What goes into getting a patent?

So. You have an invention that you think is worth getting a patent for, how do you go about actually getting a patent? What are the actual steps that need to be taken in order to go from an invention to a granted patent?

Firstly, you will need to put your invention into a patent application (duh). I would sincerely recommend not writing your patent application yourself, but leaving that to a patent attorney such as myself or my colleagues at Ipsilon IP. Then once you have the text for your patent application something needs to be filed, but what, when and where?

In this article I hope to guide you through the basic steps of the life of a patent application from filing up until grant. To give you a bit of an idea of what goes into getting an actual patent. Buckle up 'cause this one is a bit of a long ride, but I will try to keep it as concise as I can (and if you don't have the patience to read everything, a.k.a. TLDNR, I do provide a very short summary at the end of my article).

What are the components of a patent application?

Before we get into the life of a patent (application), let me give you a brief summary of the essential components that every patent application needs to have in order to be accepted by a patent office.

There is 3 main parts to the text of the patent application: Abstract, Description and Claims.

The abstract is simply a short summary (max 150 words) of the invention that will be described in the patent application. It is not actually part of the text of the patent application, but it is required by patent offices to be present.

The description is the main text of the patent application. The description can usually be divided in these 5 parts:

• Background of the invention: this describes the field your invention is in and the problems your invention is addressing.
• Summary of the invention: this briefly describes the main features of your invention.
• Brief description of drawings: if you have any graphs, illustrations or pictures, these will be briefly described here. Your actual drawings (Figures) will be presented in a separate document that will be filed with the patent application.
• Detailed description: this will describe your invention and all its benefits and advantages in detail. This part of the text is what will mainly be used by us patent attorneys to argue why your invention deserves to get a patent granted on it. It is therefore essential to put as much information as is available in here that would aid in showing the "inventiveness" of the invention.
• Examples: the Examples are simply said the scientific section of the patent application. in this section all the data that has been generated for your invention, showing why it is such an amazing invention, will be described. It slightly resembles a scientific article because it will be discussing the materials & methods, the protocols, the results and the discussion of the results, but it will be written in a slightly different format to be suitable for patent purposes.

The claims are the part of the patent application that sets out the scope of your invention. In very simplistic terms: if a certain subject-matter is not claimed, it will not fall within the scope of your patent protection. The claims are also what an Examiner from the patent office will use to assess the patentability of your invention. The claims are therefore a crucial part of the patent application.

There are two types of claims: independent and dependent. Independent claims are your main claims. These provide your widest scope of protection. Dependent claims further specify (limit) the invention as described in the independent claims and also serve as fall-back positions should an independent claim be found not patentable. A lot more can be said about claims, but the most important thing to remember is that once you have filed your claims, you can usually only further limit your claims and you cannot go any broader than what you originally disclosed in your application. Therefore, you have to check, check and double-check what you can claim!

Some applications will also have a sequence listing attached. If your patent application contains any sequences (DNA, RNA, amino acid sequences), you are required to provide a sequence listing that lists all the sequences that are disclosed in your application.

This in broad terms is what the components of a patent (application) are. So lets now get into what to do once you have the text of your patent application and you are ready to file it.

Priority application

If you have read some of my other articles you will have read about the concept of the priority application, but let me explain it again in a bit more detail. Your priority patent application is the first application that you file on your invention. This patent application serves to set the date that the patent offices will use to assess if your invention is worthy of a patent or not, but is not actually the patent application that you will pursue (in most cases). The filing of the priority application starts the counter for the "priority year", which year can be used to make any changes to the original text that was filed (e.g. the addition of new data that was generated). Then, once the priority year is up, the subsequent application is filed.

