Patent Applications

Identifying the Applicant

The right to apply for a patent belongs to the inventor or his successor. In common with other property, patents may be co-owned. If the applicant is not the inventor, it must identify the inventor.

The inventor must be identified within 16 months of the priority date. Several inventors may be specified. There are procedures for amendments and substitutions of the persons named as inventors. An application may be made to the intellectual property office. Notice is served on persons affected. The office may make a decision.

In the case of an employee who invents in the course of employment, the invention is presumed to belong to the employer. An employer is entitled to patents made in the normal course of the employee’s duty. The general presumption is that the product of the employee’s work belongs to the employer.

If the employee was employed to create the invention in question, the position is clear. Where the invention is such that it might be reasonably expected to be made in the course of the employee’s normal duties, it is likely to belong to the employer. The employment contract may specify the position.

As a property right, the courts may hold that the employee is a trustee and must hold the invention in trust for an employer where the employer is entitled to it. There may be disputes as to whether the patent has been made in the course of employment or not, where the invention relates to what the person is employed for was made outside of the place of employment and working hours. The question arises as to whether the employee has done is consistent with his duties of fidelity and loyalty.

The Application

The form of patent application is specified in the patent rules. Specified fees are paid. A Patent Agent will usually draft the patent claim information. The specification, drawings and claims are required. The invention should have a name. The name should be descriptive rather than proprietory.

A patent application should include the request for a patent, a specification containing a description of the invention to which the application relates; one or more claims and any drawing referred to in the description or the claim or claims; and an abstract.

The application must describe the invention in a manner that can be understood by a person skilled in the art.

The abstract shall only serve for use as technical information; it may not be taken into account for any other purpose and in particular, it may be used neither for the purpose of interpreting the scope of the protection sought.

The patent claim made by the application must define the matter for which protection is sought. The scope of the patent claim is critical as it defines the scope of what is sought to be protected. The requisite quality of novelty and the presence of an inventive step is tested relative to the patent claims.

The patent claims, together with the specifications and drawings as amended if applicable, will define what is patented in detail. In future contests, as well as claims for infringement, it may need to be interpreted and applied.

Patent Claim

Patents typically relate to products, apparatuses, uses or processes.

The claim must be sufficiently clear and distinct. It must relate to the description and specification. If it is too wide, it may be disallowed by the Patents Office. The application must be novel relative to the current state of the art. There must be an inventive step.

A patent attorney is likely to assist in drafting the patent claim in consultation with appropriate technical experts. The applicant may seek to make a broad claim in order to give a broad scope of protection and to secure it against inroads by minor variations that may be required.

The existence of other products and processes may make it necessary to define the scope of the claim more narrowly so that it meets the requisite standard of novelty and inventiveness.

The application must fully disclose the invented product or process that seeks protection. It must be set it out so that a person skilled in the art can verify, test or implement it.

An abstract is a concise summary of the application set out in the specification. It must set out the technical field to which the invention relates and the problem or subject matter covered in the technical solution offered by the invention.

This might include chemical formulae and sufficiently descriptive information about the application. It should contain less than 150 words. Its purpose is to facilitate searching and other promotional purposes.

Invention Covered

Generally, an application must relate to one invention. The application may relate to a group of linked inventions in the same category that derives from a single inventive concept. This may cover processes and products. Linked applications may be permitted where it is appropriate that the related inventions should be covered by a single application.

There may be linked inventions embodying a single inventive concept involving a product, process, apparatus and/or use Conditions apply to the permissible combinations for each such patent type.

If an application covers numerous inventions, the Patent Office may require it to be amended. In this event, a divisional application may be made in respect of the earlier application. It must be made within two months of the amendment of the earlier application and must not exceed its scope. A Divisional application may be filed within two months of the amendment of an original application after the issue of the search report for the grant.

The divisional application must be in respect of the subject matter that doesn’t extend beyond the original application. It is deemed to be filed on the date of filing of the earlier application and has the corresponding priority.

An abstract must be filed, which contains a summary of the application. This must be sufficiently concise so that searches may be made. A filing fee must be paid.

