The Normal Patent Application Procedure

What is the normal patent application procedure?

Although the patent application procedure is never the same twice, we sometimes find ourselves referring to "the normal patent application procedure" and in this article we set out what normally happens.

Starting the patent application procedure

Normally, we learn about the invention from our clients by way of a meeting, whether in person or online, and from some kind of write-up from the inventor(s). It's not always that way, sometimes we work only from a written document such as a draft academic paper, or prepare everything at our own initiative from our meeting notes, but usually we speak with the inventor(s), usually they give us some documentation and usually we ask questions to be sure that we fully understand the invention.

Although many applicants want to have a patentability search carried out before they file a patent application, that often isn't the case and so is not a part of our normal process. Many applicants have done their own searching, or know their own field very well, or know they want to file a patent application anyway and wait on the results of the official search. Still, where budget permits, it is best to have some searching done.

Filing a first patent application

We prepare a draft patent specification, normally rewriting everything we have been given, and there are normally a few rounds of revision with the inventor(s) before the first application is filed. Normally, we file a single UK patent application with the UK Intellectual Property Office to start the process, although there are occasions when it is decided to file a European patent application or to file in another territory.

It is not essential to file a search request immediately when an initial UK patent application is filed, and there are various options to choose from, but our clients normally do request a search, to get some official feedback as to the patentability of the invention and some choose combined search and examination which speeds up the subsequent process.

We normally receive an official search report 4 to 6 months after the application was filed although this can be speeded up if there are grounds to accelerate the case (e.g. under the Green Channel). The search report normally lists a handful of documents which the IPO believe are relevant to the patentability of the invention and we report it to our client with some initial comments. Normally many of the citations appear easy to overcome, but there is often some prior art which will prove challenging later. Sometimes our clients want us to carry out a detailed analysis or to file a supplementary patent application to set out more information about differences between the claimed invention and the documents in the search report.

Filing internationally

Within a year of the filing of the initial application, we normally file a PCT application ("International Patent Application under the Patent Cooperation Treaty"), in English, claiming priority from the initial patent application. This is a type of application which can give rise to rights in over 150 territories around the world and which delays the choice of those countries for a further 18 months.

This is not the only route for seeking protection abroad - applicants who know exactly where they wish to obtain protection may file direct foreign applications with a priority claim - but normally a PCT application is chosen. Sometimes additional information about the invention is included when a PCT application is filed, but this is not normally required.

We normally claim priority from the initial UK patent application and then allow it to lapse. There can be situations where it is desirable to continue with the initial UK application, for example to obtain a prompt grant of a patent in one country, but normally it is no longer required and protection in the UK can be obtained later through the European regional phase of the PCT.

The international phase

We normally receive the international search report and written opinion prepared for WIPO by the European Patent Office, acting as international search authority, after 3 or 4 months. The written opinion normally raises objections to the patentability of most or all of the claims. This is often not of particular concern because we normally overcome the objections in due course and obtain patents, although sometimes the international searcher will find documents that raise serious concerns.

The PCT application is normally published just after 18 months from the beginning of the application procedure, after which it can be found in online patent databases, along with other patent applications.

It is possible to file a so-called Chapter 2 Demand and request additional examination of the PCT application in the international phase but we are normally not asked to carry out this optional step.

Entering the national phase

There is a deadline by when it is necessary to choose the territories in which protection is sought and to file application there - referred to as "entering the national phase of the PCT". For many territories, the deadline for this is 30 months from when the initial patent application from which priority is claimed, although others allow a small amount of additional time.

We are normally asked to enter the national phase in the United States and Europe (i.e. the European Patent Office). Frequently applicants also wish to seek protection elsewhere, most commonly, China, Japan, Australia, New Zealand, India, South Korea, Brazil, Singapore, Mexico etc. but the two territories which are almost always chosen by our clients are the US and Europe. For this example, we will also include China, which requires a translation into Chinese to be prepared. Apart from the European and UK national phases, we instruct our local associates to file and prosecute the national phase applications.

The cost of entering the national phase is substantial, although it is possible to accurately estimate national phase filing costs long in advance and budget for them. Normally we amend the claims when entering the US national phase, for US practice or to reduce excess claims fees.

The national phase

Normally, nothing substantive further happens in the United States for over a year other than addressing formal matters. In China (as in many other territories) there is a separate step of requesting examination, which by this route is due by three years from the filing date of the initial application from which priority is claimed. At about this time the first renewal fee payable to the European Patent Office is due.

Normally, the first time that we respond in depth to objections to the patentability of the invention is in respect of the European patent application. The European Patent Office set a six-month deadline by when the applicant must comment on the international search report and written opinion. Normally, we file arguments and claim amendments at this time, including reducing the number of claims to 15 to avoid excess claims fees where possible.

There is then usually a pause of a further 6 to 12 months before examination proceeds in earnest in the United States, Europe and China. Normally, we will receive a first examination report (or "office action") raising objections to the application, including setting out objections that the claimed invention lacks novelty and/or inventive step. Normally, the objections differ between these Patent Offices and normally at least one of the United States or China find prior art which was not previously cited. We respond with arguments and, where required, claim amendments.

Frequently, we receive one or more further examination reports in each territory before the patent application is allowed, although some cases become complex, for example using an appeal process. There are grant formalities in each territory, including official fee payments. Grant normally occurs between 4 and 6 years from the filing date of the initial patent application (for some other countries the application process is significantly slower). The application process normally stops there, although sometimes we file one or more divisional applications (or continuation applications in the US) before grant to seek protection for additional inventions.

In Europe it is necessary to undergo validation formalities shortly after grant and/or request registration of a Unitary patent. Normally, our clients validate their European patent at least in the UK, France and Germany. At the current time, registering a Unitary patent is common but not what we normally do.

Renewal fees are then payable periodically to maintain the patents in force. Normally the patents will be allowed to lapse at some point rather than maintained for their maximum 20 year term, as renewal fees increase with the age of the patent.

Normally there is no need to ever go to the Courts to enforce a patent, nor is the validity of a patent ever challenged. These things occur, of course, but don't normally happen.

If you have any questions about or would like help with the patent application procedure, please do not hesitate to contact us.