Patent application

Patent application

Discussion
Ask a question about 'Patent application'
Start a new discussion about 'Patent application'
Answer questions from other users
Full Discussion Forum
 
Encyclopedia
A patent application is a request pending at a patent office
Patent office
A patent office is a governmental or intergovernmental organization which controls the issue of patents. In other words, "patent offices are government bodies that may grant a patent or reject the patent application based on whether or not the application fulfils the requirements for...

 for the grant of a patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....

 for the invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...

 described and claimed
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...

 by that application. An application consists of a description of the invention (the patent specification), together with official forms and correspondence relating to the application. The term patent application is also used to refer to the process of applying for a patent, or to the patent specification itself (i.e. the content of the document filed with a view to initiating the process of applying for a patent ).

In order to obtain the grant of a patent, a person, either legal or natural, must file an application at a patent office with jurisdiction to grant a patent in the geographic area over which coverage is required. This will often be a national patent office but could be a regional body, such as the European Patent Office
European Patent Office
The European Patent Office is one of the two organs of the European Patent Organisation , the other being the Administrative Council. The EPO acts as executive body for the Organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative...

. Once the patent specification complies with the laws of the office concerned, a patent may be granted for the invention described and claimed by the specification.

The process of "negotiating" or "arguing" with a patent office for the grant of a patent, and interaction with a patent office with regard to a patent after its grant, is known as patent prosecution
Patent prosecution
Patent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent...

. Patent prosecution is distinct from patent litigation which relates to legal proceedings for infringement
Patent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...

 of a patent after it is granted.

Definition


As pointed out by Peter Prescott QC
Peter Prescott QC
Peter Richard Kyle Prescott QC is a barrister and Deputy High Court Judge of England and Wales, and a specialist on the law of copyright....

, the expression "patent application" is ambiguous. It can bear two different meanings:
  1. The legal state of affairs that is constituted when a person requests the competent authority to grant him a patent and that request is still outstanding.
  2. The content of the document or documents which that person filed with a view to initiating the above; most pertinently, a description of the invention together with at least one claim purporting to define it.


The first of those – the request for a legal privilege to which you will be entitled if your application be well founded – is an institutional fact, and is temporal by its very nature. It ceases to exist as soon as your application is withdrawn, is refused, or is granted. The second of those, the informational content of the document as filed (or in other, prosaic words, the piece of paper), is a historical fact that never goes away, no matter what the Patent Office does, or anyone else does. It exists in perpetuity. The expression "application" is often employed without being conscious of its ambiguity. The expression is capable of misleading even experienced professionals.

National, regional and international applications


Depending upon the office at which a patent application is filed, that application could either be an application for a patent in a given country, or may be an application for a patent in a range of countries. The former are known as "national (patent) applications", and the latter as "regional (patent) applications".

National applications


National applications are generally filed at a national patent office, such as the United Kingdom Patent Office, to obtain a patent in the country of that office. The application may either be filed directly at that office, or may result from a regional application or from an international application under the Patent Cooperation Treaty
Patent Cooperation Treaty
The Patent Cooperation Treaty is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states...

 (PCT), once it enters the national phase.

Regional applications


A regional patent application is one which may have effect in a range of countries. The European Patent Office (EPO) is an example of a Regional patent office. The EPO grants patents which can take effect in some or all countries contracting to the European Patent Convention
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...

 (EPC), following a single application process.

Filing and prosecuting an application at a regional granting office is advantageous as it allows patents in a number of countries to be obtained without having to prosecute applications in all of those countries. The cost and complexity of obtaining protection is therefore reduced.

International applications (under the Patent Cooperation Treaty)


The Patent Cooperation Treaty
Patent Cooperation Treaty
The Patent Cooperation Treaty is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states...

 (PCT) is operated by World Intellectual Property Organization
World Intellectual Property Organization
The World Intellectual Property Organization is one of the 17 specialized agencies of the United Nations. WIPO was created in 1967 "to encourage creative activity, to promote the protection of intellectual property throughout the world"....

 (WIPO) and provides a centralised application process, but patents are not granted under the treaty.
The PCT system enables an applicant to file a single patent application in a single language. The application, called an international application, can, at a later date, lead to the grant of a patent in any of the states contracting to the PCT. WIPO, or more precisely the International Bureau of WIPO, performs many of the formalities of a patent application in a centralised manner, therefore avoiding the need to repeat the steps in all countries in which a patent may ultimately be granted. The WIPO coordinates searches performed by any one of the International Searching Authorities (ISA), publishes the international applications and coordinates preliminary examination performed by any one of the International Preliminary Examination Authorities (IPEA). Steps such as naming inventors and applicants, and filing certified copies of priority
Priority right
In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively...

 documents can also be done centrally, and need not be repeated.

