Application for Patent
An application for a patent can be made to the Intellectual Property Office (UK) of the European Patent Office. A patent application can be made by any individual or corporate entity.
Patent applications are generally dealt with by specialist patent attorneys. Patents generally cover products or processes. See the separate article in respect of the criteria for patentability
Patent applications must meet the requirements of the Patent rules. They are complex and technical. The Intellectual Property Office or European Patent Office examine the application from the perspective of the rules well as from perspective of the overall criteria for patentability. The process can take several years.
The UK application require
- a description of the background to the invention
- a title
- a description of the essential features
- a description of the alleged problem the invention seeks to address
- a description of the advantageous features of the invention and
- a description of the practical application of the invention.
Drawings, specifications et cetera defining the detail and an abstract are required. They describe the core features and advantageous elements of the claimed invention. There are limitations on the scope for adding to or amending specifications.
The inventor must be identified in the application for a patent. Only the inventor or someone to whom the right has been transferred may apply for a patent. A patent may be applied for by an inventor or joint inventors.
Where the invention is made in the course of employment, the employer is entitled to make the patent application.Usually is clear whether the invention is part of the employee’s duties and responsibilities.
Where an invention belonging to an employer has been made by an employee and the invention or patent or either are of outstanding benefit to the employer having regard to the size and nature of the employer’s undertaking, the court or controller may award the employee compensation where it is reasonable to do so. Substantial compensation has been awarded under this provision.
There is relatively modest cost associated with filing the application in itself. In practical terms, it is usually necessary to retain a patent attorney to draft the specification, which may incur significant costs.
At the time of filing, the applicant may request a search or a combined search and examination. They need not be undertaken at the outset, but it is a may be advantageous to do so.
If the matter is urgent or the patent is about to be disclosed or publicly admitted, it is possible to make a basic application in order to establish a filing / priority date. However only the information set out in the claim will be protected in the sense of the deemed filing date. The more complete description must be filed in respect of whatever may be publicly disclosed.
It is possible to claim priority where the patent application has been filed in another country within the previous 12 months. The applicant may obtain the benefit of the earlier filing date in the foreign jurisdiction. The objective is to allow applications in multiple jurisdictions.
Stages & Grant
The Patents Office will undertake a preliminary examination of the application to verify that it meets the statutory requirements. The applicant must request a search form and pay search fees. The search report sets out documents the examiner has found relevant to the claim. The examiner will set out its opinion of their relevance. They may be an earlier patent application, scientific papers et cetera
The patent applicant will be effectively required to respond to the search report. It may be that the patent applicant abandons claim based on the report
Patent applications are published approximately 18 months from the filing date. Publication is withheld only in limited circumstances, such as where national security considerations apply. The information in the application is then made available to the public online.
Within six months of publication, the applicant requests substantive examination and pays examination fee. The patent office issues an examination report which will include objections. A waiting time may ensue.
The examination report may set out a timeline for a response. The response may be by way of arguments or amendments. If the examiner is not satisfied, a further examination report may issue. The may be service cycles which make reply to and consider objections. The procedure is principally written.
The application can take significant timeline must be completed within 4 1/2 years.
Applicants may be entitled to a hearing before a senior patent examiner before refusal of the application.
There are means of expediting the application in some cases. The initial request for a search can be submitted at the time of filing. Parties can request expedited examination if there is a good enough reason.
If the Patents Office is satisfied that the application meets the requirements, a patent is granted. A certificate issues and is registered.
The patent is enforceable once it has issued.
Renewal fees are payable to keep the patent in place. Failure to do so may cause it to lapse. The renewal fees increase annually from approximately £60 £700.
Legal Guide Limited, UK Law (An Irish Overview), and Paul McMahon have no liability arising from reliance on anything contained in this article or on this website