The patent grant procedure is similar for all patent offices and can be divided into five steps.
Before you apply for a patent, you should first perform a detailed patent search, which, to a large extentm you can perform yourself.
Filing an Application
A patent application consists of an application request, an invention description, patent claims, drawings (where appropriate), and an abstract.
They are submitted according to the selected path with a national or international patent office. When presenting the application at the patent office, the application fee is due.
During the application filing phase, a patent attorney plays a major role. He will prepare the application documents with you. There is no obligation to appoint a patent attorney as a representative of the patent application, if the applicant resides in the respective local state or in a member state of European Patent Convention. However, even patent offices recommend appointing a representative to any applicant who is not experienced in applying for patents.
Your first application to a patent office is regarded as the so-called “priority application”. Starting at the filing date of the priority application, you are given 12 months for filing applications at other (national) patent offices which belong to the same invention. The effective date for the evaluation of patentability is the date of filing of the priority application. If you need more time to decide in which countries you want to get the property right you can extend to 30 months by filing a PCT application, which delays the entry of the national phase.
Submitting national patent applications, it often requires the translation of your application into a language accepted by the local patent offices. At the EPO, applications can in principle be submitted in any language, but official languages comprise English, German, and French only. Therefore, a translation has to be compiled, if the application is not presented in one of these official languages.
Formal examiniation and search report
At first, the patent office will examine your application formally and check whether all necessary information and documents have been provided. Patent claims can, to some extent, be filed subsequently within 2 months. Among other offices, the USPTO and the Australian Patent Office allow so-called Provisional Patent Applications. These do not contain claims, etc., which allows you to keep it open for 12 months what exactly your invention consists of. Still, you have already ruled out that other might file an application for the same invention.
Simultaneously, a search report can be requested. This search report lists all documents (other patents and miscellaneous publications, such as scientific articles) that are relevant for assessing novelty and inventive step. The search report gives an applicant a first overview of whether prosecuting a patent grant continues to be seem promising. For a PCT application you get the research report usually 16 months after filing of the priority application.
Typically, 18 months after patent filing, the application is disclosed to the public – usually together with the search report. However, this publication is independent from a search report request and whether or not the patent has already been granted. Starting with the publication date, the public understands that a patent application has been filed and what information it contains.
Examination of the application
For starting the examination procedure, an examination request has to be filed. The due date is different from office to office. At the DPMA, an examination request has to be filed within 7 years, at the EPO it is due not later than 31 months after filing. In case of a PCT application, you can apply for a preliminary examination after 22 months.
The applicant will receive an examination report including a justification by the patent examiner. At the EPO, for example, an examination board usually conists of three examiners. They decide conjointly whether a patent can be granted and which claims are accepted
The applicant may respond to the communication and put forward arguments as to why, for example, an application should not be rejected or why certain claims but should be approved. In these responses, the work of a patent attorney is crucial. He can strongly influence, what is really protected by your patent. Quite often, communication and response between applicants and the office occur in several rounds before a patent is granted or rejected. This may delay the process in time significantly and also significant costs arise in every twirt.
Patent grant and publication
As soon as a patent has been granted and issued, the patent owner can exercise his intellectual property right and grant licenses in the respective country or countries.
A granted European patent acts as a collection of national patents. After issuing a patent, a European patent must be validated in every defined contract state within a certain period of time in order to count as a local property right. Depending on the country, the owner is obliged to provide a translation in an official language. Additional fees might arise here.
Maintenance of patent protection
The lifetime of a patent usually covers 20 years starting with the date of filing. Opposition filings against a granted patent are permitted over some period of time (e.g. 3 months at DPMA, 9 months at EPO).
In order to maintain patent protection, the patent owner is obliged to pay annual maintenance fees. If this does not occur, the patent expires automatically after a grace period.