Startup IP Guide #1: Filing a patent application

To obtain a patent, the first step is to prepare and file a patent application (i.e., an application for a patent) with appropriate patent offices.

 

In the first of our IP Guides for Startups, patent attorney Elizabeth Mills answers a few common questions that arise when inventors approach us to discuss filing their first application for a patent.

 

Where should I file my patent application?

 

A single patent covers a particular country or group of countries, and there is no ‘international patent’.

 

To get a patent in a particular country, a patent application must be filed at a patent office authorised to grant patents on behalf of that country. For example, if you would like to obtain a UK patent, you can file your patent application at either the UK Intellectual Property Office or at the European Patent Office.

 

Once a patent application has been filed, you normally have up to a year to file patent applications in other countries.

 

If you would like to obtain patents in multiple countries, then the application route and order in which applications are filed can make a big difference to overall costs.

 

The number of countries you pursue patent protection in is often constrained by financial considerations. It is therefore important to decide where and when to file your patent application(s) to maximise their usefulness while optimising the expenditure.

 

Our patent attorneys can advise you on the best national and international filing strategy for your target markets and your intellectual property protection budget.

 

What is needed for a successful patent application?

 

A patent application needs to contain several elements:

 

• A detailed description of your invention: This detailed description often includes both a general overview of your invention as well as specific worked examples. The detailed description can include figures to better illustrate your invention.
• A set of claims, the function of which is to define your invention. The claims are provided as a numbered list. This list often contains both an ideal patent claim, listed first, and a series of later claims that refer back to the ideal patent claim (e.g., “An apparatus as claimed in claim 1…”).
• A request for grant of a patent: This request is normally achieved by filling out the correct form when filing the patent application.
• An identification of the person or entity filing the patent application (the Applicant): This identification is often included as part of the request for grant form.
• An identification of the inventor(s) of the invention.
• Payment of official patent office fees.

 

Drafting an application that has the best possible chance of success requires particular skills and experience, including the ability to evaluate technical aspects of an invention against current legal frameworks.

 

Certain classes of invention may not be eligible for a patent, and our attorneys can advise on whether an invention is likely to be objected to by a patent office of a particular country on this basis.

 

It is also extremely important that information regarding your invention has not already leaked into the public before your patent application is filed – see our article on The Golden Rule of IP Protection.

 

Why are the claims so important in a patent application?

 

The claims define the scope of your exact right to stop someone else from making, using, and/or selling your invention without your authorisation within the country/jurisdiction covered by the patent.

 

This means that if a competitor is not doing everything that is included in your independent claim (see below), they are out of the scope of the claim, and you cannot use your patent claims to stop them from using your invention.

 

It is therefore important that language used in the claims properly expresses your invention in its broadest form. The general aim is to draft claims that cover not just the specific examples of your invention, but also any obvious variants that a competitor might come up with. At the same time the claims need to be directed to subject matter that you consider is new and inventive.

 

The ideal patent claim contains only the features that are essential for causing your invention to work and is called an ‘independent claim’ as it does not refer back to any other claim.

 

In contrast, the series of later claims are called ‘dependent’ claims as they refer back to the ideal patent claim and add extra features to the ideal patent claim.

 

Our patent attorneys are highly experienced in drafting claims for patent applications, and we have helped thousands of applicants to obtain patents for their inventions, and if needed, defend their patent rights.

 

How is the patent application filed?

 

Our patent attorneys can guide you through the process, which is different in each patent office. We provide a free initial consultation of up to 30 minutes for start ups interested in using our services to protect their patents, designs and trade marks. All discussions will remain confidential.

 

Click here to arrange your initial consultation at our IP clinic.

 

This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in November 2022.