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How to Protect Inventions through Patents

The first step to obtain a patent is to file an application with a national or regional intellectual property (IP) office. If you seek patent protection in many countries, you may consider filing an international patent application under the Patent Cooperation Treaty.

(Image: Getty Images/marrio31)

Conditions for patentability

There are numerous conditions that must be met in order to obtain a patent, and it is not possible to compile an exhaustive, universally applicable list. However, some of the key substantive conditions include the following:

  • novelty: the invention must show some new characteristic which is not known in the body of knowledge that existed prior to the filing date (or the priority date). This body of the existing knowledge is called “prior art”.
  • “inventive step”/“non-obviousness”: the invention must involve an inventive step that, in view of the prior art, could not be obviously deduced by a person with ordinary skill in the relevant technical field.
  • industrial application/utility: the invention must be capable of being used for an industrial or business purpose beyond a mere theoretical phenomenon, or it must achieve a beneficial result.
  • patentable subject matter: each national legislation defines subject matters that are eligible for patent protection. In many countries, the exact scope of patentable subject matter is defined by listing what is not patentable. While there are differences between jurisdictions, subject matter that is excluded from patentability often concerns scientific theories, aesthetic creations, mathematical methods, plant or animal varieties, discoveries of natural substances, commercial methods, diagnostic, therapeutic and surgical methods for medical treatment (as opposed to medical products) and computer programs as such.
  • sufficiency of disclosure: the invention must be disclosed in an application in a manner sufficiently clear and complete to enable a person with ordinary skill in the relevant technical field to carry it out. In some countries, the “best mode” for practicing the invention must be disclosed. The claims must be supported by the description.

Costs of patent protection

The costs vary significantly from country to country. Even within a country, the costs depend on various factors, such as the nature of the invention, its complexity, the patent attorney’s fees, the length of the application, and possible objections raised during the examination by the patent office.

Please also bear in mind the following:

  • Once a patent is granted by the patent office, you must pay maintenance or renewal fees, generally on an annual basis, to maintain the effect of the patent. Some countries, in addition to the national filing fees, prescribe the payment of such annual fees during the examination period of the patent application.
  • In case you decide to patent your invention abroad, you should also consider the relevant official filing fees for each country in question, the translation costs, and the costs of using local patent agents, which is a requirement in many countries for foreign applicants.
  • Some countries offer discounts to small- and medium-sized enterprises and applicants filing the application online.
  • Some patent offices offer expedited examination upon payment of additional fees.

The relevant national or regional patent office will be able to give you details on their fee structure.

Drafting a patent application

A patent application generally consists of the following parts:

  • Request – stating that patent protection is sought by the applicant, it contains basic data relating to the application, including the title of the invention, date of filing, priority date and bibliographic data such as the name and address of the applicant and inventor;
  • Description – disclosing the invention, in clear language and with enough detail. The description part typically describes the title of the invention, provides an indication of its technical field, and includes the background to, and a description of, the invention;
  • Drawings – drawings, plans, or diagrams that show the visual details of the invention can accompany the description, if necessary;
  • Claims – defining the scope of patent protection sought by the applicant in a clear and concise manner, distinguishing it from the prior art. They shall be fully supported by the description;
  • Abstract – a summary of the invention.

  Expert tip: A prior art search can help you avoid wasting money on a patent application if the search uncovers prior art references that are likely to make a patent impossible to obtain.

 Expert tip: Claims are typically drafted in a special format. Given the complexity of patent applications and the legal skills required for claim drafting, it is highly advisable to seek legal assistance from a patent attorney/agent when drafting a patent application. To learn how to draft a patent application, use the Patent Drafting Training Program that assists users of the patent system in developing practical skills required to draft and file patent applications.

Filing a patent application

Generally, you should apply for patent protection as soon as you have all the information required to draft the application. Reasons to file early include:

  • In virtually all countries, patents are granted on a first-to-file basis. Simply stated, if your competitor files a patent application on a specific invention, and you file a patent application on the same invention one day later, you will not get a patent.
  • In most cases, the earlier you file, the earlier the patent will be issued. A patent can be enforced only after the grant, which makes it difficult to attract investors or potential licensees before the patent is granted.

