What happens next?

When a patent application has been filed, the applicant must within one year of his filing date present to the Patent Office a set of claims defining the monopoly which he seeks, a brief abstract of the description and a request for a preliminary examination and novelty search to be carried out by the Patent Office, accompanied by the prescribed fee. This step can, as an alternative, be carried out when the application is first filed, and we recommend this course if the invention is fully developed and funds are available. In this way, the result of the Patent Office search will be known in good time before any decision has to be taken about filing foreign applications and there is some saving of overall time and cost.

However, it is possible, as a further alternative, to file a fresh application (together with claims) to replace the initial application before its first anniversary date. This course allows additional matter to be added e.g. after-development work. Priority can be claimed from the initial filing date.

When the claims and search request have been submitted to the Patent Office, the application will be passed on to an examiner who will conduct a search, to establish whether or not the invention is new. The Patent Office then issues a search report listing any prior documents found and briefly mentioning any outstanding formalities which should be attended to. The applicant and his patent attorney then have an opportunity to study the prior publications cited to decide whether the scope of the claims is justified in view of what has been previously disclosed. If necessary the claims can be amended at this stage. (Appendix A Stage 4)

Approximately 18 months from the original application date, the Patent Office will print and publish the description, claims and drawings (if any) together with other details of the application. At the same time, the Patent Office file on the application is laid open to public inspection. The applicant must then request, within 6 months, full examination of his application for which a further fee is payable. Revised claims and comments are often filed. The Patent Office examiner will then examine the case fully to determine whether the invention is new and has sufficient inventiveness to merit the grant of a patent, and also whether the invention has been properly and clearly described. The examiner's findings are reported to the applicant's patent attorney in an official letter which will also mention any outstanding formalities. The applicant is generally given 6 months to deal with any objections raised, either by submitting amendments to the description and claims or by submitting arguments as to why the objections raised are not justified. The cost of dealing with this official action will of course depend on what objections are raised. In many cases, where amendments have already been submitted, the objections are relatively minor. In some cases, however, detailed arguments may have to be submitted, and there may be several official actions. All objections must be dealt with within 4½ years from the original application date.

When all objections are dealt with to the satisfaction of the examiner, the Patent Office will grant a patent, at the same time publishing the specification and claims in their final form. If objections are dealt with promptly, the patent can usually be granted within 3 to 4 years from application.

 

STAGES IN PROSECUTION OF A BRITISH PATENT APPLICATION

Before Filing: Novelty Search Recommended

	TIME FROM FILING DATE	ACTION
1		File Application & Description
2	Usually on filing, but can be up to 1 year after filing.	File claims and request for novelty search.
3	Approx. 6 Months	Consider whether foreign applications likely to be required. Filing European application.
4	Within 15 Months	Receive and study novelty search report.
5	Approx. 18 Months	Application published by Patent Office.
6	Approx. 2 Years	Request full examination, amend claims if necessary.
7	2½ - 3 Years	Receive and study examiner's report and file response within 6 Months.
8	Up to 4½ Years	Further official actions

 

Total Time For Patent To Be Granted : 3 - 4½ Years