Although individuals may file a patent application applicants are strongly advised to obtain professional advice since patent procedure is not simple and mistakes can result in not getting the best protection for an invention.
Many applicants who do not employ professional advice find that their granted rights are not adequate for their needs or that it is too easy for a competitor to design around them.
A patent application must include:
• a technical description – called the specification– of the invention that is clear and complete enough for the invention to be reproduced by a person skilled in the technology of the invention. The description does not limit the scope of protection and is merely illustrative; and
• one or more claims that define, in words, the matter for which protection is sought. The claims are what limit the scope of protection and determine whether someone infringes or not. The claims are also what are evaluated for novelty and inventive step. If claims are too broad, they will not be novel or inventive – if they are too narrow, a patent would be granted for something that is easily designed around and therefore has limited value.
Patent applications are normally subjected to a prior art search and examination of novelty and inventive step by the respective national patent office. Depending on the particular patent office, the search and examination may be done separately or it may be combined.
The search is based on the claims and identifies any prior art published prior to the date of filing the patent application that the patent office considers falls within the scope of the claims.
At approximately 18 months from filing the application, it is published by the Patent Office (copies are available at http://worldwide.espacenet.com) along with the results of the search. This is the first time the contents of the patent application are available to the public. From this point onwards, details of the prosecution of a patent application are publicly available.
During examination, a patent office Examiner considers whether or not the application meets all the requirements of the law for example, is it new? Is it inventive? Is there sufficient disclosure? The applicant is advised of any objections and is given the opportunity to amend the application to address them. At the end of this process and, assuming all has gone well, a patent is granted.
After grant, an annual renewal fee will have to be paid to keep the patent in force – subject to a maximum term, normally of 20 years from the filing date.
At grant, the specification and claims are published again and it is this version that is relevant for infringement. If you look at published applications – their publication number ends with an A – the claims may look incredibly broad and unsupportable. However, for infringement purposes it is only the claims of the granted patent– their publication number ends with a B – that are relevant. The claims will most likely have evolved and narrowed during examination.
The average length of time between filing a patent application in the UK and the decision by the Patent Office to grant or refuse it is 3 to 4 years. However, there are mechanisms for obtaining an indication of allowance within as little as 12 to 18 months. This can then be used to accelerate examination in other countries under the Patent Prosecution Highway.