Rushing to file a patent application, however, may also create problems:

  • If you file the application too early and the invention evolves, it's usually not possible to make substantive changes to the original description on the filing date.
  • Also, once you file an application in one country/region, the “right of priority” is triggered. This means that you normally have 12 months to file patent applications for the same invention in other countries in order to enjoy the benefit of the filing date of the first application (called “priority date”) for the determination of the novelty and inventive step in relation to your subsequent applications filed abroad, for example. Filing in a significant number of foreign countries, however, may be very expensive, especially before knowing whether, and in which countries, your invention will be commercially successful. A way to mitigate this dilemma can be filing an international patent application under the PCT, which may postpone payment of national fees and translation for an additional 18 months.

 Expert tip: Keeping an invention confidential prior to filing the application is absolutely essential. Public disclosure of an invention before filing can destroy the novelty of the invention, making it unpatentable, unless the applicable law provides for a so-called “grace period”.

In countries where the grace period is provided, public disclosure of an invention under certain conditions does not affect the patentability of the invention, if a patent application is filed during the grace period, which is typically six or twelve months from the date of the public disclosure.

Any pre-filing disclosure (e.g., for test or marketing, or to investors or other business partners) should take place only after signing a confidentiality or non-disclosure agreement.

The patenting process

Once you submit your patent application to a patent office, it will be processed according to national/regional law.

There are important differences among countries, so it is always best to check with the national/regional patent office to obtain up-to-date information on the procedures and applicable fees. In general, the processing of a patent application involves the following elements:

 

1. Formal examination

2. Prior art search

3. Substantive examination

4. Notification

5. Publication of patent application

6. Grant and publication of patent

7. Pre-grant and/or post-grant opposition

Obtaining patents abroad: three routes

Patents are territorial rights, which means that your invention is protected only in the countries or regions where you have received a patent.

In other words, if a patent has not been granted, or recognized, in a given country, the invention will not be protected in that country. That means that anyone can make, use, offer for sale, import or sell your invention in that country.

As a general recommendation, if you intend to commercially exploit your invention outside your country, consider obtaining patent protection in all the relevant markets as early as possible. In which countries/regions patent protection should be sought depends on each case. Aspects that may be considered include:

  • Where is the patented product likely to be commercialized?
  • Where are the main markets for similar products? Where will the main markets be?
  • What are the costs involved in each targeted country/region?
  • Where are the main competitors based? Where will they be in a near future?
  • Where will the product be manufactured?
  • How difficult will it be to enforce a patent in a given country?
(Image: Getty Images/sumkinn)

Seek protection in individual countries by applying directly to each national patent office concerned. Each application may have to be translated into the relevant national language.

You will have to pay national application fees, and you will likely need the assistance of a patent attorney/agent of each country to ensure that your application meets specific national requirements.

The regional route

Some countries concluded regional agreements that established a regional patent office that grants regional patents. This means that one regional patent application can get you protection in a number of countries in the region, either through the grant of a “bundle of national patents” or the grant of one “unitary patent” being valid in all member states of the respective regional agreement. The regional patent offices include:

WIPO's PCT System significantly simplifies the process for simultaneously seeking patent protection in more than 150 countries. Rather than filing multiple national and/or regional applications in each country/region, the PCT system enables you to file a single application, in one language, and to pay just one application fee.

The PCT system can also help you to gain more time to assess the commercial value of your invention before national fees are to be paid in the national phase.

How to Protect Inventions through Patents

The first step to obtain a patent is to file an application with a national or regional intellectual property (IP) office. If you seek patent protection in many countries, you may consider filing an international patent application under the Patent Cooperation Treaty.

