prior art found in the search and any objections. The applicant will be given three months to respond.
The number of rounds of Examination Report and response in the United States is more fixed. Typically an applicant will have two opportunities to overcome any objections but will then need to pay additional fees to continue examination.
If the Examiner(s) decides a patent may be granted a grant fee must be paid.
The overall timescale for obtaining a United States patent might typically be between 3 and 5 years, but can be longer.