The main advantage of proceeding via the PCT route is that the option of obtaining patents in a wide range of countries is retained, while the cost of a large number of applications is deferred.

Types of applications


Patent offices may define a number of types of applications, each offering different benefits and being useful in different situations. Each office utilises different names for the types of applications, but the general groups are detailed below. Within each group there are specific type of applications, such as utility patents, plant patents, and design patent
Design patent
In the United States, a design patent is a patent granted on the ornamental design of a functional item. Design patents are a type of industrial design right. Ornamental designs of jewelry, furniture, beverage containers and computer icons are examples of objects that are covered by design...

s, each of which can have their own substantive and procedural rules.

Standard application


A standard patent application is a patent application containing all of the necessary parts (e.g. a written description of the invention and claims
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...

) that are required for the grant of a patent. A standard patent may or may not result in the grant of a patent depending upon the outcome of an examination by the patent office it is filed in. In the U.S., a standard patent application is referred to as a "non-provisional" application.

Provisional applications


Provisional patent applications can be filed at many patent offices, such as the USPTO in the U.S. A provisional application provides an opportunity to place an application on file to obtain a filing date (thereby securing a priority date
Priority right
In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively...

), but without the expense and complexity of a standard patent application. The disclosure in a provisional application may, within a limited time (one year in the U.S.), be incorporated into a standard patent application if a patent is to be pursued. Otherwise, the provisional application expires. No enforceable rights can be obtained solely through the filing of a provisional application.

Continuation applications


In certain offices a patent application can be filed as a continuation of a previous application. Such an application is a convenient method of including material from a previous application in a new application when the priority year has expired and further refinement is needed. Various types of continuation application are possible, such as continuation and continuation-in-part.

Divisional applications


A divisional application is one which has been "divided" from an existing application. A divisional application can only contain subject matter in the application from which it is divided (its parent), but retains the filing and priority date of that parent. A divisional application is useful if a unity of invention
Unity of invention
In most patent laws, unity of invention is a formal administrative requirement that must be met by a patent application to become a granted patent. Basically, a patent application can relate only to one invention or a group of closely related inventions. The purpose of this requirement is...

 objection is issued, in which case the second (and third, fourth, etc.) inventions can be protected in divisional applications.

Application preparation, filing and prosecution


The process of obtaining the grant of a patent begins with the preparation of a specification describing the invention. That specification is filed at a patent office for examination and ultimately a patent for the invention described in the application is either granted or refused.

Patent specification


A patent specification is a document describing the invention for which a patent is sought and setting out the scope of the protection of the patent. As such, a specification generally contains a section detailing the background and overview of the invention, a description of the invention and embodiments of the invention and claims, which set out the scope of the protection. A specification may include figures to aid the description of the invention, gene sequences and references to biological deposits, or computer code, depending upon the subject matter of the application. Most patent offices also require that the application includes an abstract which provides a summary of the invention to aid searching. A title must also generally be provided for the application.

Each patent office has rules relating to the form of the specification, defining such things as paper size, font, layout, section ordering and headings. Such requirements vary between offices.

Since a description cannot generally be modified once it is filed (with narrow exceptions), it is important to have it done correctly the first time.

Claims


The claims of a patent specification define the scope of protection of a patent granted by the patent. The claims describe the invention in a specific legal style, setting out the essential features of the invention in a manner to clearly define what will infringe the patent. Claims are often amended during prosecution to narrow or expand their scope.

The claims may contain one or more hierarchical sets of claims, each having one or more main, independent claim setting out the broadest protection, and a number of dependent claims which narrow that protection by defining more specific features of the invention.

In the U.S., claims can be amended after a patent is granted, but their scope cannot be broadened beyond what was originally disclosed in the specification. No claim broadening is allowed more than two years after the patent issues.

Filing date


The filing date of an application is important as it sets a cutoff date after which any public disclosures will not form prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...

 (but the priority date must also be considered), and also because, in most jurisdictions, the right to a patent for an invention lies with the first person to file an application for protection of that invention (See: first to file and first to invent
First to file and first to invent
First to file and first to invent are legal concepts that define who has the right to the grant of a patent for an invention. The first-to-file system is used in all countries except for the United States, which will switch to a first-to-file system on March 16, 2013 after the enactment of the...