#
IMAGE: Getty Images/marrio31

WIPO Patents and Technology

Conditions for patentability

There are numerous conditions that must be met in order to obtain a patent, and it is not possible to compile an exhaustive, universally applicable list. However, some of the key substantive conditions include the following:
  • novelty: the invention must show some new characteristic which is not known in the body of knowledge that existed prior to the filing date (or the priority date). This body of the existing knowledge is called “prior art”.
  • “inventive step”/“non-obviousness”: the invention must involve an inventive step that, in view of the prior art, could not be obviously deduced by a person with ordinary skill in the relevant technical field.
  • industrial application/utility: the invention must be capable of being used for an industrial or business purpose beyond a mere theoretical phenomenon, or it must achieve a beneficial result.
  • patentable subject matter: each national legislation defines subject matters that are eligible for patent protection. In many countries, the exact scope of patentable subject matter is defined by listing what is not patentable. While there are differences between jurisdictions, subject matter that is excluded from patentability often concerns scientific theories, aesthetic creations, mathematical methods, plant or animal varieties, discoveries of natural substances, commercial methods, diagnostic, therapeutic and surgical methods for medical treatment (as opposed to medical products) and computer programs as such.
  • sufficiency of disclosure: the invention must be disclosed in an application in a manner sufficiently clear and complete to enable a person with ordinary skill in the relevant technical field to carry it out. In some countries, the “best mode” for practicing the invention must be disclosed. The claims must be supported by the description.

Costs of patent protection

The costs vary significantly from country to country. Even within a country, the costs depend on various factors, such as the nature of the invention, its complexity, the patent attorney’s fees, the length of the application, and possible objections raised during the examination by the patent office.
Please also bear in mind the following:
  • Once a patent is granted by the patent office, you must pay maintenance or renewal fees, generally on an annual basis, to maintain the effect of the patent. Some countries, in addition to the national filing fees, prescribe the payment of such annual fees during the examination period of the patent application.
  • In case you decide to patent your invention abroad, you should also consider the relevant official filing fees for each country in question, the translation costs, and the costs of using local patent agents, which is a requirement in many countries for foreign applicants.
  • Some countries offer discounts to small- and medium-sized enterprises and applicants filing the application online.
  • Some patent offices offer expedited examination upon payment of additional fees.

The relevant national or regional patent office will be able to give you details on their fee structure.

Drafting a patent application

A patent application generally consists of the following parts:
  • Request – stating that patent protection is sought by the applicant, it contains basic data relating to the application, including the title of the invention, date of filing, priority date and bibliographic data such as the name and address of the applicant and inventor;
  • Description – disclosing the invention, in clear language and with enough detail. The description part typically describes the title of the invention, provides an indication of its technical field, and includes the background to, and a description of, the invention;
  • Drawings – drawings, plans, or diagrams that show the visual details of the invention can accompany the description, if necessary;
  • Claims – defining the scope of patent protection sought by the applicant in a clear and concise manner, distinguishing it from the prior art. They shall be fully supported by the description;
  • Abstract – a summary of the invention.

Expert tip: A prior art search can help you avoid wasting money on a patent application if the search uncovers prior art references that are likely to make a patent impossible to obtain.

Expert tip: Claims are typically drafted in a special format. Given the complexity of patent applications and the legal skills required for claim drafting, it is highly advisable to seek legal assistance from a patent attorney/agent when drafting a patent application. To learn how to draft a patent application, use the Patent Drafting Training Program that assists users of the patent system in developing practical skills required to draft and file patent applications.

Filing a patent application

Generally, you should apply for patent protection as soon as you have all the information required to draft the application. Reasons to file early include:
  • In virtually all countries, patents are granted on a first-to-file basis. Simply stated, if your competitor files a patent application on a specific invention, and you file a patent application on the same invention one day later, you will not get a patent.
  • In most cases, the earlier you file, the earlier the patent will be issued. A patent can be enforced only after the grant, which makes it difficult to attract investors or potential licensees before the patent is granted.
Rushing to file a patent application, however, may also create problems:
  • If you file the application too early and the invention evolves, it's usually not possible to make substantive changes to the original description on the filing date.
  • Also, once you file an application in one country/region, the “right of priority” is triggered. This means that you normally have 12 months to file patent applications for the same invention in other countries in order to enjoy the benefit of the filing date of the first application (called “priority date”) for the determination of the novelty and inventive step in relation to your subsequent applications filed abroad, for example. Filing in a significant number of foreign countries, however, may be very expensive, especially before knowing whether, and in which countries, your invention will be commercially successful. A way to mitigate this dilemma can be filing an international patent application under the PCT, which may postpone payment of national fees and translation for an additional 18 months.

