Below are some crucial points you need to know about patent registration before you start.
- A patent or utility patent grants a monopoly right to produce and sell products created using the technological solution protected by the patent.
- The duration of a patent ranges from 10 to 20 years and can vary depending on the country of registration, type of the product or patent.
- Patents protect technical solutions regarding devices, processes and substances, or their new applications.
- In order to obtain a patent, the solution must be of worldwide novelty, that is, no information about the solution should have been published anywhere in the world before.
- The patent registration process includes the following main stages: creating the application, filing the application with the patent office, passing the examination of the application, registering the patent and securing its annual maintenance.
- Conventionally, all patents (patent applications) can be divided into basic (home) and subsequent (foreign) ones. Basic application is created from scratch, while foreign applications completely rely upon the basic application and go through all stages except the creation itself.
- There is no concept of an international patent that is valid worldwide; one has to obtain a separate patent for virtually every country and go through all the stages of registration.
- The owner of a patent can be either a legal entity or an individual, or a combination of both.
- In most countries, foreign applicants can apply for patents only through patent attorneys certified in that country.
- Patent registration is a complicated procedure that can take years, and the budget for obtaining and owning a single patent can amount to tens of thousands of dollars.
The most important thing in patent registration is the creation of a basic application (draft), since all subsequent procedures depend entirely on the quality of this stage.
- First, it’s necessary to conduct a global patentability search and determine the closest technical solutions, find out how the patented technical solution is different from them and define the scope of claims to be applied for examination. For example, if you have invented a wheel with a tire, the closest analog would be a wooden wheel.
- A patent claim should be drafted so that it does not contain any superfluous words. In particular, for a wheel with a tire, the claim should only indicate the presence of a tire on a wheel, while specifying such details as the rim material, shape, or the number of spokes will reduce the quality of the patent.
- The patent specifications and drawings serve as a detailed explanation of the claim and should be drafted in such a way that the invention described in the claim can be put into practice.
- To implement this stage, it is recommended to choose a vendor very carefully. Ideally, they should have experience in the relevant technical field and take a proactive position (go deep into the core of the product and advise on what and how to patent) rather than just blindly follow the instructions.
- Implementation costs can be significant: for example, the services of patent attorneys in the U.S. or Europe can cost $15,000-25,000. The cost can be reduced to $7,000-15,000 by ordering the search and drafting of the application in countries with a lower standard of living, such as India, and then sending the completed application to US or European attorneys for review.
Once the basic application is ready, it can be filed for patent registration with the patent office of your own or other countries:
- The filing of an application is a formal procedure, which includes drawing up an application (usually through electronic systems of interaction with the Patent Office), preparing a warranty of attorney and paying the state fees. At this stage, it is possible to choose the cheapest possible offerings on the market, the main thing being that the attorney should be certified.
- Globally, the application process in all countries is very similar, with slightly different sets of documents. Most countries require a translation of the application into the national language.
- However, each country has some specificity regarding the criteria for patentability or registration of applications. These features need to be taken into account when filing an application, or these can be adjusted in the process of examination. In various cases, one or the other option will be cheaper, so it’s worth consulting with a local patent attorney about this issue.
- Foreign applications must be based on the basic application and may be filed with offices in other countries within 12 months of the filing date of the basic application, otherwise the invention cannot be patented in other countries.
- To increase the time for filing applications to other countries from 12 to 30 (in some countries up to 31-32) months, you need to file an international PCT application, and based on it file applications to the desired countries. The PCT application must be filed within the first 12 months from the filing date of the basic application. The PCT application is not a patent, that is, it does not give the opportunity to protect rights but makes the procedure of foreign patent registration more convenient.
- The cost of filing consists of the cost of the attorney and the fees. Fees can be reduced if the application is filed from an individual or micro/small business. The cost of services varies greatly from contractor to contractor and can range from a few hundred dollars to several thousand dollars.
- The proven way to overpay is to work with agents. For example, to apply to Europe, China and Japan through a U.S. patent attorney. At first glance, it seems easier and more convenient, but this approach may cost several times as much, and then you will have to overpay for each action.
- Finding trusted and reliable performers in other countries is not easy, but it is possible and worth the effort. By working with a direct contractor in each country you save significantly and have better control over the process, while getting timely information which is not distorted by chains of intermediaries.
The iPNOTE platform features more than 700 IP law firms that cover more than 150 countries, so you can always find the right direct service provider using our flexible filtering system. Take a look at our directory of providers.
When the applications have been filed, the examination begins, in which the patent office of each country issues its own opinion on the novelty and patentability of the invention.
- Each patent office searches and reviews applications independently, so a positive decision in one country does not guarantee the same decision in another country.
- Approximately every 6-12 months, each patent office will provide an Office Action, a document explaining the examiner’s position and requesting additional materials, arguments, or adjustments to the application.
- Each Office Action requires a response within a certain timeframe, and its preparation also requires the involvement of a patent attorney, which entails additional costs. However, since the future of the patent depends on this stage, it’s crucial to choose a reliable attorney.
- Although each patent office acts independently, they all rely on the same worldwide patent framework, so the questions can overlap in one way or another in different countries. You can use previous inquiries and answers to them to make the work of attorneys in other countries easier and to reduce the cost of services.
- In a normal scenario, the examination procedure is finalized after 1-3 rounds of Office Actions; but in complex cases, this can take longer. However, if there is a 3rd request for examination, it makes sense to analyze the entire examination history more deeply and possibly think about changing the patent attorney or at least discuss the situation with the current one.
- It is advisable to ask the patent attorney to make a brief summary of the examination request and the answer provided, and to make sure that the questions are not repeated or previous answers do not raise new questions—all these are indicators of a low quality of service.
- The examination process can be greatly facilitated by working with a patent attorney who has extensive experience in the relevant technical field, because they will be on the same page with the patent registration expert, in which case the examination might end positively after the very first Office Action.
When the examination has been successfully completed, it is necessary to obtain a patent, do some additional operations, and then maintain it with a certain periodicity.
- The procedure for granting a patent (Granting) is also a formal one and involves the preparation of an application and payment of fees. Again, you can save money by choosing a patent attorney with some basic experience.
- After the patent is issued in Europe, it still needs to be validated in each country of the European Union, which entails translating the application (or just the claims) into the national languages, applying and paying the fees. It is possible to save money if you order translation from professional translators and get the validation from specialized services.
- In most countries, a patent should be maintained annually, while in some every few years. The procedure includes the payment of a fee and sometimes the filing of a corresponding application. In some countries, you can pay the fees yourself, but in most countries they must be paid in local currency and through patent attorneys. Small local firms or specialized services may also be chosen to save money.
As you can see, patent registration is a complex and long process, and each stage of patenting has its own specificity. Some stages are just formalities, while others can define the future of the whole patent. If you work with the same attorney at all stages, you either overpay or get a low quality of work.
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