). It is therefore generally beneficial to file an application as soon as possible.

To obtain a filing date, the documents filed must comply with the regulations of the patent office in which it was filed. A full specification complying with all rules may not be required to obtain a filing date. For example, in the U.K., claims and an abstract are not required to obtain a filing date, but can be added later. However, since no subject matter can be added to an application after the filing date, it is important that an application disclose all material relevant to the application at the time of filing. If the requirements for the award of a filing date are not met, the patent office will notify the applicant of the deficiencies. Depending upon the law of the patent office in question, correction may be possible without moving the filing date, or the application may be awarded a filing date adjusted to the date on which the requirements are completed.

A filed application generally receives an application number.

Priority claim


A patent application may claim priority from another previously filed application in order to take advantage of the filing date of information disclosed in that earlier application. Claiming priority is desirable because the earlier effective filing date reduces the number of prior art disclosures, increasing the likelihood of obtaining a patent.

The priority system is useful in filing patent applications in many countries, as the cost of the filings can be delayed by up to a year, without any of the applications made earlier for the same invention counting against later applications.

The rules relating to priority claims are in accordance with the Paris Convention for the Protection of Industrial Property
Paris Convention for the Protection of Industrial Property
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, was one of the first intellectual property treaties. It established a Union for the protection of industrial property...

, and countries which provide a priority system in conformity with the Paris Convention are said to be convention countries. These rules should not be confused with the rules under the Patent Cooperation Treaty (PCT), outlined above.

Security issues


Many national patent offices require that security clearance is given prior to the filing of a patent application in foreign countries. Such clearance is intended to protect national security by preventing the spread and publication of technologies related to (amongst others) warfare or nuclear arms.

The rules vary between patent offices, but in general all applications filed are reviewed and if they contain any relevant material, a secrecy order may be imposed. That order may prevent the publication of the application, and/or the foreign filing of patents relating to the invention.

Should it be desired to file an application in a country other than an inventor's country of residence, it may be necessary to obtain a foreign filing licence from the inventor's national patent office to permit filing abroad. Some offices, such as the USPTO, may grant an automatic license after a specified time (e.g., 6 months), if a secrecy order is not issued in that time.

Anyone working on government contracts involving national security technologies would be well advised to carefully coordinate patent applications with the relevant agencies. Similarly, patent applicants should be aware of the arms export-control
International Traffic in Arms Regulations
International Traffic in Arms Regulations is a set of United States government regulations that control the export and import of defense-related articles and services on the United States Munitions List...

 laws that may restrict the types of technical information that can be disclosed to any foreign nationals.

Publication


Patent applications are generally published 18 months after the earliest priority date of the application. Prior to that publication the application is confidential to the patent office. After publication, depending upon local rules, certain parts of the application file may remain confidential, but it is common for all communications between an Applicant (or his agent) and the patent office to be publicly available.

The publication of a patent application marks the date at which it is publicly available and therefore at which it forms full prior art for other patent applications worldwide.

Patent pending


Patent pending is a term used to describe an alleged invention that is the subject of a patent application. The term may be used to mark products containing the invention to alert a third party to the fact that the third party may be infringing a patent if the product is copied after the patent is granted. The rules on the use of the term to mark products vary among patent offices, as do the benefits of such marking. In general, it is permissible to apply the term patent pending to a product if there is, in fact, a patent pending for any invention implemented in the product.

Patentable subject matter


Patents are granted for the protection of an invention, but while an invention may occur in any field, patent laws have restrictions on the areas in which patents can be granted. Such restrictions are known as exclusions from patentability.

The scope of patentable subject is significantly larger in the U.S. than in Europe. For example, in Europe, things such as computer software or methods of performing mental acts are not patentable. The subject of what should be patentable is highly contentious, particularly as to software and business methods.

Search and examination


After filing, either systematically or, in some jurisdictions, upon request, a search is carried out for the patent application. The purpose of the search is to reveal prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...

 which may be relevant to the patentability of the alleged invention (that is, relevant to what is claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...

ed, the "claimed subject-matter"). The search report
Search report
In patent law, a search report is a report established by a patent office, which mentions documents which may be taken into consideration in deciding whether the invention to which a patent application relates is patentable...

 is published, generally with the application 18 months after the priority date
Priority right
In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively...

 of the application, and as such is a public document. The search report is useful to the applicant to determine whether the application should be pursued or if there is prior art which prevents the grant of a useful patent, in which case the application may be abandoned before the applicant incurs further expense. The search report is also useful for the public and the competitors, so that they may have an idea of the scope of protection which may be granted to the pending patent application.

