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The Patent Application Progression

Different countries have different patent laws and so the actual progress of a patent application depends on the country or region in which it was filed. The generalised progress for a patent application is explained here which gives some idea as to what happens between filing and grant in a typical country. Some countries do not bother to examine patent applications at all and grant is a formality; other countries do not publish patent applications and so the first document published is the granted patent.

The application is filed, usually in the country where the invention was made, to establish priority. Note that in the UK it is a legal requirement that all patent applications are first submitted to the UK Patent Office. Twelve months later, the application is filed throughout the world. The application is given a preliminary examination to check it meets with the legal requirements for filing a patent and then a search is carried out to establish if the invention is novel and non-obvious.

The application is published 18 months after the priority date, six months after local filing following the Paris Convention year. A search report detailing the results of the examiner’s search is also published. The applicant then has a period of time, about six months, to decide whether or not to request a full examination of the application. If examination is requested, the examiner goes through the application in detail and third parties, who have read the published application, may submit their observations to the examiner. Finally, if the examiner is satisfied that the invention meets patentability criteria, the patent is granted. The applicant must pay fees at each stage of the process, and renewal fees for the patent after grant. On average, it takes between one and five years from priority for a patent to be granted, although the US patent covering the anti-oestrogen, tamoxifen, took over 20 years! After grant, a patent may be revoked for a variety of reasons and if the patent survives and is kept in force by payment of renewal fees, it eventually expires when its term is finished.

As it progresses through the system, the document may get several dates and number assigned to it in a single country. In a ‘worst case’ scenario the document receives:

  • a priority number and date
  • a local application number and date
  • a published application number and date
  • a published examined application number and date, and
  • a published granted patent number and date

All these can be different. It is therefore very important to know which number you are quoting in order to obtain the correct patent or application document. In some countries, the patent and/or application numbering systems start from ‘one’ each year, therefore the relevant date is critical to retrieving these documents correctly. Fortunately, there are internationally agreed codes on patent documents which identify the numbering and bibliographic data quoted on the patent; these are the INID codes which are listed in Appendix 1.

After grant, the patent is said to be in force. It cannot be assumed to be valid as validity is a statement of the novelty and non-obviousness of the invention and granted patents can be challenged on many grounds. They may be subjected to re-examination which can lead to confirmation of the patent, ie it is declared valid, publication of a reissued patent document with revised claims, or revocation of the patent, ie it is declared invalid.

Grounds for revocation include those where the invention is found not to be novel or it is declared obvious. If the instructions within the document are followed and a working invention is not the result, the patent can be revoked on the grounds of insufficiency, ie a full disclosure of the invention was not made in the patent specification. The inventor must also disclose the ‘best method’ of achieving the invention and again a patent can be revoked if the best method at the time the patent application was filed was kept secret. A patent may also be lost if it is not ‘worked’. This means that this inventor must actually exploit the invention in the country where the patent is in force. Fortunately, this criterion rarely means that the product must be made in the country of the patent (local working) but usually is satisfied if the product is made elsewhere and sold in the country.

If renewal fees are not paid, the patent is said to have lapsed, although there is usually a period of grace during which the patent can be reinstated if the fees are paid. If a patent is no longer ‘in force’, but the reason for this is unknown, then the generic term ‘ceased’ can be used. When the patent reaches the end of its life, it expires.

As already stated, the length of the patent term differs from country to country. For example to work out an approximate patent expiry, take the priority date and add on 21 years. This is because many patents expire 20 years after local filing. However, the actual expiry date can also depend on what patent laws were in force in the country at the time of filing or grant of the patent. The USA is a case in point. US patents were always different in that they expired 17 years from grant rather than the more usual 15 to 20 years from local filing. As a result of the GATT agreement, the USA amended its patent laws to make the term 20 years from the earliest US filing. Any patents in force when the law was changed on 8 June 1995 could have a term of 17 years from grant or 20 years from filing, whichever gives the longest patent term. Patents filed on or after this date have a term of 20 years from filing. The US patent term may be extended.

 
   
 
 
 
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