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How To Go & Get That Patent!
25 February 2004Orlaith Reedy
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The Irish Entrepreneur, March 2004.
Orlaith Reedy explains the process of obtaining patent protection.
A patent is a legal right granted to an inventor, for a set period of time, whereby in exchange for bringing the invention into the public domain, the inventor is rewarded with the exclusive ownership rights for that invention. In the event that a third party uses the patented invention without the consent of the owner, he/she can take action against that party, to enforce his/her rights as owner of the invention.
A patent can also be used as a tradable asset, facilitating revenue generation through licensing agreements or sale of ownership rights. A strong patent portfolio can also indicate a company's strong commitment to research, development and provision of innovative products to their customers, thereby boosting the company's reputation in the market place.
Typically a patent lasts for twenty years from the date of filing of the patent application.
A patent right is a national right, in that separate patent applications must be filed in each country where patent protection is required. The inventor can choose those countries in which he/she wishes to file a patent application. Typically in Ireland an inventor might file an Irish patent application at the Irish Patents Office, a European patent+ application at the European Patent Office or an International application++.
A patent may only be validly granted for inventions which are novel, involve an inventive step and are capable of industrial application. It is therefore extremely important not to disclose any features of an invention prior to the filing of a patent application, unless the disclosure is made in confidence.
Do I Really Need a Patent Attorney?
In order to draft an accurate patent specification, and to ensure that the best protection possible is obtained for a particular invention, it is advisable to use the services of a patent attorney.
When to file your application
It is recommended that you file your patent application when you invention is fully developed. There are two primary reasons for this:
1. It is a requirement of patent law that the description in a patent specification must disclose the invention to such an extent as to enable a person skilled in the relevant technological field to replicate the invention. Therefore, if a patent application is filed before it is fully developed, the description of the invention might not disclose the invention sufficiently.
2. It is also best for the patent application to provide protection for as many features of the invention as possible. Further features cannot be added to the application at a later stage. Although it may be possible to file another patent application directed towards extra features of the invention, the patentability of any further features in another application might (depending on the relative timing) be assessed in light of the initial patent application, and could therefore prejudice the chances of obtaining valid patent protection for these features.
What is it going to cost if I want to patent worldwide?
The costs of worldwide patenting are limitless. Hundreds of thousands of Euros could be spent on a patent filing programme for 40 or more countries for example. The cost of filing an International Application alone amounts to several thousand Euro, while searching, examination and amendment of an International Application will be an additional several thousand Euro. When an International Application is converted into a number of individual national patent applications, further substantive costs are incurred for the translation of the International Patent Application into each of the national languages and for prosecution of the application in each of the countries.
Your patent requirements will however be dictated by your expected return on investment from different areas. Because of this, it is best to only file patent applications in those countries of commercial interest. An inventor should be sure of a return on investment in patents.
Summary
It is certain that the process of obtaining patent protection may appear daunting to some - it is after all a long process that may incur substantial costs, however, if you have a commercially viable product that you think may be patentable, your first point of call should be to your patent attorney. S/He will be able to talk you through your options, and help you get the most out of your invention - before you bring it into the public domain.
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Obtaining Patent Protection
The following is a very brief outline of the typical process of obtaining patent protection:
1. Inventor & patent attorney meet to discuss the invention so that the patent attorney can get a full understanding of the invention.
2. Preliminary search of worldwide databases of patents & patent applications, to give an indication as to the patentability of the invention.
3. Proceed with application or Decide not to file a patent application.
If decision to proceed with application is made:
4. Patent attorney will draft specification to describe the invention & Inventor will decide upon countries where they wish to file a patent application.
5. Upon agreement of description by inventor, the patent attorney will file the application at the relevant patent offices to request a grant of a patent. This will include the payment of appropriate application fees.
6. Once the application is accepted at the patent office, a filing date* will be given.
* The filing date serves as a mark for the beginning of a 12-month period during which the applicant can file a patent application in any other country for the same invention. This gives the inventor an opportunity to assess the commercial viability of the invention and the likely markets for the invention, before embarking on a substantial patent program.
7. Search & Examination of the claimed invention by the appropriate patent office to assess the patentability of the invention.
8. Examiner gives a view on the patentability of the invention, and where an objection is made as to its patentability, the applicant is offered the opportunity to amend the application. There may be a number of rounds of objections and amendments.
9. Once the examiner is satisfied that the claimed invention is patentable, the patent will proceed to be granted**
** It is generally only when a patent is granted that the owner can enforce his/her patent.
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+ A European patent application can designate over 20 countries in Europe (not all European countries are members); the applicant determines the number of countries designated. Once the patent is granted, it becomes a bundle of individual national patents. Such applications are filed through The European Patent Office.
++ Although there is no single worldwide patent that covers all countries, for those who require extensive patent protection, there is an International Patent Application. This system provides a means of filing one patent application designating over 100 individual countries. The system also provides for a centralised search and an optional examination of the patentability of the invention. However, the International Application must eventually be converted into separate national applications. This may be done at any stage up to typically 30 months from the filing of the application (the exact number of months depends on the countries chosen).
This route is often chosen to delay the significant costs involved in filing patent applications in each country. It also simplifies the filing of several applications, by allowing one application to be filed in one language, and only having to convert the International Application into separate national patent applications two and a half years later. It is important to bear in mind however, that national filing expenses are postponed, not avoided.
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