Process of Obtaining a Patent

A Patent is a form of intellectual property (IP) and provides monopoly and exclusive rights to the Patent rights holder under the intellectual property right (IPR) regime which allow the holder of the Patent to exclude others from making, using, selling, offering for sale or importing the patented product or the product of the patented process for a limited period of 20 years from the date of first filing of an application for a Patent at the Patent Office. In other words, a Patent makes sure that you as an investor or an assignee of the inventor are the ones who gain benefits from it and ensures that no one is allowed to steal and use your invention without your authorization like through a license. The purpose of Patent is one of providing compensation to the innovator or the inventor for the disclosure of his invention into the public realm in return for the Patent rights, where the technological and scientific advancement disclosed by said invention propels and propagates further research and development of new technologies and industrial progress starting from the invention so disclosed. This push towards enhancing scientific, economic, and technological progress is further supported at the expiry of the duration of protection under the Patent regime when the protected invention enters the public domain and becomes freely available to the public.

The substantive requirement for obtaining a Patent

For an invention to be considered worthy of a grant of a Patent, it must be novel, carry an inventive step, be capable of industrial application, not be for a subject matter prohibited under the Patent law of the land, be sufficiently disclosed, be in the prescribed application format for the particular Patent Office as directed by the respective statute or Patent Act and its related Patent Rules. The Patents are ordinarily granted by a government of a jurisdiction in exchange of disclosure of an invention so as to encourage further innovation and technological development as well as making sure that such inventions of the granted Patents are indeed worked in the territory of the granting jurisdiction on a commercial scale where efforts are made both to compensate and support the disclosing inventor as well as the public health and public interest so as to be used fully to an extent that is reasonably practicable, reasonably accessible, reasonably priced and available without any undue delay.

Procedural requirement for obtaining a Patent    

It is best to involve a Patent filing and prosecution professional as you navigate through the complex road of getting your invention a grant of a Patent. However, simplistically, there are the following few steps that must be considered before you conclude that the invention, required supporting data and disclosure is ready for its transformation into an application for a Patent and then further has alternatives within the application for the Patent when faced with objections and obstructions by the Patent Offices in various jurisdictions where you intend to get your invention patented for exclusive commercialization and beneficial exploitation.

There are very elaborate rules, practices and procedures of each of the Patent Office globally that must be complied with and followed upon entry of your application therein. Such rules and formats are complex and difficult to follow for a non-experienced and non-professional inventor and it is not worth risking the disclosure of your invention and taking your chances so, the involvement of a Patent professional is highly recommended. To assess the readiness of your invention and application for a Patent:

1. Maintain an elaborate and complete written record of your invention and the experiments and steps that lead you to the invention

It is pertinent that each of the steps and peculiarities of the invention and the process of reaching the same is well recorded. It is also important as well as useful to maintain a description and a diagrammatic representation of each feature, property, amendment, and variation of the invention. It aids the overall procedure to have a ready version of the invention’s initial purpose and object and how the invention addresses the need and void in the field of the invention.

2. Subject matter and representation of the invention format ought to qualify under the territorial jurisdiction of interest for Patent protection

There are two aspects that must be considered when going for an application for a Patent, namely reaching the stage where the working invention and not just a concept or an idea, it is novel or loosely understood truly new in layman terms, i.e., different in a material way from everything that exists in the state of the art and the field of said invention. Secondly, the subject matter of the invention must not fall under the category of subject matter that is considered as non-patentable in the jurisdiction where it is intended to be applied for a Patent. There is a detailed and complicated list of subject matter that may be considered non-allowable as a patentable subject matter and it is in your best interest to consult a Patent professional to streamline your invention and the format of claims according to the said jurisdiction.

3. Inventions that are considered Patentable must justify a commercial capability and applicability

IPR rights under Patent law are granted with the intent of commercialization and use of the granted invention in the country granting the Patent for further economic and technological development. Since Patent protection via an application for Patent including professionally prepared drawings is a pricey investment, it is important that the market to be entered is thoroughly researched to assess the need and contribution from your invention and hence, making sure that it is a worthwhile investment with commercial and beneficial return potential.

