Patent filing: key steps for inventors

It is usually best for an inventor to begin by filing a single initial patent application in their country of residence (a national right). This will establish a ‘priority date’ from which they can seek additional rights in other jurisdictions for the same invention. They must do so within the allocated timeframe; generally, one year.

Filing a national (e.g. UK) application first gives the inventor a crucial window in which they can assess the success and market potential of the invention before launching into potentially costly foreign applications. Some exceptions to this practice do exist, however, so it’s wise for inventors to consult first with a patent attorney; particularly if the US is likely to be a key market.

Step 1: Is the invention patentable?

In order to obtain a patent, the invention has to fulfil a number of conditions of patentability.

• The invention must not be publicly known, either in use or published, anywhere in the world (novelty);
• The invention, improvement or development must not be obvious to someone working in the same technical field, starting from the closest known technology (the prior art); and
• The invention or new technology must be capable of being used in an existing technical application, so that it can be made or used in some kind of industry, i.e. it must have a practical application.

Step 2: Drafting and prosecuting the patent application

A patent is obtained by filing a written application at the relevant patent office. This includes a description of how to make and use the invention and must provide sufficient detail that another person knowledgeable in the field would be able to carry out the invention. It can also make use of the common knowledge in the field. Some countries have additional requirements, relating to how and what material needs to be provided. If in doubt, inventors should speak to a patent attorney or review the guidance available on national patent office websites.

Step 3: Extending patent protection into foreign markets

Patents are territorial rights: their grant and enforcement is governed by national laws and the rights conveyed can vary country-by-country. It’s not possible to register a ‘global’ patent right for an invention; however, you can extend a national right into other territories, subject to certain criteria and deadlines. For more on extending a national right to obtain international coverage, please contact us directly.