Knowledge Bank
IP Primers – Details
Patent Primer
Patent applications - Initial filing and search procedure
Deciding whether to protect your invention globally
PCT - Advantages and disadvantages
EPO - Advantages and disadvantages
Examination and grant procedure
D Young & Co patent services
D Young & Co patent attorneys are qualified to practice before The UK Intellectual Property Office (which is responsible for granting UK patents), The European Patent Office (which is responsible for granting European patents) and The International Bureau of the World Intellectual Property Organisation (which is responsible for the administration of international patent applications).
At D Young & Co we can help you with most of your patent needs. Our services are flexible and can adapt to your business processes.
As an example, our services include
- Attending in-house meetings to assist you with spotting possible patentable inventions
- Drafting any patent applications you may wish to pursue
- Obtaining the best possible patent protection based on your commercial needs and earlier inventions found by the patent offices
- Managing your patent portfolio Advising on patent enforcement issues
- D Young & Co can obtain patent protection for you in the UK, in Europe and overseas.
We can also provide you with patent protection in other countries through our close association with other patent agents in, for example, the US, Canada, South America and Japan, Korea, China and other countries in Asia. D Young & Co can provide a centralised hub for managing your international portfolio and can ensure that you obtain consistent patent protection in different countries.
What is a patent?
A patent is an agreement between an individual and the state. The state grants the individual the right to prevent anyone from exploiting his/her invention usually for up to 20 years and in return, the state generally makes public the details of the patent application 18 months after it is filed.
To be granted a patent an invention must be new, not obvious and have practical application.
Disclosure
You should not publicly disclose your invention or use or sell your invention before a patent application has been filed at the Patent Office, as this will almost certainly invalidate any patent eventually granted.
Patent applications - Initial filing and search procedure
For UK based clients, a patent application will normally be filed initially at the UK Intellectual Property Office (formerly known as the UK Patent Office). Although a UK patent application is only enforceable in the UK, it is not normally necessary to file any corresponding overseas applications at this stage. This is due to an international convention, to which the UK and most industrialised countries are signatories, which allows an applicant to file an application in another signatory country within 12 months and effectively “back-date” the filing date to the date the initial application was filed in the UK. This buys the applicant time to determine whether their invention is likely to be patentable and defers costs.
The patent application must be accompanied by a specification which describes the invention in broad terms to define the scope of the monopoly you hope to obtain (commonly referred to as “the claims”) and describes the practical form or forms of the invention usually with the aid of drawings (commonly referred to as “the specific description”).
It is our task, on your behalf, to prepare the specification and the necessary formal papers. To enable us to prepare the specification we need to know all about the invention and in what respects you believe it to be new and ingenious. It is helpful, and can reduce costs, if you can provide us with drawings, (the individual figures of which should, if possible, be on A4 paper) and a written description outlining the construction and operation of the invention, cross referenced to the drawings. A brief summary of prior proposals in the relevant field, together with an indication as to how your invention is different from them, would also be helpful.
The application will consist of the specific description and the claims. The patent office will then examine the application to ensure that all formalities have been met. It is normal practice to also file a request for preliminary examination and pay a search fee at the same time as filing the application. The patent office will then carry out a search to see whether the invention is new.
The search results provide an initial indication of whether the patent application is worth pursuing or whether the invention is already known. From the result of the search we will then be able to advise you on the likelihood of obtaining a patent. If it looks like the invention is already known, you can consider allowing the application to be withdrawn at that stage. If it looks like your invention may be patentable, then you will need to consider whether you wish to pursue patent protection only in the UK or whether you wish to also seek protection in other countries.
Deciding whether to protect your invention globally
The decision on whether you wish to pursue patent protection in other countries needs to be taken within 12 months of the filing date of the initial application. Also at this stage it is possible to update your patent application to include any further developments, preferred features or further information you may need to include. If the development has proceeded to such an extent that effectively you have a further invention or inventions then fresh patent applications may need to be filed. Normally, this updated application will form the basis of any patent application filed in other countries.
We can assist you in pursuing patent protection in any country should you choose to do so. To obtain overseas protection, ultimately a separate patent in each country is needed. However, certain international conventions exist between countries which help to reduce the burden upon applicants by providing a centralised patent application and/or patent granting procedure. Two such conventions are the Patent Co-operation Treaty (PCT), administered by the International Bureau in Geneva and the European Patent Convention (EPC), administered by the European Patent Office (EPO) in the Hague and in Munich.
It is worthwhile to stress that the Patent Co-operation Treaty and European Patent Convention systems are complementary rather than alternative systems.
The PCT includes over one hundred jurisdictions worldwide, of which the EPO is just one. The EPO includes 36 states (plus 4 extension states) all of which are located solely in Europe. The selection of the respective systems will depend on which countries patent protection is sought.
PCT - Advantages and disadvantages
The PCT provides a centralised filing system. By filing one international patent application, in English, under the PCT it is possible to simultaneously seek protection for an invention in each of a large number of countries throughout the world. However the PCT does not provide a centralised granting system, and national and/or regional applications must subsequently be pursued for a patent to be granted.
Pursuing patent protection via the PCT route provides the following benefits
- Extra time (at least 8 months more, but frequently 18 months more, compared with not using the PCT) to investigate the commercial possibilities of the invention
- The option of obtaining, in addition to an international search report, an international preliminary examination report, providing information about the patentability of the invention, before incurring any costs associated with pursuing patent protection in any of the countries designated in the PCT application.
- The possibility of complying with a number of formalities in a centralised manner when preparing the application in accordance with the international standards effective under the PCT.
However, the overall cost of the PCT route is higher than pursuing separate national applications from the outset.
EPO - Advantages and disadvantages
The EPO provides a centralised filing and granting system for patents in a number of European states, by filing a single application in one of the official languages of the European Patent Office (English, French or German) in a unitary procedure before the EPO which then becomes a granted patent in as many of the contracting states (currently 36 plus 4 extension states) as the applicant cares to designate.
A European patent affords the same rights in the designated contracting states as a national patent granted in any of these states. Pursuing a single European application provides the following benefits
- Economy and efficiency
- A cost-effective and time-saving way of applying for patent protection in several different European countries
- Common Term, scope of protection, binding text
- Every European patent has undergone substantive examination and can be obtained for certain countries which may otherwise operate only a registration system.
After deciding whether or not to pursue patent protection in other countries, you also need to decide how and whether to continue with the UK application. If you have filed an International or European patent application and designated the UK then you could choose to abandon your UK patent application. However, there are often good reasons for maintaining your UK application which we can discuss with you at the time.
Examination and grant procedure
The patent offices of major industrialised countries examine applications in detail to ensure that the inventions disclosed are new, non-obvious and have practical application. They also examine applications to ensure they comply with other legal requirements. This process is often called ‘substantive examination’. Often a fee must be paid to request substantive examination. The patent offices will usually raise objections to the application at this stage. Hence, further costs can be incurred in overcoming the objections raised by the patent office. The specification may have to be amended in order to take into account the objections, for example the scope of the monopoly claimed may be too broad in view of any earlier documents found in the search.
When all objections raised by the patent office have been overcome, the specification will be granted and published and in its finally accepted form.
The normal life of the patent is 20 years from the application date. Annual renewal fees are payable in most countries to keep the granted patent in force. Some patent offices also levy renewal fees on pending applications.
