Obtaining a patent
Patent prosecution is the process of obtaining a patent through a national or regional patent office, addressing any objections raised by patent examiners and ensuring that the application meets the legal requirements for patentability.
It generally involves search and examination by the patent office.
During the search, the patent office considers the subject matter covered by the claims made in your patent application and determines what was already known in the public domain before the filing date of the application. Using this information the patent office then examines whether or not the application meets the legal requirements for patentability.
During examination the patent office will generally issue one or more examination reports, raising objections against the claims, i.e. indicating why they consider the application does not meet the legal requirements for patentability. An opportunity is then given for the applicant to submit arguments, and/or to submit amendments to the claims, so as to address the objections that have been raised.
Most patent offices require the applicant to have legal representation from a qualified local attorney, who can provide further advice on local patentability requirements and will prepare and submit responses to the examination reports following the instructions of the patent applicant.
Once the patent office is satisfied that the patent application meets the legal requirements they notify the applicant of allowance and grant a patent.
Appealing a refusal of a patent application
However, if despite the submitted arguments and/or claim amendments the patent office is not convinced that a patent application meets their legal requirements, they will refuse the application.
In this event, there is normally an opportunity to appeal this decision. For example, a decision by an Examining Division of the European Patent Office to refuse an application can be appealed and the decision will then be considered by a Board of Appeal.
How our patent attorneys can help
We have extensive experience of patent prosecution around the world, in all areas of technology. We can guide you through any aspect of prosecution, whether you are a lone inventor, SME or a large multinational.
Our patent attorneys in London and Munich can represent you directly before the UK Intellectual Property Office, the German Patent Office and before the European Patent Office. They are also practised in co-ordinating prosecution of applications across many different territories via our worldwide network of trusted foreign associates, who can provide legal assistance and represent you before their national or regional patent office.
Introduction of the Unified Patent Court in Europe
The Chartered Institute of Patent Attorneys has released a video explaining the upcoming changes to the patent system in Europe and the introduction of the United Patent Court on 1 June 2023.