4. A comprehensive search for Patents and publications in the territorial jurisdiction and globally is necessary

To evaluate the novelty of the invention to be applied for a Patent, an extensive investigation into every earlier development and its comparison with respect to the state of the art in the field is essential. The search must not be territorially limited rather, it must involve a global Patents search as well as searching through different non-Patent publications such as technical and scientific journals and thesis, etc. to find all the possibly relevant published inventions and even the inventions in the general know-how of the public, so as to establish that your invention is materially different.

Patent searching is a complex and time-intensive task that is mastered over time and with practice. But, it can be conducted on a preliminary basis to consider whether approaching a Patent professional and the costs associated with the same are a good investment, since if the invention is not really new with respect to what exists in the art, it is not worthwhile to move forward, or alternatively it may become absolutely fruitful to consult a Patent professional with thorough technical knowledge to reassess the utilizable and potentially patentable parts of your invention.

Such searching for Patents can be conducted over the internet and at the various Patent Office websites but should be done by people with technical backgrounds with legal knowledge to understand the nitty-gritty of the claimed inventions.

It is also good to note the inventions that your search identifies and deduces as similar to your invention and further to either include the said other inventions as background prior art or to demonstrate and establish how your invention is better and different from such inventions.

5. Drafting and filing the application at the selected Patent Office(s)

There are at the minimum six types of applications for a Patent that you can choose from, namely, a regular, direct, ordinary application for a Patent, a divisional application for a Patent from a previously filed patent application, a Patent of addition application for a Patent based on a main application, an application for a Patent under the Paris Convention or a convention application, and an application for a Patent under the Patent Cooperation Treaty (PCT) or an international application, and finally filing of a Provisional Application for a Patent to secure a priority date.

Each of the processes is the very complex and subject matter of an elaborate discussion in themselves. However, there are several documents and formats that are a must for each of the aforementioned applications. First, there must be a form for the application of the Patent that has the information on the inventors and/or assignees of the inventors or the Applicant for the application including their full names, designation, address and contact information, the kind of application being applied for, a form or document with the complete description or specification or disclosure of the invention in the prescribed format, where it must have claims, diagrams, and drawings (if any), abstract, description of the invention as well as the background information. Further essential documents include assignment data in the prescribed legal format, inventor forms in the prescribed legal format, information on other corresponding applications filed globally for the same invention, and the prescribed fees.  

FREQUENTLY ASKED QUESTIONS AND ANSWERS:

Q1. What is the priority date?

A1. Under Patent law, a priority date as claimed is the date of filing of the first-ever application based on an invention and for the granting duration of a Patent is considered the starting date for the duration of validity of the Patent in a jurisdiction. It is also very useful as the effective date of filing for the examination of novelty and inventive step of the applications under assessment at a Patent Office.

Q2. What are the claims?

A2. The most important part of an application of a Patent that is part of the complete description or specification of the application. It provides and clearly demarcates the boundaries of this intangible IP, the Patent. A claim provides a clear and succinct definition of what is being claimed and the requested scope of the desired protection of the invention as disclosed in the application for the Patent. To anyone, the claim provides what is being covered and claimed under the IPR protection and what is not.

Q3. What is the difference between an ordinary application and a convention application?

A3. An ordinary application for a Patent is restricted to the jurisdiction of the inventor or applicant who is applying for the protection, whereas a convention application that derives its existence and validity under the Paris Convention allows the first filed application of the inventor or applicant of a member nation of the Convention the ability to also apply for an application for a Patent in another member countries of the Convention, an ability provided on a reciprocal basis. There is a restriction that the Convention applications in other member countries must be applied within a period of 12 months of the first filing or priority date. 

Q4. How are an ordinary application and an international application different?

A4. An ordinary application for a Patent is restricted to the jurisdiction of the inventor or applicant who is applying for the protection, whereas an international allows one international application to be applied via the World Intellectual Property Organization (WIPO) in another member countries of the World Trade Organization (WTO) and Patent Cooperation Treaty (PCT), an ability provided on a reciprocal basis. There is a restriction that the Convention applications in other member countries must be applied within a period of 30 or 31 months of the first filing or priority date. Another advantage of the international or the PCT application is the examination and assessment of the application at the international phase before entry into each member country for national phase application and assessment of patentability in said jurisdiction.