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Executive Summaries Jul 5, 2021

What is the process for getting a patent?

Now that you invented something great and you know what to do before filing a patent application, there are important steps to consider for obtaining a patent.

Here is an overview of the process to get a patent.

Step 1: Drafting of the Patent Application

Once the patentability search has been made, it is time to discuss the scope of your claims with your patent agent. The claims will capture the essence of your technology operating as a “fence” between your technology and the prior art documents identified at the step of a patentability search. The claims form the foundation of your patent application.

Remember, it is the claims that protect your technology – i.e., the scope of your rights to exclude others.

To support the claims and their description, you will need to prepare drawings explaining what your technology is and how it works. Depending on the field and state of advancement of the technology, schematics and flowcharts could be acceptable drawings to support the claims.

Step 2: Filing of the Patent Application

A patent application must be filed in each country or jurisdiction where a patent is desired. Your patent agent can assist you in determining a filing strategy for your patent application. When the technology is intended to be used in different countries, there are a couple of ways to proceed. If you seek protection of the technology in only a few select countries e.g., the United States and Canada, it is generally more cost effective to file directly with the respective patent offices of those countries. However, if there are more than two target countries, you may consider filing an international patent application, also known as a PCT application.

PCT applications defer the major filling costs for a period of 30 months from the priority date (i.e., the date at which the patent application has been first filed), it is called the international phase. After the international phase, you will have the option to convert the PCT application into foreign patent application in each country where you seek protection (which is called the National/Regional Phase). Examination of the application during the international phase is a strategic decision that you should discuss with your patent agent.

Step 3: Prosecution of the Patent Application

Once the patent application is received by the respective patent office, its application is examined by an Examiner. The Examiner will assess how patentable your technology is in view of the existing prior art and determine if the patent application meets formal requirements of the patent office. If the claims and the patent application, as a whole, comply with the requirements of the patent office and the Examiner fails to find any prior art relevant to your technology, a “Notice of Allowance” will be issued, which will prove that your solution is currently new and inventive and can thus be patented. However, if the patent application is not aligned with the above requirements, the patent office may provide an official communication (an “Office Action”) specifying issues to correct.

When filing in multiple countries, there are programs to streamline the examination of your patent application in different countries. Such programs include the “Patent Prosecution Highway” which is operated by a group of patent offices around the world. This program allows for one patent office in the group to use the results of the examination performed by another patent office. There are some conditions that the patent application must meet to qualify for this program. Notable group of patent offices include the UK, the USA, Europe, China, Japan, Korea, Canada, and Australia. Another such program speeding up the prosecution is the “Programme for accelerated prosecution of European patent application” used by the European Patent Office (EPO). This program also has some requirements to be met by the patent application.

Step 4: Pay the Issue Fee and the Annual Fees

After receiving the Notice of Allowance and paying the issue fee, the patent is granted, and the rights conferred by the patent are in force and can be asserted against a third party. Annual fees are required in most jurisdictions to keep a patent in force. A patent owner should expect the annual fees to increase from one year to another.

Conclusion

While the process of acquiring a patent may seem daunting and time consuming, a knowledgeable patent agent can help you successfully navigate through this process and receive the patent enabling you to make most of your idea’s commercial potential once it gets to the market. Should you have any questions regarding this article or patents in general, please do not hesitate to contact our team.

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