Life Cycle Of A Patent

June 8, 2022
- Intellectual Property (IP)
- Patent Prosecution

Life Cycle Management Of A Patent

A patent is a legal right provided to an inventor for an invention that is unique, non-obvious, and has utility. The life cycle of a patent starts with a conception of an idea and ends at a granted patent and the inventor must follow certain steps to convert his idea into a formal patent. The basic criteria for patent Life cycle remain the same for EPO (EU Patent System) & USPTO (US Patent System). There are different phases that need to be followed and are described below:

Ideation

Ideation is the first stage in a patent life cycle where the ideas are generated through technical workshops and brainstorming sessions. It can also be part of some research work or any general idea that originated in the mind of an inventor.

The inventor develops an invention by identifying a problem to be solved or focusing on a feature to be developed or improvising an existing feature available in the market, but should ensure that his invention follows three basic requirements as mentioned below:

New or Novel
Non-Obvious
Industrial Applicability

This means invention is new and has some unique feature over the existing prior art(s).

The means of the invention must not be obvious from the perspective of an industry expert (POSITA). It must have some benefit or advantage over the prior art.

This means the invention should be useful and has some utility in the market.

As ideation is the first step, a lot of ideas are generated and subsequent filtering out of ideas is required to choose the best idea, which can be converted into an invention and later into a patent by following certain rules specific to the country where the patent is filed.

All the above requirements will provide a clear view of whether to proceed with patent filing or not under the specific Jurisdiction Like US/EP.

Patent Search

The shortlisted ideas in the previous step are checked for Patentability. It is an optional step and can be achieved by conducting a prior art search or a novelty search. In the novelty search, relevant ideas in the field are searched based on the key features extracted from the invention.

The search is conducted to mainly check for the three basic criteria of patentability mentioned above such as novelty, non-obviousness & utility (whether the invention is industrially applicable). It mainly provides answers to inventors for the following questions:

Is my idea unique?
Is my invention worth filing a patent application, seeing the scope of prior arts?

The patentability analysis helps the inventor decide whether to go forward with the invention filing or not. If closer prior art exists, the inventor can modify or design around the invention to satisfy the patentability criteria or the inventor can choose to discard the invention and focus on the identification of the next idea. Thus, patent search helps to avoid patenting costs by filtering out already existing inventions.

Patent Filing

The important phase in the patent life cycle management is the patent filing process which helps the applicant to secure the rights for an invention. The invention idea is drafted in a required format along with description and drawings and then filed officially at the Patent Office of a specific country.

A patent application can be filed by any of the inventor or applicant, or any authorized legal representative and the rights of a patent can only be obtained after filing the application, which is an important step. There is no specific rule as to what kind of application should be filed where either a provisional application or a non-provisional patent application can be filed first.

Provisional Application

A provisional application is an application that does neither require any specific application format nor complete specifications or information.

It can be filed even if an inventor does not have complete detailed specifications of his idea which may be because the invention research is under process or is not finalized.

The main reason why the provisional application is filed is, that it helps to gain the benefit of a priority date which prevents others from filing an invention over the same idea.

Non-Provisional Application

A non-provisional application is an application that requires complete details and specifications unlike a provisional application along with applicable fees, and these should be as per the rules of the specific country where the patent application is being filed. It should include the following sections:

Title of the Invention
Abstract
Reference to Related Applications
Background
Brief Summary of the Invention
Brief Description of the Drawing
Detailed Description of the Invention
Claims
Drawings

Filing a patent application is only the basic starting step for protecting the rights of an invention. The inventor can use the patent rights only after a patent gets granted.

Patent Prosecution / Examination

The filed patent application is published 18 months after the date of filing and till then it is kept confidential by the patent office. The inventor/applicant needs to request for examination within 48 months from the date of filing. This applies to all types of applications whether it is divisional, continuation, or continuation in parts.

The inventor also has a choice of filing a non-publication request where an application is not published until it is granted. This type of application is useful to those applicants who want to keep their idea confidential even if they fail to get a patent on that because they would have an option to maintain a trade secret.

Once the examination is requested, the examiner checks whether the patent application satisfies the patentability criteria and other requirements (as per the patent law). The examiner checks whether the patent application is novel, not obvious & has industrially applicable.

The examiner may also suggest an inventor file a divisional application if the examiner finds that the invention consists of two or more different ideas that can be patented separately.

If there is any issue (objections) while checking the above-mentioned criteria, the examiner issues an examination report describing the rejections/objections regarding the patent application. The inventor/applicant responds to the examination report by creating the respective amendments and arguments for the disclosed rejections. There can be multiple office actions and amendments before finalizing the claims.

In case, the examiner rejects the patent in the final rejection, an applicant can still file a Request for Continued Examination (RCE) which will restart the examination where the amended claims will be examined from the initial stage.

If the examiner is satisfied, a notice of allowance with the latest amended claims is provided and then the patent is issued or granted post payment of the applicable issue fee.

During the patent examination, if the inventor/applicant does not file the examination request within a specific time period, the invention will be automatically abandoned. Also, the inventor can choose to withdraw the application before patent publication as well.

Patent Grant

Patent Grant is the final step in the patent life cycle process. Once a patent gets granted, the inventor or an applicant can enforce the patent rights of an invention. Even though patent rights enforcement can begin only after a patent gets granted, the term of the patent begins from the date of filing the application.

To keep the patent alive and in force, the maintenance fee must be paid on time else it may get lapsed. This came into the rule for the applications filed on or after December 12, 1980.

In the US, there are different windows to pay maintenance fees which include 3.5, 7.5, and 11.5 years windows, where the fee must be paid within the stipulated time, which is generally six months, post which a late fee is applicable.

Author

Shivani

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Tags: Patent Cooperation Treaty (PCT)