Demystifying the patent process from invention concept to the end of patent term

The patenting process involves several decision points. It can be a costly process, particularly if you are keen to protect your innovation internationally. Fortunately, this cost is spread out over a long period and the process provides many opportunities to defer cost to downstream stages, as well as opportunities to control the timing of the individual steps.  

The precise strategy will vary, and you should consult with a patent attorney early on in your innovation journey. If you’re contemplating patent protection, it’s important that details of the invention are kept confidential until a patent application is filed. 

The four primary stages of the patent process: 

1. Preparing and filing an initial patent application

Search to identify any relevant prior art

Before filing a patent, search for relevant “prior art”. This could be publications and disclosures, to determine if your invention is new and to compare the invention to any existing alternatives. It’s an optional step but one that can help guide strategy and decision making. 

Draft the patent specification to define the innovation

You’ll need to work closely with a patent attorney here. The patent specification will include several claims which define the invention, as well as a detailed description of the embodiments of the invention you have devised (including supporting figures, graphs, and data) sufficient to enable the person skilled in the relevant art to perform the invention.

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Drafting a patent specification typically involves multiple rounds of back and forth with your patent attorney to ensure the specification completely describes the invention and has the best chance of clearing all obstacles it may meet. 

File an initial patent application to establish a priority date for the invention

The specification is now drafted and ready to be filed at the patent office, along with a request for a patent. There are options to amend the specification throughout the patent process, but these are generally very limited, and any amendments must be supported by the content of the specification as it was originally filed – it’s essential to get things right at this initial stage. 

Where multiple jurisdictions may be of interest, the typical patent process would generally start with making this initial filing as a “provisional patent application” at the Australian Patent Office. The filing date of that initial application establishes the “priority date” of the invention: the date against which the invention will be assessed as novel (new) and inventive (non-obvious). 

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International type search

Once an initial application has been filed, you can commission the Patent Office to conduct a search for relevant prior art, which can be a useful additional step to take before you make the decision to progress the patent process further.

2. File further applications into countries of interest

Filing the initial application sets in place a 12-month deadline to file either an international application under the Patent Cooperation Treaty (PCT), or applications directly into individual countries of interest. 

In terms of timelines for filing options you should roughly expect: 

• 0 Months: Filing the initial patent application to establish a priority date for the invention. 

• 12 Months: Filing applications directly into further countries of interest. 

OR 

• 12 Months: Filing a PCT application; and then 

• 30 Months: entering the national phase in countries of interest 

• 18 Months: Publication of the patent application and specification 

Direct filings into individual countries of interest, or

Where there is initial confidence in the selection of countries of interest and the patentability of the invention, it may be suitable to immediately file further applications directly into individual countries of interest. This will also speed up the whole process – (but also bring forward some of the costs). 

An international (PCT) application

Think of the PCT application as a temporary application which reserves the opportunity to file into individual countries, generally for a further 18– months. Under the PCT route, an International Search Report (ISR) and Written Opinion (WO) will issue on the application, providing an extremely useful preliminary indication on the patentability of the invention. 

It is possible to optionally respond to the ISR and WO and request international preliminary examination (IPE). The outcome of IPE is not binding on any countries in which future applications are filed but is useful in gauging patentability of the invention (and thus providing you with commercial comfort) before proceeding with the patent process and any further applications. 

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Before the end of the further 18 months – a total 30 months from the original filing date – one or more individual national or regional patent applications may be filed from the PCT. This process is referred to as “national phase entry”. In practice, the PCT application essentially allows you to defer the selection of individual territories of interest for a significant period, providing more time to consider which jurisdictions to file in. 

The PCT application and any ultimate national phase patent applications may claim the benefit of the initial application’s original priority date. 

Publication

Under either the PCT and/or the direct filing route, at around 18 months from the earliest priority date (the date of filing of the initial application), the patent application and the specification will be published. Others can now view the details of your invention.  

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Filing national applications – either directly or via PCT national phase entry

Filing of each application into individual countries and/or regions will involve making a patent request in each of the desired jurisdictions, including completing any filing formalities and, where applicable, translating the original specification into the local official language. Most jurisdictions have their own national patent office. There are also regional offices, such as the European Patent Office which covers most countries in Europe, including the UK and other “non-EU” countries. 

3. Progressing each individual patent application

Whether filed directly or via a PCT application, each national application will proceed with examination and grant, the timing and requirements of which will vary depending on the laws and procedures of each country. 

Examination

Typically, examination will involve respective Patent Offices reviewing the filed application and assessing whether various criteria for granting a patent are satisfied. For example, this criteria may include whether the claimed invention is new and inventive compared to any relevant prior art. Again, be prepared for many rounds of back and forth with the Patent Office to address any objections they might raise. Throughout examination, you may need to amend the claims to revise the definition of the invention, based on details in the description of the specification and to address particular objections raised by examiners. 

Acceptance and grant

If examination of the application is successful, the Patent Office will accept the application and publish the intention to grant the patent. Oppositions by third parties are possible, otherwise the patent will proceed to grant. It’s then an enforceable right that you can use to stop others infringing the legal monopoly you have obtained.

4. Maintaining and building your patent portfolio

Renewals

Throughout its lifetime, each patent (and the application) must be maintained by payment to the patent office of regular (generally annual) renewal fees. 

End of term 

If maintained, a patent will expire at the end of its term, typically 20 years from the filing date. There are options to extend the term of a patent in some circumstance, such as compensating for delays in obtaining regulatory approval for a pharmaceutical invention. 

Further patents

For many inventions, improvements might be made as you continue developing and improving your idea over time. This can lead to opportunities to file further patents, allowing you to build up a portfolio of intellectual property rights and so enhancing the commercial value and appeal of your business. 

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FPA Patent Attorneys aim to assist innovators to protect and commercialise their inventions. If you are interested in learning more about intellectual property or in seeking patent protection for your ideas, contact FPA Patent Attorneys here.