Expert tip: ​​​​​​​Keeping an invention confidential prior to filing the application is absolutely essential. Public disclosure of an invention before filing can destroy the novelty of the invention, making it unpatentable, unless the applicable law provides for a so-called “grace period”.A prior art search can help you avoid wasting money on a patent application if the search uncovers prior art references that are likely to make a patent impossible to obtain.

In countries where the grace period is provided, public disclosure of an invention under certain conditions does not affect the patentability of the invention, if a patent application is filed during the grace period, which is typically six or twelve months from the date of the public disclosure.
Any pre-filing disclosure (e.g., for test or marketing, or to investors or other business partners) should take place only after signing a confidentiality or non-disclosure agreement.

The patenting process

Once you submit your patent application to a patent office, it will be processed according to national/regional law.
There are important differences among countries, so it is always best to check with the national/regional patent office to obtain up-to-date information on the procedures and applicable fees. In general, the processing of a patent application involves the following elements:

1. Formal examination

The patent office examines the application to ensure that it complies with the administrative requirements or formalities (e.g., that all documentation with relevant information has been submitted and the application fee has been paid).

2. Prior art search

In many countries, the patent office conducts a search to identify the prior art that is relevant to the determination of the patentability of the claimed invention. The search report is used during the substantive examination to compare your invention with the relevant prior art.

3. Substantive examination

The aim of substantive examination is to ensure that the claimed invention satisfies the main criteria for patentability (patentable subject matter, novelty, inventive step, industrial applicability and sufficiency of disclosure). Not all patent offices conduct substantive examination, or check applications against all the patentability requirements. In some countries, an applicant must separately request substantive examination of its application and pay a fee within a specified time period (usually several years). If such request has not been submitted, the application is considered to be withdrawn.

4. Notification

The results of the examination are sent in writing to the applicant (or their attorney) to provide an opportunity to respond to and/or deal with any objections raised during the examination. This exchange often results in amending the patent application and a narrowing of the scope of the claims.

5. Publication of patent application

In most countries, the patent application is published 18 months after the filing date (or the priority date).

6. Grant and publication of patent

If the examination process reaches a positive conclusion, the patent office grants the patent. Patent offices also publish the patent once it is granted.

7. Pre-grant and/or post-grant opposition

Many patent offices provide a specific period during which others can oppose the grant of a patent, for example on the basis that the claimed invention is not new. Opposition proceedings may be held before patent grant and/or after grant.

Obtaining patents abroad: three routes

Patents are territorial rights, which means that your invention is protected only in the countries or regions where you have received a patent.
In other words, if a patent has not been granted, or recognized, in a given country, the invention will not be protected in that country. That means that anyone can make, use, offer for sale, import or sell your invention in that country.
As a general recommendation, if you intend to commercially exploit your invention outside your country, consider obtaining patent protection in all the relevant markets as early as possible. In which countries/regions patent protection should be sought depends on each case. Aspects that may be considered include:
  • Where is the patented product likely to be commercialized?
  • Where are the main markets for similar products? Where will the main markets be?
  • What are the costs involved in each targeted country/region?
  • Where are the main competitors based? Where will they be in a near future?
  • Where will the product be manufactured?
  • How difficult will it be to enforce a patent in a given country?
#
IMAGE: Getty Images/sumkinn

Seek protection in individual countries by applying directly to each national patent office concerned. Each application may have to be translated into the relevant national language.

You will have to pay national application fees, and you will likely need the assistance of a patent attorney/agent of each country to ensure that your application meets specific national requirements.

Some countries concluded regional agreements that established a regional patent office that grants regional patents. This means that one regional patent application can get you protection in a number of countries in the region, either through the grant of a “bundle of national patents” or the grant of one “unitary patent” being valid in all member states of the respective regional agreement. The regional patent offices include:

WIPO's PCT System significantly simplifies the process for simultaneously seeking patent protection in more than 150 countries. Rather than filing multiple national and/or regional applications in each country/region, the PCT system enables you to file a single application, in one language, and to pay just one application fee.

The PCT system can also help you to gain more time to assess the commercial value of your invention before national fees are to be paid in the national phase.