A due assessment of the alternatives, such as, patent, trade secret, copyright, etc., for protecting the intellectual property in an invention is the typical first step in the process for patenting it. This needs an appreciation for the pros and cons of patents vis-à-vis trade secrets. It also calls for evaluating if the invention is “patent-worthy”.
Once the strategic decision to create and protect the proprietary rights in an invention through patenting is taken, the vital step of patent application filing follows. It obviously entails the trade-off of public sharing of technical know-how in return for a monopoly of twenty (20) years for commercial utilisation and monetisation of the invention.
The patent application process involves conducting a patentability check first. The patentability search comprises of examining "prior art" to determine if the invention is novel and non-obvious.
The patenting process provides inventors the option of filing a patent application with provisional specifications, when full enabling details of the invention and associated claims are not unavailable. Those inventors, who have made substantial progress, but are still fine-tuning their inventions and want to block others from claiming similar or identical inventions, can opt to file such provisional application initially.
The inventor is required thereafter to follow up with the full (or, complete) specifications application. This complete application must be mandatorily filed within twelve (12) months from the date of the provisional patent application, failing which the provisional application will be deemed to have been abandoned. It must be drafted with abstract and detailed claims, which are not required for the provisional patent application.
The inventor, of course, also has the discretion of directly filing a complete application, without initially filing the provisional patent application.
The provisional or the complete application, with all required forms and fees, must be submitted to the patent office. This can also be done electronically in most jurisdictions. Besides specifying the details of the invention, the application should also include the deed of assignment or proof of right to apply; details regarding applications made to foreign countries; declaration of inventorship; and, patent agent authorisation.
The date of receipt of such application with provisional or complete specification at the patent office is regarded as the priority date. The inventor acquires the right to enforce and litigate against infringement from priority date, subject to the patent being granted.
The complete specifications application is published by the patent office in the official patents journal. Such publication is typically done within one month of completing eighteen (18) months either from the priority date or filing date, whichever is earlier. This exposes the claimed invention to the general public, who can oppose the patent grant.
The publication of the invention is followed by a request for examination (RFE). In the patenting process, this evaluation is a critical step, wherein the examiner scrutinises the invention for its compliance with the patentability criteria, which include novelty, non-obviousness (or, inventive step) and being capable of industrial application.
The patent examiner carries out a prior art search of published patents and other anticipations, through research publication, etc. Further, based on his assessment of patentability, the examiner and/or other patent owner(s) may raise opposition to the grant of patent for the invention.
The applicant(s) must then respond to the objections raised in a timebound manner. An updated specifications document may be submitted too. The patent office may schedule a hearing for the applicant(s) to furnish justification or explanations for the objections raised by the examiner.
If all objections are resolved satisfactorily, the patent is granted.
At Blaze Ventures, we have elaborate processes and qualified professionals for helping inventors and enterprises navigate with ease and effectiveness the “patenting” process for their ideas, inventions and innovations.
