Crash course on patents: The procedure for getting a patent

Patent rights are granted by national Patent Offices, and so patent protection for an invention must be sought in each country individually. The procedure generally involves three steps. First, the person (or company) seeking patent protection must file a patent application at the Patent Office.

Second, the Patent Office then performs a novelty search, which involves checking all the literature available to it to find documents that describe the invention in part or in whole. In this search, only documents that were published before the date of filing of the application are to be considered.

And third, an Examiner decides on the patentability of the invention in light of the report of the novelty search. The applicant of course has the right to discuss the findings of the Examiner, to argue about interpretation of the literature found, and to limit the scope of his patent if necessary. If, after that, there is still an invention left, the applicant is granted a patent for it.

The patent application

The first step in getting a patent on an invention is writing a patent application. In this application, the inventor must disclose the invention in sufficient detail for the average skilled person to be able to reconstruct it. This way, anyone should be able to rebuild the invention and apply it himself once the patent rights run out.

A patent application typically consists of six parts:

  1. A statement identifying the field of the invention, or the type of apparatus, device, method or other object it relates to.
  2. An introductory portion, which describes what is known at the time of writing with respect to this field, and which identifies a problem, disadvantage or need that exists therein.
  3. A brief description of the invention, stating the measures taken in the apparatus or method according to the invention, and the advantages or solutions it brings.
  4. A detailed description, in the above-mentioned level of detail. This detailed description should mention all aspects of the invention. In some countries it is even required to describe the best way to practice the invention (the "best mode"). In any case, the description should fully describe all aspects of the invention. The detailed description is almost always accompanied by a number of figures. The figures are usually found at the end of the application, except for US patent applications, where they are present at the beginning.
  5. A number of claims. A claim can be regarded as a definition of what the inventor is trying to claim as "his" invention. There are two types of claims. Independent claims stand on their own; they provide a complete definition. If something else matches the definition of the independent claim, it infringes on the patent. The dependent claims refer back to the independent claims, and provide additional (optional) measures. Should an independent claim be declared invalid, the dependent claims referring back to that claim can be used as a fallback position.Claims can be defined in various categories, such as apparatus, arrangement, device, method, system, computer program, medicine, and so on.
  6. An abstract, which gives a short description of what the invention is about. The abstract is not legally binding and does not serve to identify the scope in any way - that's what the claims are for. The abstract is there to help readers quickly examine the relevance of the patent.

Writing a patent application is a tricky business, especially when it comes to claim writing. It is common for an inventor to write a detailed description and figures himself, while the claims and the brief description are written by a patent attorney based on the information in the detailed description.

While the claims define the invention, they are to be interpreted in the light of the wording as used in the rest of the application. So, for instance, if a claim uses the word "round", then normally that means exclusively perfectly round. The description, however, might include a phrase like "The shape does not have to be perfectly round", in which case a slight deviation is permissible to still fall under the definition of the claim. The description might even say "The word 'round' is used here to mean any kind of geometrical shape, including but not limited to square, rectangular, elliptical or curved in any other way", in which case almost any shape would be considered to fall under the heading 'round'. Or, as a common saying goes, a patent drafter is his own lexicographer. For more information regarding the scope of a patent and claim interpretation, see Determining the scope of a patent.

The publication

A patent application is published 18 months after it has been filed (or 18 months after its priority application, if any, has been filed). This way, the world is informed about the fact that a patent can be expected on that particular invention. Someone else using the invention could then switch to a different technology, or make reservations to pay for a license once the patent is granted. He could also start looking for relevant prior art (for example, documents on his own use of the invention before the filing date) to get the patent annulled if it is granted eventually.

Until November 2000, the US patent office did not publish applications, but instead only published the granted patents. This meant that someone else using the invention would not have any time to take preventive action. The reason for not publishing is that it robs the inventor from the chance of withdrawing the application if it becomes apparent he will be unable to get a patent on it. Once it has been published, the invention is there for all to see, and the inventor has lost control. If the patent application is subsequently rejected, the inventor can't gain exclusivity through his patent nor through keeping the invention a trade secret.

