In this article, we explain the requirements for patentability, as well as the patent process in simple, easy to understand language.
In order to understand the requirements for patentability, it helps to understand the reasoning behind the patent system. If at all possible, governments prefer not to grant patents, since they do reduce consumer choice and interfere with free trade. However, when patents are granted, they are published as publicly available documents. The idea behind the patent system is that researchers should be able to search the patent databases to get up-to-date on the latest technologies that are relevant to them. In this way, research and development can start from the cutting edge, and proceed from there, and the countries resources are not wasted in reinventing the wheel.
With this understanding, it then makes sense why inventions are required to be both novel and inventive before they can be patented. Novelty is an objective question, and asks whether the same invention has been disclosed anywhere else in the world (even by the inventor) before the filing date of the patent application. Inventiveness is a more subjective question, and asks whether the differences between the new invention and what has already been made available to the public, would have been “obvious to a person skilled in the art”.
The patent process
The process that is most commonly recommended for new inventions starts with the filing of a “provisional” patent application. This is because it is the quickest and cheapest way of obtaining a filing date for the invention. The filing date is the date at which novelty and inventiveness is assessed, so that any public disclosure of the invention after the filing date will not affect the validity of the future patents. So the applicant can disclose the idea to manufacturers or even start commercialising their invention, without losing their rights.
Within 12 months of filing a provisional patent application, applicants need to file a “complete” patent application. If no complete patent application is filed, then the provisional patent application lapses. A complete patent application can be filed by either:
- filing one or more complete patent applications at the various national patent offices of the countries that they want protection in (this is called “national phase entry”); and/or
- filing an International Patent Application (also called a PCT patent application).
During this initial 12 month period, it is really important for applicants to find out where their main target markets are, and to establish which countries the most commercial interest is coming from. This will dictate which of the above two strategies to use.
It is also possible to file “supplementary” provisional patent applications during the first 12 months. Supplementary provisional patent applications can protect improvements developed over this time period. The various supplementary provisional patent applications can then be combined to ensure that all of the additional subject matter is protected in the complete patent applications.
1. Filing complete patent applications at the national patent offices
Complete patent applications are filed through a multinational treaty called the Paris Convention.
The filing of complete patent applications is typically carried out when applicants are only interested in obtaining protection in a few (say 3 or less) countries, or if there is potential early infringement in a country. When a complete patent application is filed at the national patent office in a country, this typically starts an “examination” process. The application gets given to an examiner at the patent office. You can think of examiners as being there at governments gatekeepers. It is their job not to allow any patents to be granted for inventions that are not novel and inventive. So they will typically carry out searching to establish what has already been made available to the public. They will then issue an examination report (also called office action).
In a typical examination report, an examiner will state what prior art they have found, whether or not they deem it to be relevant, and whether they believe that the patent claims of that patent application are novel and inventive in light of the prior art. They will also set a deadline for responding to the examination report, or for getting the application in order for acceptance. Examiners of complete patent applications have the power to refuse a patent application, or at least not to accept it before the final deadline is reached.
The applicant then has an opportunity to amend the claims or make arguments for inventiveness to try and differentiate the claimed invention from the prior art. This process is called prosecution of the patent application. If such amendments and/or arguments are successful, the patent application will be accepted by the examiner, and the patent will be granted.
2. Filing an international patent application
An International Patent Application is filed through a multinational treaty called the Patent Cooperation Treaty, or PCT. This is why an International Patent Application is also sometimes called a PCT patent application.
If an International Patent Application is filed, the patent application with into the “international phase”. The international phase is 18/19 months long. During this international phase, the International Patent Application is examined by an international patent examiner, who issues a written opinion.
The written opinion is very similar to an examination report described above. However, an international patent examiner does not have the right to refuse the patent application, and responding to the written opinion is entirely optional. It may, however, be encouraging for an applicant to show potential licensees that they have a positive written opinion.
Before the end of the international phase, the applicant must file national phase patent applications directly into the countries that they want patent protection in.
Importantly, the filing of an international patent application is merely a system for delaying national phase entry by 18/19 months. No internationally enforceable patent is ever granted from an international patent application. If no international patent application is filed, then the applicant will be limited to patent protection in only those countries that they have filed complete patent applications.
Filing an international patent application is preferable where applicants need more time. This could be because:
- they are unsure which countries to file complete patent applications in, and want to keep their options open for filing patent applications into any one of 148 countries around the world; or
- they are still in negotiations with licensees;
- they wish to obtain an indication of the scope of protection available by having their patent application examined at least once before filing national phase patent applications; or
- they would prefer to delay the capital outlay of filing national phase patent applications.
There may be an advantage to prosecuting an International Patent Application during the international phase, as it will strengthen the claims before filing national phase patent applications. However, examiners could cite new prior art against the claimed invention during examination of the subsequent national phase patent applications, requiring additional prosecution.
There is also an advantage in having the patent application examined at least once before filing national phase patent applications. The international examiner may find very relevant prior art, which only leaves the applicant with a very narrow scope of protection, if at all.
This will allow the applicant to make a more informed commercial decision as to whether they should be filing national phase patent applications in more or less countries. A narrow scope of protection (for example only protecting improvements to a product and not excluding all competitors from the wider market) can still be valuable in a large market, while a broad scope of protection (i.e. keeping everybody else out of a broad market segment) can be valuable in even a small market.
The International Patent Application lapses at the end of the international phase, so if no national phase patent applications are filed, the applicant will lose their rights.
Once national phase patent applications are filed, it is entirely at the discretion of the examiners at the national patent offices whether or not they take the international patent examiners comments into account.
The deadlines referred to above are latest deadlines, and national phase or international patent applications can be filed at any stage before these deadlines.
An important takeaway message from this article is that once your provisional patent application is filed, applicants need to be aware of upcoming deadlines (at 12 and 30/31 months).
At Baxter IP, our patent attorneys prefer to ensure that our clients understand where they are on these timelines, and what aspects are important to focus on. We help to guide our clients legally and strategically in each stage.