Navigating your way through the patent process

Imagine you have just invented a new device that can self-fold your clothes (and your kids’ clothes, too), Eureka! The next step is to file a patent application to protect your invention.

Applying for a patent is a legal process that has many strict deadlines. The timeline to obtain a granted patent can span several years, depending on various factors, such as the complexity of your invention, the examination process, and country-specific requirements.

Choosing a route for a patent application will likely depend on several factors, such as the technical field of the invention, your business plan, available funds, domestic or international commercial markets, and infringement risks. At Stratagem, our patent attorneys can advise on the optimal strategy at each key stage of the patent process to best suit you and your invention.

The summary below provides a brief guide to a typical patent application process for a UK inventor, i.e., filing a UK priority application and then an international patent application (PCT) as a route for worldwide protection of your invention.

Figure 1 - A summary of a typical patent filing timeline.

1. Filing a priority application - This sets the earliest filing date (priority date) for your invention, and the priority application MUST be filed BEFORE the invention is made public. This application describes your invention in detail. To be granted a patent, the invention needs to be novel (i.e., not known) and inventive (not an obvious improvement over what already exists). A request for search and/or examination can be included when filing the priority application in the UK, and if it is, the Examiner at the UK IPO (Intellectual Property Office) will then issue a search & examination report within 6 months of filing the request. This provides an early indication of the prior art that might impact the patentability of the claimed invention.
   
   
2. International filing – If you wish to protect your invention outside the UK, an International (PCT) application can be filed within 12 months of the priority date. This is the final opportunity to add material to the overall disclosure, e.g., improvements made to the invention since the first filing. The PCT treaty has more than 150 contracting states, which makes it possible to obtain pending rights with a single PCT application instead of having to file separately for each country. During the international stage, the Examiner will issue a report which indicates whether the claims are novel and inventive in view of the prior art. If desirable, there is an opportunity to respond to the report during the international stage.
   
   
3. Publication—The PCT application is published around 18 months after the priority date. This is the first point that the disclosure within the application becomes publicly available.
   
   
4. National or regional phase entry - At 30 months from the priority date, the International phase ends; the applicant needs to decide which countries/regions they want to continue to pursue patent protection, e.g., Europe, USA, Japan, etc…, which are then prosecuted separately. Selection of the countries will depend on the commercial interest of the Applicant. It is advisable to enter the national phase in countries where the product(s) are sold or where key manufacturers and/or competitors are located. Some countries provide extensions to 31 months for fulfilling national phase entry requirements. The speed of prosecuting the cases through to grant depends on the local patent offices.
   
   
5. Grant - Once the patent is granted, the patent can be enforced against infringers. A grant fee may be involved for some jurisdictions. In Europe, the applicant must choose which European countries to validate, e.g., the UK, Germany, France, etc. Recently, a new patent system called the Unitary Patent (UP) System has been introduced, which covers at least 17 European countries, including Germany, France, and Italy, in a single patent. Members who are not part of the UP system, such as the UK, must be validated separately.
   
   
6. Renewal—Renewal or maintenance fees are payable upon grant in most countries. In Europe, renewal fees are also payable while the patent application is pending. Renewal fees are due every year to keep the patent in force. In most countries, the patent term expires 20 years after the filing date of the International application.

To discuss the best strategy to protect your invention now, please contact our Patent department at mail@stratagemipm.co.uk.