Patent Examining Procedure

A typical patent may well take three or four years from initial application to being granted and while the procedure is somewhat involved, it’s important for inventors to have an understanding and appreciation of what happens after applying, and what you’ll need to do.

Preliminary Examination

Once you have sent in your patent specification, together with form 1/77 ‘Request for grant of a patent’ — which, from this point, entitles you to use the terms ‘Patent Applied For’ or ‘Patent Pending’ on your promotional material and products — the UK Intellectual Property Office (IPO) will issue a receipt and an application number. This establishes the filing date of your application, which can be important if you subsequently need to make changes or wish to file patents overseas.

The next stage is to request a search — this includes a preliminary examination of your patent specification, followed by a search for similar patents or those which describe similar features to yours, issued in the form of a report. (You can also request the search as soon as you send in the original application, but the application fee doesn’t become payable until the search is requested, and there may be changes you wish to make to the specification before going ahead with the search, so many inventors will wait for a while, but no longer than 12 months from the original filing date.)

Preliminary examination comprises an assessment of how well the patent application and your specification meet the standards required of a patent, such as the format of the descriptions and illustrations. Any areas which need improving in this sense are noted and explained, although you (or your patent attorney, if you have one) will need to make these changes: the IPO will not do it for you.

The Search Report

The search report is a very useful document, since however well you may think you have searched the patent databases on your own, the IPO’s examiners will generally have a much more experienced eye for finding patents (and applications — including those previously abandoned) which relate to or are similar to yours. Technical journal articles are also included. The search report will usually highlight the individual paragraphs and diagrams in other patents considered to be relevant (which may well be minor aspects of the patent which would have been otherwise difficult to find through general searching) and you are provided with photocopies of these documents.

Categories are used to classify in what way the other documents are relevant. ‘X’ indicates that a document already appears to include all the main features of your invention, which would probably preclude you from obtaining a patent without modifying your invention (or application). ‘Y’ indicates that your invention may be a combination of features from two or more other patents — which, again, may not provide the necessary inventive step. ‘A’ indicates other relevant documents addressing a similar problem or in the same field, which might be useful for citing prior art.You can modify your application at this stage, if you wish, or continue with the process.

Publication

The next step is publication, where your specification (and the search report) are available to the public, for example at the British Library. This is usually 18 months or so from your filing date. Large competitors will monitor closely new patent publications in their field, so the publication stage does carry some risk. Equally, publication allows objections to be sent to the IPO by parties who feel that your invention is not original, or that the patent should not be granted. If your invention is not really ready, or if you need more time for development, it may be better to withdraw your application before it is published.

Within six months of publication, you must make the decision whether or not to proceed and ask for a substantive examination, which will (taking into account objections received after publication) decide whether or not the patent is finally granted. If it is, you must pay renewal fees every year up to the 20-year expiry.

By this stage, many inventors have already licensed or sold their inventions to other companies, and the products may well be in production and selling well. Sometimes actually following through with the patent is not really deemed necessary, if a product is successful. At this level, professional advisors (patent attorneys) will be better able to make the right judgement on what you should do.

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