Types of patent applications and key points to keep while filing the patent application

By

Sakshi Shairwal

Pratistha Priyadarshi

PATENTS

A patent is a sort of intellectual property that grants its owner the legal right to prevent others from creating, using, or selling an invention for a certain length of time in exchange for the invention's enabling disclosure being published. In most countries, patent rights are protected by private law, which means that in order to defend their rights, the patent holder must sue someone who infringes on the patent. Patents are important sources of competitive advantage in certain areas, while they aren't in others.

Types of Patent applications

1. Provisional Application

When an invention is still being tested and isn't ready to be filed, a provisional application, also known as a temporary application, is filed. Furthermore, because the Indian Patent Office uses the 'First to File' method, it is a preliminary application that is submitted to the patent office in order to claim priority (known popularly as the First-Come-First-Served-Basis). In technical words, early submission of an invention prevents the designation of any other comparable innovations as prior art to the inventor's application.

Furthermore, when an invention needs a longer time for development, this sort of patent application is filed. If a provisional specification is used to support an application, the applicant must file a complete specification within twelve months of the provisional application's filing date. The application would be invalid if this component failed. An application for this purpose must include a brief description of the invention and be meticulously crafted to guarantee that priority rights for the innovation are acquired.

2. Non-Provisional or Ordinary Application

If the applicant does not have any priority to claim or if the application is not made in response to any previous convention application, this form of application is filed. It must be accompanied by a detailed specification that describes the invention in full. Direct filing entails filing a complete specification with the Indian Patent Office without first filing a provisional specification.

Subsequent Filing is when a complete specification is filed after the equivalent provisional specification has been submitted, the complete specification claims precedence over the provisional specification that has been filed.

3. Convention application

A convention application is filed to claim a priority date based on a prior application filed in any of the convention nations that is identical or substantially comparable. To get convention status, an applicant must file an application with the Indian Patent Office within a year of the date on which an identical application was first filed in the convention nation. To put it another way, a convention application gives the applicant the right to claim precedence in all of the convention nations.

4. International PCT Application (PCT)

A PCT Application is a worldwide application, as implied by its name. Despite the fact that the application does not obtain an international patent, it does open the way for a shortened patent application procedure in many nations at once. The Patent Corporation Treaty governs it, and it can be validated in up to 142 nations. By filing this application, innovation can be protected against being copied in these nations. Unlike other applications, it allows the applicant to submit the application to other nations within 30-31 months after the international filing date or priority date, giving the applicant more time to assess the invention's potential.

Apart from that, it has the following advantages:

The application includes an International Search Report that cites prior art and determines if the invention is new.

It offers the option of obtaining an International Preliminary Examination Report, which is a report that includes a determination of the invention's patentability.

Because the applicant can revise the application to deal with any contradictory evidence, the aforementioned reports help the applicant make better-informed decisions early in the patent process. In addition, the applicant would get a preview of the invention's patentability before paying fees to file and prosecute the application in each nation.

This application can be submitted by an Indian candidate at: The Indian Patent Office (IPO) serves as the receiving office for patent applications.

After obtaining a foreign filing permit from the IPO or after six weeks and 12 months of submitting an application in India, the International Bureau of WIPO.

5. Application for the PCT National Phase

An applicant is required to file a national phase application in each country where protection is sought. The deadline for filing the application is 31 months from the priority date or the international filing date, whichever comes first. Each member country's National Laws might be used to extend the time restriction.

The title, description, abstract, and claims included in the International Application under PCT should be regarded as the Complete Specification for the National Phase Application. Aside from that, the same rules that apply to submitting and processing a regular patent application apply here.

6. Patent for Addition

If the applicant learns that he has come upon an invention that is a minor modification of one that he has already applied for or patented, this application must be filed. It can only be filed if there is no significant inventive step in the invention. Because a patent of addition is only awarded after the parent patent, there is no need to pay a separate renewal fee throughout the period of the primary patent. Furthermore, it will be awarded for the same period as the patent for the primary invention, and will thus expire at the same time as the main patent. The date of filing will be the date on which the patent of addition application was submitted.

