How to file a Patent

The number one question a patent attorney gets asked by those looking to save a few $$ when they are first getting familiar with the process of how to file a patent is “Do I need a patent attorney to file my own patent application?”

My response to them is the same one I learned from an old senior partner at my first firm – “Filing a patent application is a bit like surgery…, you can do it yourself but it’s not recommended!”

The key to obtaining worthwhile patent protection is ensuring that the application is properly written in collaboration with the right professional from the very beginning.  If it’s not, then significant repair work will most likely be needed along the way.  Untangling a poorly written application will be expensive and ultimately, there may not be the content within the application to sculpt it in a way that provides you with any relevant protection for your invention.  In the worst case scenario, the application may not even be salvageable, and where no public disclosure has occurred, the process may need to be completely re-started from scratch.

So, if you genuinely believe in your invention and think that it has real commercial potential, it is far better to invest early in filing a well written patent application than trying to sort it out later, which will be far more expensive and time consuming in the long run.  When it comes to filing patent applications, the analogy “you can’t make a silk purse out of a sow’s ear” certainly rings true.

Happy patent filing

]]> http://www.ipasset.com/352/how-to-file-a-patent/feed/ 0 http://www.ipasset.com/341/but-you-cant-patent-software/ http://www.ipasset.com/341/but-you-cant-patent-software/#comments Tue, 27 Apr 2010 10:33:44 +0000 admin http://www.ipasset.com/?p=341

A little knowledge can be a dangerous thing. This is clear to me from the reaction I sometimes get when I tell computer scientists that I am a patent attorney specialising in computer patents. Frequently the response is, “But you can’t patent software!”

That reaction is wrong, but quite understandable. The law really doesn’t help. “Computer programs” feature prominently in the list of things that are excluded from being patentable inventions, grouped along with other unpatentable subject matter such as “business methods” and “rules for playing games.” As ever, though, the devil is in the detail, and as any patent professional dealing with computer inventions knows, all the listed exceptions are qualified by the words “as such,” which in practice means that all technical inventions can in fact be patented.

> Click here for the full article about patenting software

The transfer of many of the requirements of the EPC into the Implementing Regulations under the EPC 2000 greatly increased the ease with which the EPO could change its procedures. Following on from the rule changes implemented in April 2009, another raft of changes was announced. Many of these latest changes will have a significant impact on the way European patent applications are prosecuted in the future.  Key amongst the latest rule changes is a new time limit on when divisional applications can be filed. Whereas previously divisional applications could be filed at any time before grant, it will now only be possible to file a divisional application up to two years from the date of the first communication from the Examination Division on a case (Rule 36 (1) (a) EPC). This two-year time limit will only be extended if the Examining Division raises a new lack of unity objection (Rule 36 (1) (b) EPC).

The full impact of this change will only be felt after 1 October 2010 as transitional provisions permit divisional applications to be filed on all pending cases until that date. However, in the short term, the new divisional filing deadline will generate a significant amount of work for practitioners as existing files will need to checked so that decisions can be made about the filing of further divisional applications and appropriate action taken.

Rule changes have also been announced which will increase the importance of ensuring that claims are filed which are clear and which satisfy the EPO rules on the numbers of independent claims. From 1 April 2010, if the Search Division considers that claims are incapable of being searched, the EPO will set a two-month deadline for an applicant to provide the EPO with a statement of what is to be searched (Rule 63 (2) EPC). Similarly, if an application contains more than one independent claim per claim category and the Search Division do not believe that the invention is of a type where multiple independent claims are permitted, the EPO will ask an applicant to elect which claims are to be searched (Rule 62a (1) EPC).  It will be important to respond to these invitations as they will be the applicant’s only opportunity to influence what is searched and unsearched claims will have to be deleted from the application unless an applicant can show that the Search Division’s objection was not justified (Rules 63 (3) and 62a (2) EPC).

