Obtaining IP Rights: Patents

Patent rights are obtained through an application made at the national or regional intellectual property (IP) office.

(Image: Getty Images/marrio31)

Conditions of patentability

The following conditions must be met to be eligible for patent protection:

  • element of novelty: the invention must show some new characteristic which is not known in the body of existing knowledge in its technical field. This body of existing knowledge is called “prior art”.
  • “inventive step”/“non-obvious”:  the invention must involve an inventive step that could not be obviously deduced by a person with ordinary skill in the relevant technical field.
  •  industrial application: the invention must be useful; it must be capable of being used for an industrial or business purpose beyond a mere theoretical phenomenon.
  • patentable subject matter:  In many countries, scientific theories, aesthetic creations, mathematical methods, plant or animal varieties, discoveries of natural substances, commercial methods, methods for medical treatment (as opposed to medical products) or computer programs are generally not patentable.
  • disclosure: the invention must be disclosed in an application in a manner sufficiently clear and complete to enable it to be replicated by a person with an ordinary level of skill in the relevant technical field.

Costs of patent protection

The costs vary significantly from country to country (and even within a country). Bear in mind the following:

  • The cost of patenting an invention depends on factors such as the nature of the invention, its complexity, patent attorney’s fees, the length of the application, and possible objections raised during the examination by the patent office. Some countries offer discounts to small- and medium-sized enterprises and applicants filing the application online. In addition, some countries allow expedited examination upon payment of additional fees.
  • In addition to the national official filing fees, once a patent is granted by the patent office, you must pay maintenance or renewal fees, generally on an annual basis, to maintain the validity of the patent.
  • 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.
  • The relevant national or regional patent office will be able to give you details on their fee structure. Consult our list of national and regional IP offices.

Drafting a patent application

A patent application generally consists of the following parts:

  • Request – title of the invention, date of filing, priority date and bibliographic data such as the name and address of the applicant and inventor;
  • Description of the invention, in clear language and with enough detail so that a person skilled in the same technical field can reconstruct and practice the invention;
  • Visual materials – drawings, plans, or diagrams that describe the invention (if necessary);
  • Claims – a clear and concise definition of the invention for patent protection is being sought;
  • Abstract – a summary of the invention.

In order to obtain a patent, the claims part must typically describe an invention that is new, useful and non-obvious in view of the “prior art” that exists. Prior art is a technical term that generally refers to all the public knowledge and inventions that existed before you filed your patent application.

When you apply for a patent, you will generally be required to pay an application fee and may have to pay an examination fee (if an examination of substance is carried out), as well as an annual maintenance fee for the application.

  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: 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.

Filing a patent application

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

  • In virtually all countries patents are granted on a first-to-file basis.
  • Applying for patent protection early will make it easier to get financial support or to license your invention.
  • In most cases, the earlier you file, the earlier the patent will be issued.

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 significant changes to the original description. Also, once you file an application in one country/region, you normally have 12 months to file for a patent for the same invention in other countries in order to enjoy the benefit of the filing date of the first application. But filing in multiple foreign countries, especially before knowing whether your invention will be commercially successful, may be too expensive.

 Expert tip: Keeping an invention confidential prior to filing the application is absolutely essential. In many circumstances, public disclosure before filing can destroy the novelty of an invention, making it unpatentable.

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

What is the "Right of Priority"?

Once you file a patent application in one country or region, you have 12 months to file for the same invention in other countries in order to enjoy the benefit of the filing date of the first application. In other words your subsequent application will enjoy priority over applications filed after your first application.

The Paris Convention for the Protection of Industrial Property provides for the right of priority. This right means that, on the basis of a regular first patent application filed in one of the Contracting States to the Convention, an applicant may, within 12 months apply for protection in any of the other Contracting States. These subsequent applications will be regarded as if they had been filed on the same day as the first application. In other words, they will have priority (hence the expression "right of priority") over applications filed by others during the said period of time for the same invention. Moreover, these subsequent applications, being based on the first application, will not be affected by any event that takes place in the interval, such as the publication of an invention.

One of the great practical advantages of this provision is that patent applicants seeking protection in several countries are not required to present all of their applications at the same time but have 12 months to decide in which countries they wish to seek protection, and to organize with due care the steps necessary for securing protection. Once this period has elapsed, they may no longer be able to obtain patent protection in other countries. This would be very detrimental to those intending to export, manufacture in a third country or in anyway operate in international markets with an intellectual property based product.

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 variations between 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 follows these steps:

 

1. Formal examination

2. Search

3. Substantive examination

4. Notification

5. Publication

6. Grant

7. Grace period

8. 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've received a patent.

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

As a general recommendation, if you intend to exploit your patent outside your country, make sure to file for protection in all the markets that interest you as early as possible.

(Image: Getty Images/sumkinn)

The national route

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'll have to pay national application fees and you'll likely need the assistance of a patent attorney/agent to ensure that your application meets specific national requirements.

The regional route

Some countries have established regional agreements among patent offices. This can mean that one application can get you protection in a number of countries. The regional IP offices include:

  • European Patent Office (EPO)
  • African Regional Industrial Property Organization (ARIPO)
  • African Intellectual Property Office (OAPI)
  • Eurasian Patent Organization (EAPO)
  • The Benelux Office for Intellectual Property
  • Patent Office of the Cooperation Council for the Arab States of the Gulf

The international route

WIPO's PCT System significantly simplifies the process for simultaneously seeking patent protection in more than 150 countries. Rather than filing national applications in many languages, 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 time to assess the commercial value of your invention before national fees are to be paid in the national phase.

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