Mastering the patent application process

• English

You have just completed the first draft of the plans for a unique invention. First, take a little bit of time to be proud of yourself, whether your creation is a new treatment for chronic arthritis pain or a heretofore-unconventional type of integrated circuit. Sooner rather than later, you will need to start working to protect your Intellectual Property - the first step of which, of course, will be filing a patent application.

We will not be disingenuous and tell you the patent-filing process is not somewhat complex, because it certainly is. However, "complex" is not, and has never been, a synonym for "impossible." Here, we will break down the key steps this journey requires and review some key practices for making things run more smoothly.

Assessing novelty

For the sake of this run-through, we will assume that the design or device you plan to patent is unique enough to merit a claim of IP rights. It is worthwhile to reexamine major patent databases like PATENTSCOPE - the World Intellectual Property Organization (WIPO) repository of more than 83 million patent documents - as well as its counterparts from the U.S. Patent and Trademark Office (USPTO), European Patent Office (EPO) and other IP regulators.

This time around, you are not solely checking for approved or processing patents to determine whether your idea has already been patented. You must also see if any patent claim is relatively similar to yours, i.e., close enough for the possibility of a legal dispute down the road, and note the degree of similarity between your design or device and these others. Consider it a form of rudimentary risk assessment. Dennemeyer's proprietary, AI-driven patent search software, Octimine, can be immensely useful here, as it may uncover similarities that other search tools might have missed.

To be clear, finding similar-but-not-identical devices does not mean you should throw your patent away and start again. It is a matter of being prepared for potential trouble in the future and anticipating questions your patent examiner may have about such similarities.

Provisional and formal application

Along similar lines, you can further mitigate the risk of a future dispute by filing a provisional patent application. This is helpful in any first-to-file country where it is available (such as Australia and the U.S.) if you have not finalized your invention. Keep in mind that it affords you limited protection of no more than 12 months, so you should be filing formal applications not long after receiving provisional approval.

Filing full-fledged patent applications in multiple countries is always advisable, whether you plan on bringing the IP to one market, a handful of nations or dozens of them. It will also be prudent to file for international registration via the WIPO's Patent Cooperation Treaty (PCT) system, which, upon approval, provides IP protection in more than 150 nations and territories, though the specific laws of each PCT contracting nation still prevail in the event of any legal disputes.

Making the most of the application(s)

The time between patent submission and approval can be approximately 12 months - or as long as three years. Numerous factors play into how long it may take - particularly the level of precision that goes into the application. It will be critical for the formal submission to contain an exact description of the invention's background, novelty, industrial purpose and practical operation. This part of the application should be concise and clear, but to support it, be sure to include any essential documents that add clarity to the process. This category can include everything from multiple translations of the application to detailed schematics of the invention.

You can submit a single patent for multiple related inventions, if those devices together formed a unique system. However, doing so can cause the process to function less efficiently. Examiners working for patent and IP regulatory agencies typically prefer to consider individual inventions as precisely defined devices. As such, while it will be more expensive initially to file multiple applications, it may cost you less in the end as you mitigate the chances of being rejected and having to reapply (and repay).

The importance of seeking counsel

As soon as you have filed your patent, an examiner from the regulatory agency you applied to will be assigned to your case. It will be well worth your while to arrange a direct meeting with this official, if not face-to-face, at least over the phone. Speaking with them in this fashion, whether they are fielding your questions or you are answering theirs, will be much better than trying to communicate solely over email.

Support from those who know the field of international patent law front to back will also be critical to any successful patent-filing bid. Dennemeyer offers a full suite of law firm services ranging from private counsel to public representation in multiple jurisdictions across the globe.