Guide to the Patent Process
The patent process may be broken down loosely into three distinct stages (1) Pre-filing, (2) Pending application and (3) Granted patent. It is important to note that in addition to the costs involved with the preparation and filing of a patent application, there are further costs that arise after filing the application in connection with bringing the application to grant and maintaining the patent/patent application in force. These costs depend on where patent protection is sought and we are happy to provide you on request with a full estimate of costs that you are likely to incur over the lifetime of the patent. Of course, if you instruct us at any stage to abandon the application/patent, no further costs will arise from that point onwards.
1. Pre-filing:
Prior to filing the application, O’Connor Intellectual Property will thoroughly evaluate your invention, advise you on your options and what we believe is the patent filing route most suited to your individual circumstances (more below). In order to do this, it is beneficial if you complete the invention disclosure form and return it to us. It is not essential to use the invention disclosure form however it is advisable as it will prompt you to provide us with the information that we require in order to advise you comprehensively. Please note that all communications with O’Connor Intellectual Property are treated in the strictest confidence.
Once you have decided the route that you wish to take having considered the options presented to you, you will need to instruct us as to which route you have chosen. We will then prepare a suitable draft application on your behalf. The draft application will be sent to you for correction/amendment and once we receive your corrections/amendments to the draft application, we will finalise the specification and prepare it for filing. In some cases, more than one draft will be necessary in order to get the application right.
Usually, the pre-filing stage takes approximately 4 weeks from receipt of your instructions to prepare an application.
2. Pending application
Once the application is filed, it becomes a pending application. The subsequent procedure depends on the patent filing route that you have chosen and the following is intended to be illustrative only.
In some jurisdictions you will receive a patentability search carried out by that jurisdiction’s patent office within 6 months of filing the application. The patentability search contains the documents found and deemed to be the most relevant to your invention by a patent examiner. This patentability search gives you a good idea as to whether or not you are likely to obtain a granted patent for the invention in due course and if so, what the likely scope of that application is likely to be. The application will be published approximately 18 months after filing (or after priority if priority is claimed).
The next step is to request examination of the application, usually within 6 months of publication and you can expect to receive the first examination report within 6 to 12 months of requesting examination. A response to the examination report must be filed, usually within 3-6 months of receiving the examination report. In some cases, more than one examination report will be issued. If successful, a patent will be granted within 6 months of filing a successful response to an examination report.
In total, the Pending application stage can take up to 3-5 years from the date of filing of the application. In some cases this is significantly shorter and in other cases it can be even longer. It is important to note that it is not necessary for you to wait until you have a granted patent before commercialising your invention, once the application has been filed you are in a position to begin commercialising the invention. In some jurisdictions, it may be necessary to pay annual renewal fees to maintain the patent application in force, payable in advance for the 3rd and each subsequent year.
3. Granted Patent
Once granted, annual government renewal fees are due each year up to and including the 20th year in order to keep the patent in force. The annual renewal fees usually start off at approximately a few hundred Euro per jurisdiction for the 3rd year and increase incrementally by twenty euro or so per annum. O’Connor Intellectual Property operate a reminder service to remind its’ clients of upcoming renewal payments that are due. After the patent has been granted, you can bring proceedings against third parties preventing them from infringing your patented invention.
What type of patent application should I be filing?
There are several ways in which you can file patent applications. For example, you may decide to file a single application in Ireland (or another country) in the first instance so that you can test the commercial prospects of the invention. If you do so, you have 12 months to commercialise the invention and file further patent applications in other jurisdictions claiming priority from the Irish application. If filed within 12 months, the subsequently filed applications in other jurisdictions are effectively back dated to the original filing date of the Irish Application. Therefore, your disclosures of the invention are not held against the patentability of the subsequent applications for the same invention. Alternatively, you may decide that you wish to bypass the preliminary application stage and file either a PCT application covering over 140 countries or file complete applications in certain jurisdictions, for example the United States and Canada, straight away.
The route that you choose will depend on numerous factors including the stage that you/your company is at, where your markets are/are likely to be, the stage of development of the product/process, whether or not you are looking for funding, the finances currently available to you, the industry in which you are operating, the nature of your customers and so on. At O’Connor Intellectual Property, we will help tailor a patent filing programme that best fits your specific needs.