The patenting process

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An invention is patentable only if it is:

• New and previously undisclosed.
• Distinguished by an inventive step not obvious to someone expert in that technology.
• Capable of industrial application - that is, it is physically possible to make the invention.

Computer software on its own can be protected by copyright but not by patents in Europe. However, an invention that is implemented on computers by means of software - for example, an improved data handling system - is patentable in Europe. You will certainly need the advice of a patent attorney when patenting inventions which are run on computers because practice can differ between Europe and the USA.

Business methods may be patentable in the USA but not easily patentable elsewhere.

Always seek advice from a patent attorney if you have concerns about whether your idea is patentable.

Some issues to consider before deciding to patent

(See also Patenting strategy later.)

• Do you really need a patent? Would some combination of other forms of IPR protect your idea adequately? And be honest with yourself - are you perhaps motivated more by vanity (the prospect of a patent in your name) than by commercial necessity?
• Have you studied the total cost of patenting (which should include annual renewal fees in every country in which you have protection)? Is your invention likely to earn enough income to justify the cost? Normally, you should not apply for a patent until you have thoroughly researched the commercial and financial potential of your idea.
• Is the time right to apply for a patent? Application starts a sequence of events which cannot be delayed. Do you apply for a patent early on, or wait until the invention is market-ready and more capable of quickly recouping its IPR costs? Later may be better than sooner, but circumstances will vary so you should always seek the advice of a patent attorney.
• Does your invention have a short product life cycle? The patenting process typically takes 3-4 years. If your invention is aimed at a highly competitive market in which products are rapidly replaced or improved, your patent may be worth little by the time it is granted.
• Who will pay to enforce your patent? National IP offices do not enforce patents or monitor them for infringement. These are the responsibilities of the patent owner or a licensee. Until funds are potentially available to enforce your patent - from royalties or sales income - it may offer limited practical protection.
• How strongly might your patent resist legal challenge? You will definitely need a patent attorney's advice on the strength of your claims. This is important because the validity of patent claims is often challenged, usually by competitors who want to copy a successful product. If they succeed, you may be left with a valueless patent and an order to pay the victor's legal costs.

Applying for a patent

Applying for a patent is a legal process governed by strict timescales and usually immovable deadlines. It is not something to rush into! To maximise your chances of a worthwhile patent you should:

• Study the application procedure in detail.
• Aim to apply not in haste, but strategically - at a time and for a reason that most benefits your exploitation plans. (See Patenting strategy below.)
• Use a patent attorney! Do not do it all yourself - the risk of making mistakes is too great.

Here is only a very brief guide to the application process for a European Patent according to the European Patent Convention (EPC).  

Applying for a patent at a national IP office is roughly similar to stages 1-6 below, but an application must be made in the local language.

Making an international application through the Patent Co-operation Treaty (PCT) involves a single procedure for stages 1-4, but 30 months after filing the application goes through stages 5 and 6 in every national or regional IP office where you wish to take up protection. For more information on the PCT see www.wipo.int/pct .

Choosing your route for a patent application (EPC, PCT, national and regional, or combinations thereof) will depend on:

• Your invention.
• Your business plan.
• Your available funds.
• Your intended market .
• The likeliest sources of infringing products.

A patent attorney will be able to advise you on the route that is best for you and your invention.

Stage 1  Beginning the process

Your patent attorney must provide documentation consisting of:

• A request for a patent.
• Details of the applicant (you).
• A description of the invention.
• Claims.
• Drawings (if any).
• An abstract.

A fee must also be paid. In order to avoid delay, it is vital that all documentation conforms in every detail to official requirements. Your patent attorney will ensure that it does. At the EPO, applications are accepted in English, French or German.

For your patent attorney to prepare all the information about your invention, he or she will obviously need to work closely with you. Do not assume that you know best because it is your invention. You must trust the skill and judgement of your patent attorney, as patenting involves a complex mix of law and technology. The claims in particular need to be drafted with skill, as they are the most important aspect of a patent.

Stage 2  Filing date and initial examination

If your documentation appears correct, your application is given a filing date - also known as your priority date. After filing there is a formalities examination to ensure that your documentation is correct and complete.

At any time in the next 12 months you can file for patent protection in other countries and have those later filings treated as if they had been filed on your priority date. In practice, this gives you a year to decide how many countries you wish to include in your patent protection.

Stage 3  Search

A search report is sent to you, listing and including copies of all prior art documents found by an experienced examiner and regarded as relevant to your invention. The search is based mainly on your claims for novelty, but your description and any drawings will also be taken into account. The report will often include an initial opinion on the patentability of your invention.

Stage 4  Publication

Your application is published 18 months after the filing date. Your invention will appear in databases accessible to other people around the world. It will act as prior art against any future patent applications from other inventors or companies for similar inventions.

You then have six further months to make two decisions:

• Do you want to continue with your application? You indicate ‘yes' by requesting a more thorough (‘substantive') examination.
• Which countries do you want to include (‘designate') in your patent protection? Designation fees must be paid.

After your patent is granted, you may claim damages for infringements originating as far back as the publication date of your application. However, to enjoy this right in some countries it may be necessary to file a translation of your claims with their national IP office and for them to publish the translated claims.

Stage 5  Substantive examination

If you request substantive examination, the EPO has to decide whether your invention and your application meet the requirements of the European Patent Convention. For maximum objectivity there are usually three EPO examiners, one of whom maintains contact with your patent attorney. This stage will often involve dialogue between the examiners and your patent attorney, which may result in the re-drafting of key parts of your application. Your patent attorney will defend your application, and this is one more reason why it is essential to have professional representation.

Stage 6  Decision to grant a patent

If the examiners decide to grant a patent, and all fees have been paid and any claims translations filed, the decision is reported in the European Patent Bulletin. The decision to grant takes effect on the date of publication.

Stage 7  Validation

What you have now got is a ‘bundle' of individual national patents. After the EPO decision to grant is published, your patent has to be validated in each designated state within a specific time limit. If this is not done, your patent may not be enforceable in that state. In some states, validation may include having to file (and pay for) a translation of the whole patent, or just a translation of the granted claims.

Stage 8  Opposition

A granted patent may be opposed by third parties - usually the applicant's competitors - if they believe it should not have been granted. After the grant is reported in the European Patent Bulletin they have nine months in which to file notice of opposition. The most common charge is that the invention is not novel or lacks an inventive step. The case will be examined by an EPO team, again of three examiners.

Opposition is the last chance to attack a European patent as a single entity in a single forum. Later, the patent can only be challenged in national courts and a ruling in one country has no effect on the patents for the same invention in other countries. This gives competitors a strong incentive to challenge an invention during the opposition period, as challenging patents in separate national courts can be much more expensive.

Stage 9  Appeal

All EPO decisions are open to appeal. Responsibility for decisions on appeals is taken by independent boards of appeal.