Registering a patent in Europe is the ideal option if you want to exclusively exploit your invention in European countries. Here I will layout the 10 steps required for its proper processing:
STEP 1 – SEARCHING
Before applying, it is highly advisable to do a prior investigation of patents and other publications to locate what others have done previously in the field of invention. The process starts well before a patent application is filed. If the inventor is working in a field in which he or she is unknown, a private search can flag up any previously published information (“prior art”) which may confirm that the invention is either not new or not inventive, and save the inventor wasting his or her hard-earned cash on a patent application which is destined to fail.
STEP 2 – DRAFTING
A patent application is very tricky to prepare. In most cases, the patent application is the combination of technical expertise (from the inventor) and legal knowledge (from the patent attorney). Once a patent application is filed, no one can add any new information to it. Therefore, it is very important to ensure that the invention is fully described and claimed, disclosing all possible variants.
The Application Process
STEP 3 – FILING
Once the application is ready, it is filed at the UK IP Office (i.e. the Patent Office). Once the application is filled you will be assigned a file number and a filing date (this date is very important). They can use the Application no. for commercial purposes.
It’s standard to file a request for a search and pay its application fees. In some cases, where the applicant requests to speed up the process, an application for examination can also be filed with its fees.
STEP 4 – PRELIMINARY EXAMINATION
The Intellectual Property Office will check the filled application to make sure it is in the correct format, and that the forms have been properly completed.
STEP 5 – SEARCH
After a few months of filling, the IPO will provide a search report. This can be viewed as a preliminary opinion of patentability. The objective behind this step is to find any prior art which shows that the invention may not be new or inventive. No response is required.
STEP 6 – PUBLICATION
If the application is successful, and any formal objections set out in the preliminary examination are overcome, it is published shortly after 18 months from your filing date. At this point, all correspondence between the Intellectual Property Office will be open to the public unless you have specifically asked to treat it in confidence. This sets a deadline of 6 months to request an examination and pay the fee (if not already done).
STEP 7 – EXAMINATION
Once the examination has been requested by the applicant, an inspector from the IPO will review the search results and either indicates that the application is ready for the grant or issue a report detailing any objections he or she may have to the patentability of the invention. The applicant is generally given 4 months to reply, in which the applicant will either (i) argue against the objections or (ii) make improvements in the application to overcome them (for example by narrowing the claimed scope of protection).
There may be more than one round of examination, depending on the objections raised and the applicant’s willingness to acknowledge the inspector’s arguments.
STEP 8 – GRANT
Once the inspector is satisfied with the complete process, he or she will send the application for the grant. This can take 3-4 years from filing! Once the patent is granted, the applicant can implement it against infringers.
To conclude, it’s a fairly straightforward process. The complexity comes in the substantive law (particularly inventive step) and when protection overseas is required. IIPLA are experts in this field, so please get in touch if you have any questions or run into problems getting your UK patent granted!