Date of filing

The date of filing of a patent application is deemed to be the earliest date on which the applicant paid the filing fee and filed documents which contain—

• an indication that a patent is sought,
•  information identifying the applicant or information sufficient to enable that person to be contacted by the Office, and
• a description of the invention for which a patent is or a reference, complying with any relevant requirements, to a previously filed application made by the applicant or the applicant’s predecessor in title.

Where the documents filed do not satisfy the conditions, the controller shall notify the applicant of the further documents required in order to establish a date of filing.

Where the required documents are filed the controller notifies the filing date, the requirements that must be complied with, and the periods within which they are required to be complied with if the application is not to be treated as having been withdrawn. The filing date may lapse because the relevant fees have not been paid or the required documents are not filed within the required period.

Priority Right

The patent application is determined relative to the priority date. Under International Conventions, there is a twelve-month period in which to file the application in other countries which are party to the Convention. The date of filing in the first country is deemed the priority date. The earlier filing must be claimed and relied on when filing in the second and later Convention countries.

A person who has duly filed in or for the State, or in or for any other state party to the Paris Convention for the Protection of Industrial Property or to the Agreement establishing the World Trade Organisation an application for a patent or for the registration of a utility model or for a utility certificate or for an inventor’s certificate, or his successors in title, enjoy, for the purpose of filing a subsequent patent application in respect of the same invention, a right of priority during such period as may be prescribed, subject to compliance with any prescribed conditions and the payment of any prescribed fee.

Publication of Application

Once the application is filed, brief details of it are published in the Patents Office Journal.  This gives details of the applicant, name of the invention, filing date and dates of priority with reference to any international application and its application number.

The patent application itself is published in the prescribed manner as soon as practicable after 18 months from the date of filing or the date of priority. It is not published if it has been refused or withdrawn or is deemed to be withdrawn.

The information is to include the descriptions, the stated inventor, priority claims, drawings and abstract as filed. This includes any amendments to the documents.  The publication is made with reference to international patent classifications for the purpose of facilitating searches.

Search

An applicant may make a search report request to the Patents Office on payment of a search fee. This must be made within 21 months of filing or the priority day. The report incorporates an opinion as to patentability and is referred to as a section 29 report and opinion. If the report discloses more than one invention, the report relates to the first invention and further opinions may be prepared in relation to additional inventions on payment of the further fee.

The search report is sent to the applicant. The applicant may withdraw the application in response to the search.  If not withdrawn, the search report is published. He may amend the application within four months or advise that no amendments are required.

An alternative to submitting a search request is to confirm that an application for the same invention has been made under the Patent Co-operation Treaty in the EPO, the UK or Germany. In this event, the searches also must be filed with the relevant application.  This must also be done within 21 months. The search results must be filed in due course.

Grant

The onus of ensuring that the patent complies with the requirements for patentability lies with the applicant. The Patents Office undertakes a limited examination only. The controller does not object on the basis of novelty, inventive step industrial application and clear and complete disclosure. If the Controller finds that the application as originally filed or as amended, complies with the requirements of the Act and of rules made under it, the Controller is to grant the patent.

If it appears to the office that the application does not comply with the rules or legislation, the controller may inform the applicant, who may rectify the failure. It may be refused if not rectified.

Where an application for a patent has been published, but a patent has not been granted to the applicant, any other person may make observations in writing to the Controller on the question of whether the invention is a patentable invention, stating reasons for the observations, and the Controller shall consider the observations.

Post-Grant

A fee is applicable to the grant. Thereafter, renewal fees are payable. The grant issues in the form prescribed by the rules.

There is a provision for amendment of a patent by the applicant of its own initiative. This may require fresh drawings, specifications, et cetera.

A patent application may be withdrawn at any time before it is granted.

The Controller,  as soon as practicable after a patent has been granted, publishes a notice of the grant in the Journal. At the same time as the publication of the notice of a grant, the Controller publishes a specification of the patent containing the description and claims, and drawings (if any), and also such matters and information as appear to him to be useful or important.

Applications may lapse for non-payment of fees. There is provision for reinstatement where patent applications have lapsed where they are refused or withdrawn by reason of failure to comply with the legislation and other rules. Procedures and conditions apply.

The decision of the Controller of Patents may be appealed to the High Court within three months from when the statement of written grounds is made available by the controller. There is a further appeal to the Court of Appeal with the possibility, exceptionally, of an appeal to the Supreme Court on matters of general public importance.