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Patent filing: key steps for inventors seeking a national right

It is usually best for an inventor to begin by filing a single initial patent application in their country of residence (a national right). This will establish a ‘priority date’ from which they can seek additional rights in other jurisdictions for the same invention. They must do so within the allocated timeframe; generally, one year (click here for more on extending rights overseas).

Filing a national (e.g. UK) application first gives the inventor a crucial window in which they can assess the success and market potential of the invention before launching into potentially costly foreign applications. Some exceptions to this practice do exist, however, so it’s wise for inventors to consult first with a patent attorney; particularly if the US is likely to be a key market.

This is a basic introduction to the patent application process. For details on Novagraaf’s specific patent services, including patent drafting, prior searching, EP/PCT filing and the Unitary Patent, click here for our services overview page. To contact one of our patent attorneys or to review their expertise in your sector, click here.

Step 1: Is the invention patentable?

In order to obtain a patent, the invention has to fulfil a number of conditions of patentability. It must be new, inventive and capable of industrial application; in other words:

  • The invention must not be publicly known, either in use or published, anywhere in the world (novelty);
  • The invention, improvement or development must not be obvious to someone working in the same technical field, starting from the closest known technology (the prior art); and
  • The invention or new technology must be capable of being used in an existing technical application, so that it can be made or used in some kind of industry, i.e. it must have a practical application.

To meet the standard of novelty, the invention must not already exist nor must the inventor have publicly disclosed it (e.g. via publication) prior to the date of the initial patent application. This requires inventors to uphold strict disclosure, confidentiality and secrecy practices, particularly if they work with external partners.

As part of the patent application and drafting process, your Novagraaf patent attorney will generally undertake a patent search prior to filing any new application in order to identify any conflicting applications or prior publications (e.g. earlier patent applications, published scientific papers or publications in trade journals, etc). These results will indicate the likelihood of the new invention meeting the condition of novelty, i.e. is the technology or innovation for which protection is sought already in the public domain?

Step 2: Drafting and prosecuting the patent application

A patent is obtained by filing a written application at the relevant patent office. This includes a description of how to make and use the invention and must provide sufficient detail that another person knowledgeable in the field would be able to carry out the invention. It can also make use of the common knowledge in the field. Some countries have additional requirements, relating to how and what material needs to be provided. If in doubt, inventors should speak to a patent attorney or review the guidance available on national patent office websites.

After the application has been filed, it will be reviewed by examiners at the relevant patent office. The time that this will take does vary by country; however, once completed the inventor (or applicant) will either be granted the patent outright or, more likely, will receive a list of objections – or oppositions – that will need to be responded to before the patent will be approved for grant. This is known as (pre-grant) patent prosecution. Patent owners may also face post-grant oppositions, during which a third party may formally dispute the validity of a granted patent.

Once granted, a patent will be subject to maintenance fees (also known as renewal fees or annuities). These fees must be paid on a yearly basis in most countries in order to keep the patent in force.

Step 3: Extending patent protection into foreign markets

Patents are territorial rights: their grant and enforcement is governed by national laws and the rights conveyed can vary country-by-country. It’s not possible to register a ‘global’ patent right for an invention; however, you can extend a national right into other territories, subject to certain criteria and deadlines. For more on extending a national right to obtain international coverage, click here.

UPDATE: What will be the impact on European Patents of the UK's vote to leave the EU?

How to get a patent: further information

You can find out more about patents and the processes for obtaining, enforcing and exploiting patent rights, here. For information on Novagraaf’s patent services, including patent drafting, prior art searching, EP/PCT filing and litigation support, click here for our services overview page. Alternatively, contact our customer support team, using the contact form at the top right of this page.