More than one priority application can be filed during the priority year, but the subsequent application must be filed by the end of the priority year of the first priority application that was filed. So now you may wonder, why would you file more than one? This is if you, for instance, discover a new feature of your invention during the priority year that was not originally disclosed in the first priority application. You would be wise to file a second priority application that does cover that feature (see my other article for an excellent example of this going wrong). Your subsequent application can then "claim priority" from both applications, ensuring that all features of your subsequent application will get an earlier date for the assessment of their patentability than the filing date of the subsequent application.

Priority applications can be filed anywhere in the world. For companies in Europe, it is common practice to either file a priority application at the European Patent Office (EPO) or at the national patent office of the country the company is in. Keep in mind that some countries have specific rules about where you must file your first application. To check whether there is a requirement for you to file somewhere first specifically, I would advise asking a patent attorney.

Usually, the priority application is withdrawn before it is published. This withdrawal can happen automatically because you (usually) will not pay any fees beyond the ones needed to get a filing date. Thus, the only thing left of your priority application is basically the filing date (priority date) that your subsequent application will use ("claiming priority") to have an earlier date for assessing patentability.

Why is this earlier date advantageous? Quite simple. The patentability of your invention is assessed based on what was already known at the filing date (priority date) of your patent application. The documents, presentations and other disclosures (prior art) the Examiner can use to contest the patentability of your invention are thus limited to anything that has a date before the filing date (priority date). Generally speaking, having a priority date from a priority application can exclude potential prior art that is published in the year between your priority and subsequent application. Additionally, the 20-year period that your patent is valid only starts running from the filing date of the subsequent application, which means you kind of get a bonus year by filing a priority application!

Subsequent application

As mentioned, just before or when the priority year ends one or more subsequent applications is filed. In most cases that subsequent application will be filed as what is known as a "PCT application" (Patent Cooperation Treaty).

The PCT is a system that allows for a quicker, more efficient (and cheaper) way to get a patent in countries all over the world. The PCT currently has 158 contracting states, which means that when you file a PCT application you could possibly get a patent granted in 158 different countries/regions (a region being e.g. Europe). There are some countries that are not part of the PCT system, where you will need to file a national application at the same time as the PCT application to get patent protection, but there are not that many non-PCT countries that would be relevant to most companies (the most relevant ones would be Argentina and Taiwan).

So how does this PCT system work? Can you get a worldwide patent from this? Quick answer: no, you can't. Unfortunately there is no such thing as a worldwide patent, however, as I said the PCT application is a quicker, cheaper and more efficient way to get a patent granted in many countries.

Why is it cheaper and easier? Your PCT application is one patent application that you file and pay the required fees for at one of the competent offices that can receive and process a PCT application (such as the EPO in Europe). Additionally, you will only have to file your application in one language, so you do not yet have to prepare translations of the text into a language excepted for each different patent office. This one centralized application will then be examined and after a period of up to 31 months from the priority date, your one centralized application will be split into multiple applications depending on in which countries you choose to pursue a granted patent. So, instead of having to pay the initial fees and provide the text in the right language at every separate patent office, you can save money and time by having only one text and one set of fees to pay for your PCT application.

PCT application - international phase

Now you have filed your PCT application, what's next? After your PCT application is filed you will be in what is called the "international phase" of your PCT application for that previously mentioned time period of up to 31 months. During the international phase you will receive an International Search Report (ISR) from a competent International Search Authority (ISA), which will let you know what the Examiner thinks is patentable and what is not. There are a few options as to what to do with that ISR:

1. You can choose not to reply and will only respond to the Search Report once you have entered the "regional/national phase" (I will explain this phase in a bit)
2. You can submit "informal comments", which will be put on record, but the ISA will not respond to them.
3. You can choose to reply, in which case you will enter so-called Chapter II proceedings, in which case the ISA will respond to your submission. Not a lot of patent attorneys will recommend this, since it is an expensive procedure and "Examination" will still need to be done for each separate country you choose to pursue a patent in after the end of the international phase anyway.
4. You can submit claim amendments, which will not be responded to, but will become the basis for the Examination of your application once it goes into the "national/regional" phase.

