Filing a patent application is the start of a journey, not the end of it! In fact it can take several years for a patent application to mature into a granted patent. Although variations exist between different offices, a patent application will in most cases go through several phases including formalities, search, publication, examination, grant, and maintenance. The aim of this short article is to provide an overview of the procedure at the UK Intellectual Property Office (UKIPO) [1].

 

Filing and Formalities

At filing stage a written description of your invention should have been submitted to the UKIPO together with optional drawings. In most cases a set of claims that defines the invention in legal style is also filed. Within the first 12 months from the filing date, several additional steps must be taken to maintain the application including paying a search fee and filing an abstract. Soon after filing, the UK application will be reviewed by a formality officer to check that the minimum requirements of your application have been met. If this is not the case a formality report is issued indicating what needs to be done.

 

Search

Upon payment of the search fee, the Examiner will then perform a prior art search to look for relevant documents that pre-date the filing or priority date of the application. This search is based on the subject matter as defined by the claims. If the search is requested on filing, then the search report can be expected about six months after filing. At this stage the prior art should be reviewed by the Applicant to make a pre‑assessment of what might be the future scope of protection.

 

Convention

Twelve months after filing, the Applicant has the option of extending protection outside the UK by filing an international application or separate national applications directly into the countries of interest. By claiming the so‑called priority of the first filing application these applications will be regarded effectively as if they had been filed on the same day as the first filed UK application. (See our previous article on patent filing https://www.scintilla-ip.com/a-holistic-approach-to-patent-filing).

 

Publication

At 18 months from the filing date the application is published. In a situation where there is little prospect of obtaining a grant, the Applicant may choose to withdraw the application before publication. This can be useful if the Applicant wants to re-file an updated version of his application or avoid competitors being made aware of the filing.

 

Examination

Substantive Examination can be requested at any time, but no later than six months after publication of the search report, that is roughly two years after filing. This phase is known as the “prosecution” of the application which conveys the idea that the application is going to go under the microscope to check that it complies with various requirements. In particular, the Examiner will check that the application satisfies the conditions of novelty and inventiveness in view of the prior art by mapping the features of the claims against the features present in the prior art. The examination report will explain why the Examiner believes that some claims lack either novelty and/or inventive step. The Applicant has then the opportunity to reply to the report by addressing these objections. In most cases this involves a combination of claim amendments and arguments in favour of patentability. Additional Examination reports might be issued if the Examiner is not convinced by the arguments presented or if additional prior art is discovered. Once all the objections raised by the Examiner have been addressed the Examiner will issue a notice of acceptance. At this point the scope of protection should be reviewed and the Applicant should consider whether a claim of a different scope could be secured by filing a so‑call divisional application (See our recent post on divisional applications https://www.scintilla-ip.com/can-you-file-a-divisional-patent-application-yes-should-you-maybe/) .

 

Grant and Maintenance

The patent is eventually published; well done you are officially an inventor!  You can and should mark your future product as patented. A patent can be last up to 20 years from its filing date, however this requires the payments of renewals fees. It is crucial to pay these fees in time to keep the patent in force.

 

Conclusion

When filing a patent application, the clock starts ticking from the date of filing and you will have to make important strategic decisions, at specific deadlines, to either pursue or expand protection of your technology. It is possible to take a proactive approach to speed up the prosecution of the application, for instance by requesting a combined search and examination directly on filing. This is a good idea if you want to obtain early legal certainty. In some other cases you may choose to simply “go through the motions” and delay examination; this can be a good option if you want to keep the scope of protections open for a longer period. Your patent attorney is the advocate for your invention and will help you consider your options at various steps along the way.

[1] https://www.gov.uk/guidance/patents-step-by-step

 

At Scintilla, we help innovative companies get a grip on their intellectual property. Our unique commercial approach combines registration of patents and trade marks with strategic input so that IP can be a springboard for business growth. If you would like to discuss your IP needs, do contact us or book a free initial consultation!