The Road to Patent Protection Demystified

To those unfamiliar with the patent application process, the routes towards patent protection can seem rather complicated. In fact, many of my initial conversations with new clients involve explaining the various different steps along the path towards obtaining a granted patent.

The flowchart below illustrates three possible routes, followed by a more detailed explanation of the steps involved.

 

wordp-timeline

Route 1 – Domestic Protection

The first step in the patent application process is to draft the application itself. Typically, this involves providing a detailed description of the invention to a patent attorney, who carries out the drafting work. Once the application has been drafted the next step is to file a patent application at the intellectual property office of the applicant’s choice. Generally, UK applicants file their first application (or ‘priority application’) for their invention at the UK Intellectual Property Office – UKIPO. It is possible to file the priority application elsewhere, but the UKIPO provides good value for money as the official fees are relatively low.

For protection in the UK at least (and in many other countries), it is vitally important that the application is filed before the invetion is disclosed publically. Any public disclosure of the invention before an application is filed is likely to jeopardise the patent’s validity.

If a search request is filed along with the application, the UKIPO will carry out a search to find similar inventions to that described in the patent applcation. Around six months after the date of filing the application, the UKIPO issues its search report. This report gives an initial indication of the prospects of success for the application. 

Another option is to file an examination request along with the search request. If examination is requested the UKIPO issues a more detailed examination report, detailing any objections to the application in light of the documents found in the search.

Within twelve months from filing the applications ,

Route 2A – PCT Application

explanation

Route 2B – National/Regional Applications

explanation

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