Whichever option you choose, at the end of the international phase, the ISA will publish an IPRP (International Preliminary Report on Patentability), which will be the same as the ISR unless you choose option 3. With that, the international phase of your PCT application comes to an end.

PCT application - national/regional phase

At the end of the international phase it is time to turn your PCT application into the separate national/regional applications that you want to pursue. Your PCT application has served its purpose and will not be pursued further.

During the international phase you will have decided which countries/regions you want patent protection in and this is the national/regional phase(s) you will "enter". This "entry" simply entails performing the necessary actions to fulfill the requirements set by the national/regional patent office before the deadline (i.e. the 30-31 months after priority date), such as paying the required fees and submitting any required translations.

Once you have entered the desired national/regional phase(s) the next stage in the life of your application starts, which is Examination. Examination is the process of "examining" your application to see if it is and what is patentable. For each separate national/regional application you will be assigned a different Examiner that will assess the claims of your application for their patentability according to local patent law. The first step is requesting Examination. When to request Examination depends per country, but in most cases it can be done upon entry into the respective country/region.

Once Examination has been requested the first step is responding to the Search Report. Depending on who was the ISA for the ISR of the PCT application, you will either receive another Search Report from the local patent office (which may or may not be similar to the ISR) or, if the ISR is from an ISA that is accepted as competent for that particular office, you will directly be invited to respond to any objections raised in the ISR that were not yet addressed. In the case of most European companies, the EPO will have been the ISA during the international phase, meaning that once you go into the European phase you will immediately get an invitation to respond to the objections raised in the ISR.

The response to the Search Report includes argumentation with or without claim amendments. Then after this you most likely will have a number of exchanges with the Examiner to address any (further) objections the Examiner may have. These communications from the Examiner are referred to as "Office Actions" or "Examination Reports". In response to these communications from the Examiner you may file (further) argumentation and (further) claim amendments if necessary.

This back-and-forth with the Examiner will not go on endlessly. After a certain number of Office Actions the Examiner will usually send either a rejection of the application or an intention to grant the patent.

If a rejection is sent then the decision can usually be appealed. In Europe a specific proceedings will be initiated if the Examiner states their intention to reject the application. This is referred to as "Oral Proceedings". First, the applicant (the one requesting a patent) can argue their case in writing and if the Examiner is not yet convinced after that, the applicant gets the chance to argue their case verbally to the Examiner (either in person or via video-conference). If the application is still rejected after that, the applicant can start appeal proceedings, but this is an expensive and tedious procedure.

If an intention to grant is sent, then you may have to make some final adaptations to get the application ready for grant (minor amendments in the text for instance), accept the intention to grant and then wait for your "decision to grant" communication. Once you have that, congratulations! The grant of your patent will be published and you will have obtained a granted patent. Of course, there are still ways people can contest the grant of your patent after the decision to grant has been published, but I will leave that to another article to explain.

In conclusion, to (very) briefly summarize everything that was discussed, the life of a patent application from filing up till grant will look something like this:

• Priority application filing (0 months)
• Subsequent (PCT) application filing (12 months)
• Publication of application usually with Search Report (18 months)
• If PCT: Entry into national/regional phase (30-31 months)
• Start of Examination (shortly after entry or in some countries you can request Examination even years after the filing date)
• Grant of patent (usually anywhere between 2-5 years)
• Lapse of patent (20 years from filing of subsequent application)

So, from application to grant will take on average between 2-5 years and your patent, once granted, will be valid for a period of 20 years starting from the filing date of the subsequent application. I can understand that this is a lot of information which may have fried your brain and that's why us patent attorneys exist to help you through this complicated maze that is the process of getting a granted patent. I therefore sincerely encourage you to reach out to a patent attorney to assist you in any matters related to your inventions that you want patented! My colleagues and I at Ipsilon IP are happy to help! Reach out to me on LinkedIn or via email at [email protected]!