During the examination process, the applicant has the chance to modify his claims, and sometimes part of the description. This means that the patent as granted might differ substantially from the patent application as published. The patent as granted is also published, and the rights granted by a patent becomes effective upon publication.

The novelty search

In order to determine whether an invention is patentable, it must be compared against what was known at the day before the day of filing of the application. This is known as the state of the art. Documents that were not available until on the day of filing are to be disregarded because they were not part of the state of the art at the day of filing (see When is something prior art against a patent?).

Some countries, most notably the USA, have a so-called "grace period". Publications by the inventor during the grace period, which can range to up to one year before the filing of the patent application, are also not considered to be part of the state of the art. However, this of course only applies to the patent application for the countries in which such a grace period exists. In other countries, the document will be considered of part of the state of the art.

While in general the term "document" it used, in practice any revelation regarding the invention is to be considered to be in the state of the art. So, if the invention was publicly shown at an exhibition before the date of filing, then the presentation is considered to be part of the state of the art. If the inventor told someone about the invention before filing a patent application, then that oral disclosure is part of the state of the art. If such an exhibition or oral disclosure describe all the features of the invention, then the invention is not novel with respect to the state of the art. Proving that the inventor in fact did orally disclose the invention before the patent application was found can be rather difficult, though.

Almost always, the searcher will only consider databases containing printed publications because they are the easiest to search. Based on what he finds in those databases, he draws up a search report which gets published next to the patent application. The applicant can than evaluate the search results and decide whether there is anything patentable left. If so, the patent application moves to the next stage: the examination.

The examination

In this stage, the patent application is compared against the state of the art by an Examiner, who makes a determination whether the invention is novel and whether it involves an inventive step. In order to accurately determine what the invention is, each patent application contains a number of claims at the end of the application. These claims define the invention and indicate for what patent protection is sought. So, the application may describe in very broad wording how the apparatus according to the invention to be constructed, but if the claims described only one specific example, than that specific example is considered to be the invention, regardless of the rest of the application.

To determine whether the invention is novel and involves an inventive step, the Examiner only looks at the claims. If all the elements that are mentioned in the claims are also found in a single document that is part of the state of the art, then the invention is not novel. If the invention is novel, but adding the missing features is considered to be obvious, then the invention lacks an inventive step. The Examiner communicates his findings to the applicant, in the form of a so-called Office Action or Communication.

Generally, the applicant will disagree with the findings of the Examiner. He can then respond to the Communication of the Examiner by pointing out the certain features of the claim are missing in the state of the art, or that a combination of documents made by the Examiner is not proper. He may also introduce additional features in claims, so as to distinguish the invention as claimed from the state of the art.

Often, a claim is followed by a series of so-called dependent claims, which list additional features. Adding a new feature to a claim is then often done by combining the first, independent claim with one or more of the dependent claims. For example, the first claim may describe a method of compressing an image that works by applying run-length encoding on continuous areas of the image. A subsequent dependent claim could then give the additional feature of reducing the number of colors in the color palette. If run-length encoding of continuous areas is found to be present in the state of the art, then the first claim is rejected for lack of novelty. The applicant could then combine the dependent claim and the independent claim to overcome this objection.

The Examiner then has to consider whether a method of compressing an image involving RLE coding and palette adjusting is known in the state of the art. He could then, for example, locate another document which explains that a good compression level is achieved by reducing the number of colors in the palette, and use this document as an argument that the invention lacks an inventive step. The applicant would then have to find a new feature to add to the independent claim or withdraw his application. If the Examiner can find no such document and no such hint anywhere in other documents, then the application apparently does involve an inventive step, and the Examiner will grant a patent.

Of course, a patent is not immune after grant. It is possible to invalidate a patent at any moment based on the fact that it is not novel or that it is obvious over the prior art, as long as the appropriate evidence can be given.

All parts