KEY POINTS FOR FILING THE PATENT APPLICATION

1. Non-disclosure

First and foremost, before filing a patent application, you must keep your innovation a secret. Obtaining protection for any revealed features of your invention can be quite challenging. When speaking with outside parties such as investors or developers, employ non-disclosure agreements (NDAs) if necessary.

You are free to reveal any features of the invention mentioned in your patent application without jeopardizing the patentability of your own invention once you have filed a patent application.

2. Patented inventions (assessing novelty and inventive steps)

An invention must be innovative in order to be patented (novel). Anything that was made publicly known before the patent application's filing date can be used against it. This includes disclosures made by you about your own invention in the UK and Europe, which is why pre-filing confidentiality is crucial.

The invention must not just be new, but also imaginative (non-obvious). This means that if someone working in that technological field tries to tackle the same problem, the novel features of the idea won't be obvious. In practice, this entails demonstrating that your idea is a technical solution to a technical issue.

3. Searches prior to filing

By conducting keyword searches utilizing free internet tools such as Espacenet, Google Patents, or the US Patent and Trademark Office website, you can get an initial notion of whether an invention is already known.

While keyword searches aren't exhaustive, they can give you a good idea of what's already out there and help you figure out which features of your innovation you want to protect the most. You may also choose to instruct professional, in-depth IP searches, albeit this is not required.

4. Drafting

You must prepare the patent application once you have decided to file a patent application for your innovation. A patent application includes a full description and technical drawings, as well as a set of claims that outline the protection provided. It must provide a detailed description of how the invention works, with a focus on the new features and functions that aren't yet known. To put it another way, the description must enable a skilled person to discuss the invention in a meaningful way.

5. Priority date

Patents are territorial in nature. To protect your idea, you must file a patent application in each jurisdiction independently. You have a year from the priority date to file further patent applications in other countries. The priority period is what it's called.

6. Subsequent filings

Filing direct applications in each of the jurisdictions you're interested in is one option (on or before the expiry of the priority period). You can preserve the priority date by claiming priority for your initial application. This is crucial for reasons of uniqueness and inventive step, especially if you have later disclosed your invention after the priority date.

Another option is to file a so-called international application (also known as a PCT application) through the Patent Corporation Treaty, claiming priority to your first application to keep the priority date. A PCT application does not result in a "international patent"; you will still need to file individual patent applications in each jurisdiction based on the PCT application. Filing a PCT application can be appealing since it gives you an additional 18 months (for a total of 30 months from your priority date) to determine where to file future patent applications. It's worth noting that a patent's term begins on the filing date, not the priority date. 18 months after the priority date, the patent application (and any future filed patent applications) are published.

7. Investigation and search

The patent office will perform a search (although some patent offices do not provide a separate search report) in each jurisdiction where a patent application is filed to identify the documents needed to determine novelty and inventive steps. The examination technique is frequently built around these documents. While some efforts have been made to standardize this procedure, patent prosecution is handled differently in each jurisdiction, so various prior art may be referenced around the world. As a result, achieving the same level of protection in every jurisdiction is not always practicable.

A patent application can be issued and enforced once a patent office determines that it fits the required conditions.

8. Fees

Throughout the life of a patent, a mixture of official fees (decided by patent offices) and professional fees must be paid (determined by attorney firms).

Drafting fees — based mostly on attorney time (these may vary depending on the complexity of your invention).

Filing fees – certain jurisdictions and patent applications cost more than others (however, expect to pay an official filing fee for filing a patent application).

Fees for search and examination – a combination of government fees and legal time. Patent attorneys’ draught and file responses to objections presented by patent examiners while a patent office creates search and examination reports. Before a patent is declared acceptable, it may go through several rounds of prosecution.

Grant fees – these can include formal fees like publishing and validation fees (for example, when an EP patent is granted) as well as translation fees (where appropriate).

Renewal fees – costs paid to patent offices on an annual basis to keep a patent active.

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