Patent Filing

While the specific requirements for patentability vary between jurisdictions (sometimes considerably), it is generally held that a patentable invention:

• Is a device, machine, product, process or method that performs a technical function and — even more importantly — solves a technical problem. The problem can be something that has or has not yet been addressed specifically by an existing invention. If it utilizes prior art, your patent application must make clear it is not claiming any pre-existing inventions.
• Is "non-obvious." Some jurisdictions do not use this term — the EU and several others prefer to say a patentable invention involves an "inventive step." But the general point is similar: The invention should represent an approach to a problem that would not be readily obvious to someone with working knowledge of the invention's relevant field prior to the patent application's filing date. In legal terms, this standard is referred to as "a person skilled in the art."

The materials submitted alongside the filing (abstract, drawing, description and so on) must also clearly explain how the invention could be practically manufactured under plausible circumstances.

Patentability exceptions and exclusions

Here are a few key points to remember regarding eligibility for patent protection:

• In many jurisdictions, the IP of product designs (i.e., non-functional physical attributes) is protected through design rights. For a handful of others — most notably the United States — a design patent provides the same. (As defined above, a U.S. patent for operational aspects is called a utility patent.)
• Plant patents cover many non-sexually-produced plant varieties (exact eligibility differs by jurisdiction).
• Software (including apps) must be integral to a device's operation to be considered for a patent. (However, the original code written to create a computer program or app can typically be copyrighted.)

You should always consult the patent office to which you are applying — or a local patent lawyer — to learn jurisdictional specifics regarding the patent application filing process. Such particulars make assistance of a patent expert such as those at Dennemeyer of huge benefit during the drafting stage. At any rate, in many circumstances, you will need to include:

• The application cover sheet and data sheet (specific document names vary by jurisdiction).
• An abstract summarizing the invention.
• A description explaining the proposed invention in much more detail and including at least one specific claim regarding function and purpose.
• Disclosures of relevant prior art and other information related to the invention.
• Drawings to illustrate the invention's operation. Traditionally, these are in black and white; many jurisdictions have additional requirements if submitting color images or reproductions of any computer-generated graphics.
• A declaration or oath attesting to your status as the original inventor. Ideally, before submitting this, you will have conducted thorough prior art searches using national, regional and international databases and an advanced patent search and analysis tool like Octimine to ensure your proposed invention is valid and not infringing on registered IP.
• Forms authorizing fee payments by card or electronic check.

What if I file a provisional application?

The few jurisdictions (the United States, Australia and others) that allow filing for a provisional patent do not require as much supplemental material: no claims, affidavits or prior art disclosures. Only the provisional patent application, drawings, description and payment authorizations are necessary. Remember: Provisional applications are not published and never last longer than 12 months. Despite this, they offer the advantages of claiming an earlier filing date for a subsequent nonprovisional application and use of the term "Patent Pending."

The primary filing fee for a single patent application is usually the equivalent of a few hundred U.S. dollars or euros, but Dennemeyer's experts can deliver tailored quotations for a clearer picture. However, this fee can quickly increase if the application exceeds a certain number of claims (more than three, for example), requires a large number of sheets (digitally or physically), is filed by mail, exceeds your local patent office's file-size limits or causes other handling issues.

Additional fees are required for the application to be examined and published and may also become necessary for searches and responses to office actions. Many jurisdictions offer discounts on the various fees associated with patent filing to small businesses or those who are self-employed. Nevertheless, patent application costs can quickly spiral into the tens or even hundreds of thousands.

On the other hand, this must be weighed against the cost of not filing for a patent. In industries where the state of the art shifts quickly or patent eligibility is not easily met — like software and apps — securing patent rights may not be worth the cost due to the risk of obsolescence or invalidation. Be that as it may, in most fields, the ultimate value of patents can overshadow their application costs, whether through lucrative licensing deals, outright sales or sheer exclusivity.

Given the amount of paperwork, research, effort and money described above, it would not be fair to say filing a patent is easy. But the degree to which it is "hard" can vary considerably.

The factors below also affect the length of the patent approval process.

Application issues

If your initial application is thorough, has little risk of running afoul of prior art and does not require the patent examiner to request additional information (or request it more than once), the process can be fairly routine. In this case, it may take as little as 12-18 months from filing to patent grant, a timeframe many in the IP industry would consider brisk.

On the other hand, if your filing is incomplete, uncommonly lengthy, has unnecessary claims, fails to disclose prior art or falls short in other areas, this will only lead to stress and costs that could have been avoided or minimized. It will also prolong the examination period. Working with a patent law firm like Dennemeyer & Associates can help mitigate the chance of application delays.

Office backlog

Large IP offices, including the United States Patent and Trademark Office (USPTO) and European Patent Office (EPO), often deal with a degree of backlog. The EPO disclosed an average examination period of 23 months during 2021 (a slight decline from 2020), while the USPTO's figure was about the same as its European counterpart's for 2021 (showing a steady increase).

Oppositions

An inventor or organization is limited to a specific time frame to file an opposition to your patent application. Depending on the jurisdiction, this may be two to six months for pre-grant oppositions and six to 12 months for post-grant procedures. Opposition proceedings last 18-19 months on average. In other words, a patent that might have gone into effect a year and a half after filing may instead require three years before it is in force. Moreover, if the opposing party has legitimate grounds for their action, it can persuade examiners to invalidate or restrict the patent grant (or their intent to grant).

How long does it take to get a patent?

With everything we have discussed, it is reasonable to expect to spend about two years getting a patent.

Some patent offices offer expedited processing, which can limit the examination period to 12 months or less, but this often requires an additional fee.

For patents already filed with a domestic office, foreign filing via the Patent Cooperation Treaty (PCT) system imposes a maximum of around 30 months before a patent must enter the national phase. Also, the Patent Prosecution Highway (PPH) is useful if trying to file simultaneously in multiple jurisdictions as it fast-tracks office examinations as long as a participating office has validated at least one of the application's claims.

As long as renewals are paid according to the laws of the jurisdiction where the patent is in force, most countries and regions allow patents to last 20 years before they expire. After expiration, the invention enters the public domain, which is why some inventors and organizations opt for trade secret protection over patenting (though the former comes with its own limitations).

If a patent holder misses a maintenance payment due to circumstances behind their control, the "abandoned" patent can be reinstated. In all cases, the argument made to convince patent offices that abandonment was unintentional has to be airtight. An application for reinstating a lapsed patent incurs specific fees and must be filed within two months of the office informing the patent holder of the abandonment.