Some common questions on patenting

What is the difference between a provisional and a complete (or full) patent application?

A provisional patent application requires a specification which fairly describes the invention, whereas a complete application requires a specification which fully describes the invention and contains claims defining the invention for which protection is being sought, together with methods for performing the invention and illustrative figures and examples.

If no further experimental work is envisaged, a complete application may be filed initially.  But more typically, we file a provisional patent application in the first instance, as this offers certain advantages over filing a complete application at the start of the patenting process.  A provisional application can usually be filed more quickly and at less cost, as the information required is less detailed.  It secures a priority date for the invention, which means that novelty and inventive step are assessed according to information available up until the priority date.  At the same time, it allows the patent applicant to obtain additional technical and/or commercial information before taking the process further and incurring higher costs.  Enhancements and improvements to the invention described in the provisional specification which are developed in the course of the priority period can be covered in a new provisional application or added to the complete application at the time of filing.

A provisional application does not become part of the public record, and if no subsequent complete application is filed for the relevant invention, the provisional application lapses.  If the subject matter has not been publicly disclosed and remains novel and unobvious, the application may be refiled at a later date.

However, if the applicant wishes to take the process further in order to obtain patent protection, a complete application must be filed within a year of the provisional filing date (priority date).

What is the PCT?

Where patent protection is required in multiple countries, the complete application is usually filed through the Patent Co-operation Treaty (PCT). The PCT system provides a centralised search and examination service, but it is not a patent issuing authority.  It issues an International Search Report, Written Opinion and International Preliminary Report on Patentability, which gives applicants the opportunity to respond at specified stages of the process, and assess whether it is worth taking the application to the next stage, based on whether a patent of wide enough scope is ultimately likely to be granted by an examining patent office.  The PCT system allows applicants to defer the substantial costs and efforts of prosecuting a patent application in multiple international territories until such time as the prospects of patentability and marketability of the invention are more certain.

[Note that where patent protection is only required in a couple of countries, complete applications can be filed directly in those countries within a year of the priority date.]

What is the National Phase of the PCT?

After the PCT process is complete, patent applications have to be filed at national and regional patent offices of the territories where protection is sought.  Some of these patent offices’ then proceed to conduct their own search and examination processes, while others will rely to a large extent on the PCT search and examination, before either granting or deciding not to grant a patent for the invention concerned.

How much does it cost to obtain a patent?

Patenting is an expensive activity, with costs distributed throughout the patent prosecution process. Once a patent is granted, renewal fees must be paid to keep a patent in force. Actual costs will vary depending on the technology area and patent strategy of the invention concerned, and will be determined by factors such as:

  • Hourly charge-out rates of local and international patent attorneys
  • Complexity of the invention (which may influence the length of the specification, number of claims and amount of time spent by the patent attorney)
  • Official disbursements to patent offices
  • Number and type of objections raised by patent examiners
  • Number of countries in which applications are filed
  • Translation costs for certain foreign filings.

 


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