The patent application will be searched by the patent office to identify the closest prior art against which the novelty and inventive step of the claims will be judged. The patent application then gets published, setting a deadline for requesting examination of the patent application (if not already requested).
The examination process sees the patent offices issue written examination reports that contain reasoned arguments as to whether or not the claims are considered to meet the requirements for patentability. In reply, we file written responses to present arguments and often amendments of the patent specification to overcome any objections that the claims do not meet the requirements to be accepted for grant.
Once the patent application is accepted for grant, there is usually a formal grant procedure we must navigate.
Search
The patent office will conduct a search to look for the closest prior art documents, i.e. those most similar to your invention. In practice, the patent office will look at each claim and try to find documents that disclose all the features of that claim. If not all features of a claim are to be found in a single prior art document (such that the claim is novel), the patent office will consider whether the new features are to be found in a second prior art document that could be combined with the first document to arrive at all features of the claim (such that the claim is novel but lacks an inventive step).
The patent office will issue a search report that lists the most relevant documents found, and categorises the relevance of each document to the claims. A few patent offices, including the European Patent Office, issue a written opinion with the search report that also provides reasoned arguments as to whether the claims are novel and inventive, and whether they meet the other requirements for patentability.
Search reports can be issued at different times. If the patent application is the first application filed, the patent office usually tries to issue the search report within the first year of filing. This is helpful because it allows the applicant to use the search report to guide the decision on what further patent applications to file before the end of the priority year (for example, to obtain patent protection in other countries) and/or whether to introduce changes when filing any new patent applications (to help distinguish over the prior art cited in the search report).
Where a patent application is not a first filing but claims priority from an earlier patent application, the patent offices usually aim to issue the search report before the patent application publishes at 18 months from the priority date.
Unity of invention is also considered at the search stage. The patent office will search only one invention if the claims are believed to relate to more than one invention, usually the first invention found in the claims. Many patent offices provide the opportunity for us to pay further search fees if additional inventions are identified and we wish them to be searched.
Publication
It is to be remembered that a patent is the granting of a monopoly as a reward to telling the public about your invention and adding to our collective knowledge. Your end of the bargain is to publish your patent specification through the patent office, along with a copy of the search report.
There is an initial period of secrecy though in that the patent specification is not published until 18 months after filing (or 18 months from the priority date if the application claims priority from an earlier application). This provides a window in which we can see what prior art is cited in the search report, and assess the likely scope of protection bearing in mind the claims need to be novel and inventive over the prior art. If particularly close prior art is found, we have the option to withdraw the patent application to prevent publication.
If the search report is not ready in time to be included with publication of the patent specification at 18 months, it is published separately once it is available.
Examination
In many instances, the publication date of a patent application determines by when we must request examination of the application. This is six months from the publication date, although examination can be requested earlier (even on filing, in which case combined search and examination reports may be issued), and some countries offer deferred examination.
The examination process sees the application examined by a patent office examiner who issues a written examination report that contains reasoned arguments as to whether or not the patent specification, and the claims in particular, are considered to meet the requirements for patentability. This includes whether the claims define an invention, i.e. something that is novel and inventive, and not excluded from being an invention (for example, because the claims define a mathematical method). The claims are also checked that they are not excluded from patentability (for example, because they relate to a method of treatment of a human body). The patent specification is also checked to see whether it meets the requirements for clarity, sufficiency, support and unity of invention.
Where the requirements are not met, the examination report will contain a written explanation of where the specification is deficient. If the objection relates to novelty or inventive step, the written explanation should identify which prior art documents are believed to indicate the lack of novelty or inventive step, as well as the relevant passages in each prior art document.
We review the examination report, and decide which objections appear correct and which do not. We then prepare a response to the examination report in which we usually argue against the incorrect objections and amend the patent specification to overcome the correct objections. Sometimes, for expediency or for cost reasons, we might amend the specification even when an objection is incorrect.
Once our response is filed, the patent office examiner will consider our arguments and amendments. If successful, we will receive an indication that the application is in order for grant. If not, we will receive a further examination report, and a further opportunity to respond with arguments and amendments. Our desire to obtain as broad a scope of protection as possible for our clients means that we sometimes go through several rounds of correspondence with the examiner and possibly conduct telephone interviews and/or hearings. When agreement cannot be reached, the examiner will formally refuse the application in which case an appeal can be filed and the application is moved from the examiner to an appeal body (for example, a board of senor examiners).
Amending a patent specification
We often amend a patent specification in order to overcome objections raised in examination reports. However, there are restrictions on how we can amend the patent specification.
The main restriction is that the application cannot be amended to add any information which extends beyond the information included in the application when it was originally filed. This is to protect the interests of third parties who should be able to rely upon the content of the application as it is published to determine whether they may stand to infringe any eventual patent if they continue with their plans. This would not be possible if we were allowed to add new subject matter to an application later on in the examination process.
Where a patent office examiner believes new information has been added with an amendment, the examiner will raise an “added subject matter” objection. The application of the test for added subject matter varies in its severity around the world. For example, the US Patent and Trademark Office enforce the test relatively liberally, whereas the European Patent Office enforce the rules very strictly and require any amendment to be “directly and unambiguously derivable” from the application as filed. While an amendment does not have to be taken verbatim from the application as filed, any deviation will need to be justified to the European Patent Office who will be looking for basis for the new wording in the original text.
Added subject matter may arise from the omission or deletion of features from a claim. For example, if a patent application describes features A, B and C only as a combination, amending a claim to include a combination of A and B without requiring C should result in an added subject matter objection (this is an “intermediate generalisation”). Similarly, if features A, B and C are described in isolation only, amending a claim to include the combination of A, B and C should arise in an added subject matter objection. This may be overcome if the application as filed included an unambiguous disclosure that the particular combination of A, B and C may be made, but the European Patent Office will not accept a general statement that any combination of features may be made as providing basis for the specific combination of A, B and C.
Are there differing considerations pre- and post-grant?
Patents may be amended after grant in some circumstances, for example during opposition proceedings before the European Patent Office. A further restriction applies to post-grant amendments, namely any amendment is not permitted to broaden the scope of the claims in most countries. Again, this restriction is to provide greater certainty to third parties: once a patent is granted, the third party should be able to rely on an assessment that they do not stand to infringe the claims, and this certainty would be lost if the claims could be broadened later.
A consequence of this additional requirement is the potential for an inescapable trap for the patentee. As an example, consider a patent application that was amended to overcome prior art by adding a wave spring to a claim which was then accepted for grant. After grant, an opponent notices that the application as filed described a single embodiment that included a spring without specifying the type of spring, and a broad statement at the end of the description saying that any type of spring could be used. The opponent then raises an added subject matter objection as the claimed wave spring was not disclosed in the application as filed. This requires the patentee to delete the added matter to overcome this objection. However, while amending from wave spring to just spring overcomes the added subject matter objection, it also broadens the scope of the claim and so in not allowed. In such cases, the restriction not to broaden the scope of the claim prevents the added subject matter from being deleted, and so should result in revocation of the patent. For this reason, we are extremely careful when making amendments during prosecution of a patent application.
Grant
Grant procedures vary around the world. In many countries, we have to pay an official fee before the patent will grant, and sometimes renewal fees must be paid too. Some countries require translations of part or all the patent specification.
For example, for European patent applications filed with the European Patent Office, we must approve the text and drawings of the patent specification proposed for grant. We must then file translations of the claims into the other two working languages of the European Patent Office (the three working languages are English, French and German), and pay the grant fee.
Upon grant, the patent office publishes the agreed upon specification (i.e. as amended during the examination process).
