Thu 15th Dec 2022
Startup IP guide #2: What happens to my patent application after filing?
Sectors: AI and data science, Chemistry, Cleantech and renewables, Electronics and telecoms, Fashion, Finance and insurance, Food and drink, Life sciences and health, Materials science, Mechanical engineering, Software patents
In the second of our IP Guides for Startups, patent attorney Elizabeth Mills explains what is happening at the patent office while you wait to hear if you have been granted a patent.
So, you’ve filed a patent application: what happens next?
Patent search and examination procedures
After filing your patent application and paying at least one official fee to a patent office, the patent office will perform a search and examination of your patent application.
Essentially, the patent office will be looking through everything published to see if someone has already disclosed your invention. Note that the disclosure can be by the applicant him/herself. Although the patent office can look at anything published, they will normally focus on patent- and patent application-related publications.
During a search procedure, an examiner at the patent office will attempt to find publications that are directed towards the same invention and which were published before your patent application was filed. These other publications are referred to as ‘cited prior art’ and ‘background art’.
During an examination procedure, the examiner will apply criteria for granting a patent to the patent application while considering the disclosure of the publications found in the search.
They will look at some formality-related criteria, such as the claims needing to be clear (e.g., consistently using the same terms for the same entities throughout the claims, each term in the claim being understandable, etc.) and concise (e.g., containing no duplicated wording).
More importantly, the examiner will focus on criteria related to:
- Whether the claims are new over the cited prior art - i.e., is the invention unknown compared to the documents found in the search?
- Whether the claims are inventive over the cited prior art - i.e., is the invention non-obvious, rather than a simple tweak over what is already known from the search documents and common general knowledge?
- Whether the application describes the invention in sufficient detail to enable someone else to perform it.
- Whether the claims fall within an excluded class.
Patent search and examination reports
The examiner will provide the results of the search and examination procedures in respective reports, which will be sent to you, or typically to your patent attorney.
The search report lists the documents found by the examiner during the search and indicates which of these are considered to be most similar to your invention.
The exam report indicates whether the patent application fulfils the examination criteria for granting a patent, or whether the examiner has any outstanding objections to be addressed.
For example, when the examiner believes that the claims are not new, not inventive, and/or relate to an excluded class, they will issue an examination report to state this and to explain their reasoning. These are referred to as the examiner’s objections. The examiner will also set a deadline for responding to the examination report.
Responding to the patent examiner
Our patent attorneys can help prepare a response to any examination report. For example, the response may include:
- arguments against the examiner’s objections; and/or
- amendments to the patent application itself to overcome the examiner’s objections.
Although the patent application cannot be amended to include new information over what was originally filed, the description and claims may be used to amend the claims. In other words, you can use what was in the originally filed patent application to amend your application, such as by amending the independent claim(s) to include a feature described in the detailed description. As another example, the independent claim(s) can be amended to include a feature that was previously in a dependent claim.
On reviewing carefully drafted arguments and/or amendments, an examiner may be, and most often is, persuaded to remove the objections.
Several examination reports and responses may occasionally need to be exchanged before the examiner is persuaded to remove all of their objections, especially in borderline cases where as broad as possible protection is desired and/or the focus of the invention has changed during examination of the application. The examiners may also decide to look for additional prior art documents in this time and/or relevant prior art may come into light elsewhere.
Dealing with a refusal
When the examiner cannot be persuaded to drop their objections, they will issue a refusal of the patent application. This decision can be appealed. In some jurisdictions, such as the European and UK patent offices, an oral hearing may be held at this stage. Oral hearings should not be feared: They give a good opportunity to discuss the application in depth with a panel of examiners and an agreeable formulation of the claims is often found at the end of the hearing.
Receiving a grant of patent
When the examiner has no objections left, they will grant a patent for the agreed form of the patent application. The agreed form of the patent application contains all of the amendments that were made in response to the exam report(s).
The patent application may subsequently be converted into a patent by performing various formal actions, including payment of official printing fees.
When can I use the term ‘patent pending’?
The term ‘patent pending’ refers to a time period when a patent application has been filed for an invention, but before a patent has been granted for the invention.
In general, the term ‘patent pending’ may therefore be used during this time period. However, there are some requirements for how this term may be applied to products, and the type of protection this can afford. These requirements can also vary between different countries.
Our attorneys can advise further on this once your application(s) are filed.
We provide a free initial consultation of up to 30 minutes for start ups interested in using our services to protect their patents, designs and trade marks. All discussions will remain confidential.
This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in November 2022.