Patent Application Preparation, Filing and Prosecution

The process of obtaining the grant of a patent begins with the preparation of a specification describing the invention. That specification is filed at a patent office for examination and ultimately a patent for the invention described in the application is either granted or refused.

Patent specification

A patent specification is a document describing the invention for which a patent is sought and setting out the scope of the protection of the patent. As such, a specification generally contains a section detailing the background and overview of the invention, a description of the invention and embodiments of the invention and claims, which set out the scope of the protection. A specification may include figures to aid the description of the invention, gene sequences and references to biological deposits, or computer code, depending upon the subject matter of the application. Most patent offices also require that the application includes an abstract which provides a summary of the invention to aid searching. A title must also generally be provided for the application.

Each patent office has rules relating to the form of the specification, defining such things as paper size, font, layout, section ordering and headings. Such requirements vary between offices.
Since a description cannot generally be modified once it is filed (with narrow exceptions), it is important to have it done correctly the first time.

Claims

The claims of a patent specification define the scope of protection of a patent granted by the patent. The claims describe the invention in a specific legal style, setting out the essential features of the invention in a manner to clearly define what will infringe the patent. Claims are often amended during prosecution to narrow or expand their scope.

The claims may contain one or more hierarchical sets of claims, each having one or more main, independent claim setting out the broadest protection, and a number of dependent claims which narrow that protection by defining more specific features of the invention.

In the U.S., claims can be amended after a patent is granted, but their scope cannot be broadened beyond what was originally disclosed in the specification. No claim broadening is allowed more than two years after the patent issues.

Filing date

The filing date of an application is important as it sets a cutoff date after which any public disclosures will not form prior art (but the priority date must also be considered), and also because, in most jurisdictions, the right to a patent for an invention lies with the first person to file an application for protection of that invention. It is therefore generally beneficial to file an application as soon as possible.

To obtain a filing date, the documents filed must comply with the regulations of the patent office in which it was filed. A full specification complying with all rules may not be required to obtain a filing date. For example, in the U.K., claims and an abstract are not required to obtain a filing date, but can be added later. However, since no subject matter can be added to an application after the filing date, it is important that an application disclose all material relevant to the application at the time of filing. If the requirements for the award of a filing date are not met, the patent office will notify the applicant of the deficiencies. Depending upon the law of the patent office in question, correction may be possible without moving the filing date, or the application may be awarded a filing date adjusted to the date on which the requirements are completed. A filed application generally receives an application number.

Priority claim

A patent application may claim priority from another previously filed application in order to take advantage of the filing date of information disclosed in that earlier application. Claiming priority is desirable because the earlier effective filing date reduces the number of prior art disclosures, increasing the likelihood of obtaining a patent.

The priority system is useful in filing patent applications in many countries, as the cost of the filings can be delayed by up to a year, without any of the applications made earlier for the same invention counting against later applications.

The rules relating to priority claims are in accordance with the Paris Convention for the Protection of Industrial Property, and countries which provide a priority system in conformity with the Paris Convention are said to be convention countries. These rules should not be confused with the rules under the Patent Cooperation Treaty (PCT), outlined above.

Security issues

Many national patent offices require that security clearance is given prior to the filing of a patent application in foreign countries. Such clearance is intended to protect national security by preventing the spread and publication of technologies related to (amongst others) warfare or nuclear arms.

The rules vary between patent offices, but in general all applications filed are reviewed and if they contain any relevant material, a secrecy order may be imposed. That order may prevent the publication of the application, and/or the foreign filing of patents relating to the invention.

Should it be desired to file an application in a country other than an inventor’s country of residence, it may be necessary to obtain a foreign filing license from the inventor’s national patent office to permit filing abroad. Some offices, such as the USPTO, may grant an automatic license after a specified time (e.g., 6 months), if a secrecy order is not issued in that time.

Anyone working on government contracts involving national security technologies would be well advised to carefully coordinate patent applications with the relevant agencies. Similarly, patent applicants should be aware of the arms export-control laws that may restrict the types of technical information that can be disclosed to any foreign nationals.

Publication

Patent applications are generally published 18 months after the earliest priority date of the application. Prior to that publication the application is confidential to the patent office. After publication, depending upon local rules, certain parts of the application file may remain confidential, but it is common for all communications between an Applicant (or his agent) and the patent office to be publicly available.

The publication of a patent application marks the date at which it is publicly available and therefore at which it forms full prior art for other patent applications worldwide.

Patent pending

The expression “patent pending” is a warning that an alleged invention is the subject of a patent application. The term may be used to mark products containing the invention to alert a third party to the fact that the third party may be infringing a patent if the product is copied after the patent is granted. The rules on the use of the term to mark products vary among patent offices, as do the benefits of such marking. In general, it is permissible to apply the term patent pending to a product if there is, in fact, a patent pending for any invention implemented in the product.

Patentable subject matter

Patents are granted for the protection of an invention, but while an invention may occur in any field, patent laws have restrictions on the areas in which patents can be granted. Such restrictions are known as exclusions from patentability.

The scope of patentable subject is significantly larger in the U.S. than in Europe. For example, in Europe, things such as computer software or methods of performing mental acts are not patentable. The subject of what should be patentable is highly contentious, particularly as to software and business methods.

Search and examination

After filing, either systematically or, in some jurisdictions, upon request, a search is carried out for the patent application. The purpose of the search is to reveal prior art which may be relevant to the patentability of the alleged invention (that is, relevant to what is claimed, the “claimed subject-matter”). The search report is published, generally with the application 18 months after the priority date of the application, and as such is a public document. The search report is useful to the applicant to determine whether the application should be pursued or if there is prior art which prevents the grant of a useful patent, in which case the application may be abandoned before the applicant incurs further expense. The search report is also useful for the public and the competitors, so that they may have an idea of the scope of protection which may be granted to the pending patent application.

In some jurisdictions including the U.S., a separate search is not conducted, but rather search and examination are combined. In such case, a separate search report is not issued, and it is not until the application is examined that the applicant is informed of prior art which the patent office examiner considers relevant.

Examination is the process of ensuring that an application complies with the requirements of the relevant patent laws. Examination is generally an iterative process, whereby the patent office notifies the applicant of its objection. The applicant may respond with an argument or an amendment to overcome the objection. The amendment and the argument may then be accepted or rejected, triggering further response, and so forth, until a patent is issued or the application is abandoned.

Issue or grant

Once the patent application complies with the requirements of the relevant patent office, a patent will be granted further official fees, and in some regional patent systems, such as the European patent system, translations of the application into the official languages of the states in which protection is desired must be filed to validate the patent.

The date of issue effectively terminates prosecution of a specific application, after which continuing applications cannot be filed, and establishes the date upon which infringement may be charged. Furthermore, an issue date for an application in the U.S. filed prior to 1995 also factors into the term of the patent, whereas the term of later filings is determined solely by the filing date.

Post-issue or grant

Many jurisdictions require periodic payment of maintenance fees in order to retain the validity of a patent after it is issued and during its term. Failure to timely pay the fees results in loss of the patent’s protection.

The validity of an issued patent may also be subject to post-issue challenges of various types, some of which may cause the patent office to re-examine the application.

2017-03-21T10:13:49+00:00December 17th, 2012|All, Blog, Patents, Prosecution|