Finally, a number of other rules have also been amended to speed up the process of examining patent applications. From 1 April 2010, it will become obligatory to file a response to objections raised in the extended European search report (Rule 70a EPC). Similarly, a response to any objections raised by the EPO in the international phase of a Euro-PCT application must now be addressed on or shortly after entry into the regional phase before the EPO (Rule 161(1) EPC). These responses will be the sole opportunity for an applicant to amend their application as a matter of right (Rule 137(2) EPC). All subsequent amendments will be at the discretion of the Examining Division (Rule 137(3) EPC).

For further details about The EPC Rule Changes 2010 please check out the following presentation.

EPC Rule Changes 2010

Minor changes to EPC practice came into effect on 1 April 2009.

The EPO has always charged a per page printing fee on patent applications which proceed to grant with more than 35 pages. However, as of 1 April 2009, the EPO amended its rules so that for all cases filed on or after that date, the per page charge will be payable not when an application proceeds to grant, but rather when it is filed or in the case of a PCT application when it enters the regional phase before the EPO.

This rule change provides an incentive for applicants to avoid filing unnecessarily lengthy patent specifications. The change will particularly penalize the practice of including the wording of multiple patent applications in a single European case with a view to dividing out the individual applications later on. This is because the per page charge can no longer be avoided by deleting unnecessary description from an application shortly before grant.

Charges can also be reduced using appropriate formatting. The minimum requirements for filing at the EPO are the use of a typeface having capital letters not less than 0.21 cm high with 1.5 line spacing, a right side margin of 2.5 cm and top, bottom and left side margins of 2.0 cm. One compact typeface that meets the EPO criteria is Arial 11 point. Applicants using larger typefaces and line spacing incur unnecessary charges.

In addition to changing the timing of the per page publication fee, the EPO have also revised the designation fee system so that a flat designation fee of €500 is payable on all applications. This change will have a limited effect as it merely removes the option for applicants to make a small saving in designation fees by restricting protection to fewer than seven Contracting States early on in the prosecution procedure.

Finally, a higher charge of €500 payable for each claim in excess of 50 has been introduced. The fee change will have virtually no impact since most applicants have been restricting the number of claims in an application to around 15 following the 2008 increase in excess claims fees from €45 for each claim in excess of 10 to €200 for each claim in excess of 15.

For further details about the EPC Rule Changes 2009 please review the following presentation.

EPC Rule Changes 2009

The transfer of many of the requirements of the EPC into the Implementing Regulations under the EPC 2000 greatly increased the ease with which the EPO could change its procedures. Following on from the rule changes implemented in April 2009, another raft of changes was announced. Many of these latest changes will have a significant impact on the way European patent applications are prosecuted in the future.  Key amongst the latest rule changes is a new time limit on when divisional applications can be filed. Whereas previously divisional applications could be filed at any time before grant, it will now only be possible to file a divisional application up to two years from the date of the first communication from the Examination Division on a case (Rule 36 (1) (a) EPC). This two-year time limit will only be extended if the Examining Division raises a new lack of unity objection (Rule 36 (1) (b) EPC).

The full impact of this change will only be felt after 1 October 2010 as transitional provisions permit divisional applications to be filed on all pending cases until that date. However, in the short term, the new divisional filing deadline will generate a significant amount of work for practitioners as existing files will need to checked so that decisions can be made about the filing of further divisional applications and appropriate action taken.

Rule changes have also been announced which will increase the importance of ensuring that claims are filed which are clear and which satisfy the EPO rules on the numbers of independent claims. From 1 April 2010, if the Search Division considers that claims are incapable of being searched, the EPO will set a two-month deadline for an applicant to provide the EPO with a statement of what is to be searched (Rule 63 (2) EPC). Similarly, if an application contains more than one independent claim per claim category and the Search Division do not believe that the invention is of a type where multiple independent claims are permitted, the EPO will ask an applicant to elect which claims are to be searched (Rule 62a (1) EPC).  It will be important to respond to these invitations as they will be the applicant’s only opportunity to influence what is searched and unsearched claims will have to be deleted from the application unless an applicant can show that the Search Division’s objection was not justified (Rules 63 (3) and 62a (2) EPC).

