You’ve devised a new invention, read our article about who can help you to patent it and, just when you thought you could relax and forget about patents for a while, your patent attorney sends you emails with lots of mysterious words in them! There’s a lot of legal jargon to wrap your head around. We feel your pain – we have to learn all that jargon too when going through the qualification process!
In this three-part glossary, we lead you through some of the key terminology you may come across when you’re going through the patent process.
In Part 1 of this glossary, we explained the patent basics, the contents of a patent application, and where you can file patent applications.
In Part 2, we explained the key terms that are used after filing a patent application.
In this third part of the glossary, we discuss some of the terminology that is used during the patent prosecution process and the grant process.
Patent Prosecution
After a patent application has been filed, and various official fees have been paid, the patent office will start to search and examine the patent application to determine whether the invention is patentable. Below are some common terms that appear during the prosecution stage.
Search report = this is a list of documents identified by a Patent Office as being relevant to the patentability of the invention described in your patent application.
In jurisdictions that have a substantive examination process (e.g. the US, UK, Europe, Japan, China, and so on), in order for the Patent Office to determine whether you should be granted a patent for your invention, they need to determine whether your invention is novel and inventive. When your patent attorney tells you that the Patent Office will perform a search, they mean a search for any other material from anywhere in the world, including other patent applications, journal articles, textbooks (pretty much anything!), that may be relevant to the patentability of the invention. The Patent Office will look for documents in the public domain before the priority date of your patent application.
The search process culminates in a search report. The search report lists anything of relevance found during the search and, importantly, how they are relevant. For example, a search report may indicate that a document is only relevant to certain claims, or is relevant only for the purpose of inventiveness. By reviewing the documents listed in the search report, applicants can decide whether to proceed any further with the application. That is, upon reviewing the documents, it may be the case that pursuing patent protection won’t be feasible or cost effective. This step of reviewing the search report is something that a patent attorney can help with. It can be beneficial to seek advice from an experienced patent attorney on patentability to decide on the best course of action in response to a search report.
In the UK, we can request a search to be performed first, before requesting examination. In other jurisdictions, the search and examination process is a single process.
Prior art = this is any evidence from the public domain that your invention was already known before the priority date of your patent application. The documents cited in the search report are prior art documents. However, the prior art is not just documents. As alluded to above, just about anything can be prior art, such as patent applications, journal articles, web articles, textbooks, YouTube videos, websites, demos or presentations at conferences and trade shows, and so on.
In many jurisdictions, your own disclosures of the invention can count against your patent application. That’s why it is important to file a patent application before submitting an article to an academic journal or presenting at a conference.
Examination report = this is a report detailing any objections or concerns the Patent Office has with respect to granting a patent for your invention.
The process of examining a patent application involves a Patent Office examiner. The job of an examiner is to decide whether an invention is patentable under the relevant patent law, and whether to grant a patent based on the application. The examiner issues an examination report after searching the claims of a patent application, in which they set out their thoughts on patentability and any other objections they may have to the application. For example, the examiner may say that in view of document D they identified in their search, claim 1 is not novel. Part of a patent attorney’s job is to help applicants address the examiner’s objections by responding to examination reports. The response may include arguments against the examiner’s objections and/or claim amendments. If the examiner is not satisfied that the response satisfies their objections, further examination reports are issued until all of the examiner’s objections are addressed. A patent cannot be granted unless all of the objections raised during examination are overcome.
Unity of invention = this is a requirement in the patent law of many jurisdictions and means that a patent can only be granted for a single invention. That is, for each invention that you come up with, you will need to file a separate patent application.
However, sometimes two inventions are closely related, even though they may have slightly different inventive concepts. Often, when this happens, it makes sense to describe both inventions together in one patent application, as the description of one helps understand the other.
In the UK and Europe, the Patent Office is only obliged to search the first invention they identify in the list of claims. The Patent Office will usually state in their search report, or in a separate letter, that they think the claims relate to more than one invention and they will invite you to pay extra search fees if you want the other invention(s) searched too.
If your patent application relates to more than one invention, you will usually need to amend the claims so they relate to a single invention. However, you can still protect any other inventions described in your patent application by “dividing” them out into a separate application called a divisional application.
Divisional application = a divisional application is an application that relates to subject matter that has been divided out from an earlier patent application. Usually, this division has been performed in response to a unity of invention objection.
A divisional application will be given the same filing date and priority date as the earlier application, and therefore in effect gives you the same protection you would have obtained by filing two separate patent applications on the same day instead of one.
Amendment = a change made to the claims of a patent application after the application has been filed at the Patent Office.
Patent applications can be changed or amended. This is normally done during examination, where the claims may be amended to better distinguish the invention over the prior art cited in the search report or examination report. However, amendments can also be made voluntarily at certain points throughout the application process. Patent applications can only be amended in relatively restricted ways; any amendments must be supported by the content of the application as filed. Crucially, patent applications cannot, under any circumstances, be amended to include additional material relative to what was included in the application at the time it was filed.
A very common type of amendment is the incorporation of one or more dependent claims into an independent claim. Often, dependent claims describe particularly clever aspects of a given invention. By incorporating these aspects into the broader independent claims, the independent claims may become patentable. However, the scope of protection of the independent claims is necessarily reduced by this type of amendment.
Alternatively, claims may be amended to incorporate other aspects of the invention set out in the description, but which are not included in the dependent claims. This is commonly done to clarify certain terms which appear in claims.
Patent grant and post-grant processes
Once all of the Patent Office’s objections to a patent application have been overturned, the Patent Office will be able to grant a patent for the invention described in the patent application. Thus, the prosecution process ends, and the grant and post-grant processes begin.
Grant = this is when the examiner is satisfied that their objections have been addressed, examination concludes and the Patent Office is preparing to give you the exclusive monopoly right for the invention described in a patent application. After the patent is granted, the patent is in force and can be used to enforce the rights it gives the patent proprietor.
In some countries, it is necessary to pay some official Patent Office fees to complete the grant process. In Europe, your patent attorney will also need to obtain and file translations of at least the claims of your application into other European languages.
Patent term = this is the length of time for which a patent proprietor is granted a monopoly right for the invention described in a patent. This is determined as twenty years from the filing date of the patent. Not all patents are kept in force by patent proprietors for the entire patent term. For example, in fast-moving technology areas, a patent may not remain commercially important or valuable during the full length of the patent term. In some countries, adjustments or extensions to the patent term may be obtainable.
Renewal fees = these are fees that usually need to be paid annually (or periodically) to the Patent Office to keep a granted patent in force. If renewal fees are not paid, the patent will lapse, meaning that it can no longer be enforced against third parties.
In most jurisdictions, renewal fees only need to be paid after grant, but some (e.g., Europe and Canada) require fees to be paid while an application is pending too.
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