In some jurisdictions including the U.S., a separate search is not conducted, but rather search and examination are combined. In such case, a separate search report is not issued, and it is not until the application is examined that the applicant is informed of prior art which the patent office examiner considers relevant.

Examination is the process of ensuring that an application complies with the requirements of the relevant patent laws. Examination is generally an iterative process, whereby the patent office notifies the applicant of its objection. (see office action
Office action
An office action is a document written by an examiner in a patent or trademark examination procedure and mailed to an applicant for a patent or trademark...

) The applicant may respond with an argument or an amendment to overcome the objection. The amendment and the argument may then be accepted or rejected, triggering further response, and so forth, until a patent is issued or the application is abandoned.

Issue or grant


Once the patent application complies with the requirements of the relevant patent office, a patent will be granted further official fees, and in some regional patent systems, such as the European patent system, translations of the application into the official languages of the states in which protection is desired must be filed to validate the patent.

The date of issue effectively terminates prosecution of a specific application, after which continuing applications cannot be filed, and establishes the date upon which infringement may be charged. Furthermore, an issue date for an application in the U.S. filed prior to 1995 also factors into the term of the patent
Term of patent in the United States
In the United States, under current patent law, the term of patent, provided that maintenance fees are paid on time, are:* For applications filed on or after June 8, 1995, the patent term is 20 years from the filing date of the earliest U.S...

, whereas the term of later filings is determined solely by the filing date.

Post-issue or grant


Many jurisdictions require periodic payment of maintenance fees
Maintenance fee (patent)
Maintenance fees or renewal fees are fees that are paid to maintain a granted patent in force. Some patent laws require the payment of maintenance fees for pending patent applications. Not all patent laws require the payment of maintenance fees and different laws provide different regulations...

 in order to retain the validity of a patent after it is issued and during its term
Term of patent
The term of a patent is the maximum period during which it can be maintained into force. It is usually expressed in number of years either starting from the filing date of the patent application or from the date of grant of the patent. In most patent laws, renewal annuities or maintenance fees have...

. Failure to timely pay the fees results in loss of the patent's protection.

The validity of an issued patent may also be subject to post-issue challenges of various types, some of which may cause the patent office to re-examine
Reexamination
In United States patent law, a reexamination is a process whereby a third party or inventor can have a patent reexamined by a patent examiner to verify that the subject matter it claims is patentable...

 the application.

See also

  • Claim (patent)
    Claim (patent)
    Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...

  • List of patent legal concepts
  • List of patent offices
    Patent office
    A patent office is a governmental or intergovernmental organization which controls the issue of patents. In other words, "patent offices are government bodies that may grant a patent or reject the patent application based on whether or not the application fulfils the requirements for...

  • INID codes
  • Kokai
    Kokai
    A kokai or kokai tokkyo koho is a published, unexamined Japanese patent application, in contrast to the kokoku or tokkyo koho, the examined and approved Japanese patent application. Kokai means "open to the public", or "laid-open". Kokai are published eighteen months after the earliest priority...

  • Patent infringement
    Patent infringement
    Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...

  • Proof of concept
    Proof of concept
    A proof of concept or a proof of principle is a realization of a certain method or idea to demonstrate its feasibility, or a demonstration in principle, whose purpose is to verify that some concept or theory that has the potential of being used...

  • Provisional application
    Provisional application
    Under United States patent law, a provisional application for patent is a legal document filed in the United States Patent and Trademark Office , that establishes an early filing date, but which does not mature into an issued patent unless the applicant files a regular patent application within one...

  • Provisional rights
  • Unity of invention
    Unity of invention
    In most patent laws, unity of invention is a formal administrative requirement that must be met by a patent application to become a granted patent. Basically, a patent application can relate only to one invention or a group of closely related inventions. The purpose of this requirement is...

  • Statutory invention registration
    United States Statutory Invention Registration
    In United States patent law, a statutory invention registration is a publication of an invention by the United States Patent and Trademark Office . The publication is made at the request of the applicant...

  • Backlog of unexamined patent applications
    Backlog of unexamined patent applications
    Although not clearly defined, the backlog of unexamined patent applications consists, at one point in time, in all the patent applications that have been filed and still remain to be examined. The backlog was said to be 4.2 million worldwide in 2007, and, as of 2009, it reportedly continues to grow...


Further reading