Finally, a number of other rules have also been amended to speed up the process of examining patent applications. From 1 April 2010, it will become obligatory to file a response to objections raised in the extended European search report (Rule 70a EPC). Similarly, a response to any objections raised by the EPO in the international phase of a Euro-PCT application must now be addressed on or shortly after entry into the regional phase before the EPO (Rule 161(1) EPC). These responses will be the sole opportunity for an applicant to amend their application as a matter of right (Rule 137(2) EPC). All subsequent amendments will be at the discretion of the Examining Division (Rule 137(3) EPC).

For further details about The EPO Rule Changes 2010 please check out the following presentation.

EPO Rule Changes 2010

Minor changes to EPO practice came into effect on 1 April 2009.

The EPO has always charged a per page printing fee on patent applications which proceed to grant with more than 35 pages. However, as of 1 April 2009, the EPO amended its rules so that for all cases filed on or after that date, the per page charge will be payable not when an application proceeds to grant, but rather when it is filed or in the case of a PCT application when it enters the regional phase before the EPO.

This rule change provides an incentive for applicants to avoid filing unnecessarily lengthy patent specifications. The change will particularly penalize the practice of including the wording of multiple patent applications in a single European case with a view to dividing out the individual applications later on. This is because the per page charge can no longer be avoided by deleting unnecessary description from an application shortly before grant.

Charges can also be reduced using appropriate formatting. The minimum requirements for filing at the EPO are the use of a typeface having capital letters not less than 0.21 cm high with 1.5 line spacing, a right side margin of 2.5 cm and top, bottom and left side margins of 2.0 cm. One compact typeface that meets the EPO criteria is Arial 11 point. Applicants using larger typefaces and line spacing incur unnecessary charges.

In addition to changing the timing of the per page publication fee, the EPO have also revised the designation fee system so that a flat designation fee of €500 is payable on all applications. This change will have a limited effect as it merely removes the option for applicants to make a small saving in designation fees by restricting protection to fewer than seven Contracting States early on in the prosecution procedure.

Finally, a higher charge of €500 payable for each claim in excess of 50 has been introduced. The fee change will have virtually no impact since most applicants have been restricting the number of claims in an application to around 15 following the 2008 increase in excess claims fees from €45 for each claim in excess of 10 to €200 for each claim in excess of 15.

For further details about the EPO Rule Changes 2009 please review the following presentation.

EPO Rule Changes 2009

QUESTION: By owning a domain “example.co.uk” do I own the IP on the name “example”? I have never trademarked or copyrighted “example” should I have? And will it be as costly as it sounds?

ANSWER: It can all be very costly, if you want world domination – but it does not have to be that way. The domain name registration means that you own the domain name.  Nothing more.  However, you have a business which is trading under that brand.  As you build up reputation and goodwill you will acquire rights which can be used to stop others from using the same brand for the same products.  However, enforcing those rights in an action for “passing off” can be a costly exercise.

It would be an improvement to own a registered trade mark.  A UK registered trade mark can be obtained for as little as £500 (+ VAT).  That only gives protection in the UK.  To protect the trade mark across the whole of the EU will cost around £1,500 (+ VAT).  These will need to be renewed every 10 years.  Costs will be higher if we have to deal with objections. If you plan to be trading in Asia for example,  a separate trade mark registration would be necessary for each country.

However, the more descriptive a trade mark in relation to the products for which it is used, the harder and more expensive it is to register it.  This is because businesses should not be allowed to monopolise ordinary English words in a context where other businesses might wish legitimately to use them descriptively.  So to seek to monopolise something like “treatz”, which sounds like “treats”, where you sell confectionary and cakes is not going to be straightforward.

Intellectual property rights are basically national in character.  Also, trade mark rights will only protect in relation to a defined list of products.  Other people will be free to use in other jurisdictions where there are no trade mark registrations or for other products (not on the defined list) where there is no confusion.  (Note BAA.NET – does not belong to British Airport Authority, but to someone interested in sheep and woollens!!)

If you require further information about your own situation, then you should take advice from a Patent or Trade Mark Attorney.  In the meantime, why not have a read of our downloadable pdf:

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