The patent registration process is a procedure built from many stages and must be adapted to: (a) the business plan; (b) the budget; (c) the field of invention; (d) the level of maturity of the technology of the invention.
In this article we will describe the various considerations in choosing the options for registering a patent, the various steps for registering a patent, the actions required for register a patent and the meanings that result from the various choices made during the registration procedure.
Step 1 – Is our invention new? Performing a patent search
Before drafting and filing a patent application, we recommend to perform a patent search in order to answer the following questions:
(A) Is our invention new and involves an inventive step?
(B) What is the relevant prior art? What are the inventions and solutions that exist in the field of our invention;
This information may help to better define the invention.
The main benefits of performing a patent search:
(A) Saves the high costs in the following steps – as long as it is discovered that there are previous publications that deny the validity of the patent there is no need to go ahead and invest money in drafting a patent;
(B) A relatively inexpensive procedure (between NIS 1,500 and NIS 2,000);
(C) A procedure that can help the patent attorney define the invention optimally and stay away from previous publications.
(D) Commercially, it is important to know who are the competing players in the field and what are their solutions to the problem.
The main disadvantages of performing a patent search:
(A) In the future, we will have to disclose to the examiner the search results as part of the examination procedure (in Israel and the United States);
(B) The efficiency of the search is generally not high, in a considerable proportion of cases, at the examination stage, additional publications will be discovered;
(C) The search cannot identify patents that have been filed and have not yet been published (and there are many such);
(D) The search is limited to the language in which it is conducted.
(E) Positive results do not mean that there are no previous publications, but that the searcher did not find a previous publication.
The time required to perform a patent search is usually about a week.
- We recommend to perform the search using a professional researcher who is proficient in searches in the relevant field of our patent.
- A green light in the search– as long as no publications that constitute previous publication or deny the inventive step were found in the search, it is possible to advance in the patent registration procedure to the step of editing the patent.
- A red light in the search– if the results negate the innovation and inventive step, we recommend waiving the patent registration procedure or change the invention and re-search.
Step 2- Drafting a patent application
When drafting a patent application, we must decide which filing route we are interested in:
- A complete patent (Utility patent application) – the regular filing route – for the purpose of this route, a complete patent application must be formulated.
- Provisional Patent Application – a U.S. national application filed in the USPTO – for the purpose of this route it is possible to draft a complete patent application and it is also possible to draft the application in a limited way.
Drafting a complete patent application
A complete patent application (Utility patent application) is an application that includes all the parts of the patent required by law. It may be filed under: (a) a national patent application; (b) an international filing (PCT); And (c) as part of a Provisional Patent Application.
- Drafting a complete patent application is the preferred and recommended way for drafting a patent application.
- The language of the drafting is English.
Drafting a Provisional Patent Application in the United States of America
A Provisional Patent Application can only be filed in the USA.
The basic rule with regard to this application is that up to 12 months from the filing of the provisional application in the United States, a complete application must be filed.
It should be emphasized that: After 12 months, it is not obligatory to file the complete application in the United States.
A provisional patent application is not subject to the strict drafting rules. For example, in general, this application does not include the claims section. However, it is important to clearly include the essence of the invention in the provisional patent application – the invention that we want to protect at a level of detail that will allow a person skilled in the art to carry out the invention and the upgrades of the invention.
In general, wo do not recommend drafting a provisional patent application, Except for the two exceptions below:
- A provisional patent application is only suitable when the budget of the inventor is very small and initial capital is required for drafting and filing of the complete patent.
- A temporary application is only suitable when the invention is in the initial stages of construction, there is a fear of many inventive changes and at the same time it is necessary to expose the invention in the initial stage to third parties.
Step 3 – Filing a patent application
There are several main options for filing a patent. We will present them in the usual order of preference:
- Option A– filing a patent application in Israel.
- Option B– filling an international application (PCT).
- Option C– filing a provisional patent application in the USA.
Option A – Filing a patent application in Israel
In Israel, a patent application is filed as a complete patent application (as a national application in Israel).
If the patent application is the first application filed, this patent application defines the priority date of the patent and affects all the filings of the patent in the world.
It is important to know that the drafting rules of the patent application in Israel are parallel to the drafting rules of the patent in the other countries of the world.
Expedite Examination: Generally, we recommend filing this application in the expedite examination track in order to prioritized the examination of the application.
The benefits of filing a patent application in Israel:
- The fees in Israel are cheap (approximately NIS 2,000) and a 40% discount can be requested if the applicant is an individual or it is a company with a turnover of less than NIS 10 million per year.
- The examination procedure is carried out at the Israeli Patent Office and therefore there is no need for a local patent attorney from abroad to mediate.
- The examination procedure is fast. It is possible to request for an Expedite Examination and receive a first exam report within about 4 months.
- The priority date is recognized in the world – by virtue of the Paris Convention and the PCT Convention, the application fled in Israel allows to claim priority in all countries of the world and therefore, the filing date in Israel will be accepted later as the priority date in each country.
Recommendations: usually the option of filing a patent application in Israel is the best option.
Option B- Filling an international application (PCT)
The PCT application is an application filed to WIPO (“International Intellectual Property Organization”) which is responsible, among other things, for examining the patentability of the patent-pending inventions in the 140 member states of the PCT Convention.
Filing a PCT application is subject to the regulations under the PCT– The Patent Cooperation Treaty. This application is filed as a complete application.
This is not an “international patent application” which protects the invention in all countries of the world. this is a patent application which does not give any protection to the patent and allows for two main things:
- An opinion on the application – 4 months after filing the PCT application, the organization issues an opinion according to which the inventor can understand: (a) whether his application is new; (B) whether there is an inventive step in his application; (C) is its invention technologically feasible. It is important to note that the opinion of the PCT is not binding and is only a recommendation. A national patent office is authorized to accept the recommendation in full and grant the patent to the inventor, and is also authorized not to accept the recommendation and require the examination of the complete patent application.
- 30 months for filing abroad – the PCT application allows the applicant to file a national application in any of the member states of the PCT Convention, usually within 30 months from the first filing date – the priority date, and the member states undertake to respect priority date of the PCT application. It should be noted that the priority date of the PCT application does not have to be the date of filing of the PCT application. For example, a PCT application can be filed by virtue of the priority date of a previous Israeli application. 30 months after the priority date, the applicant must file a patent application in each and every country in which he wants protection. Each country in which the patent application is filed will treat the application as a local application and will grant a national patent under the existing law in that country.
Recommendations: our recommendation is to file a PCT application 12 months after filling the national application or 12 months after filing the provisional patent application in the USA.
Option C- Filing a provisional patent application in the USA
A provisional patent application is a patent application filed directly with the United States Patent Office (USPTO).
The provisional patent application is provisional. It is filed on a certain date (the date of the first filing), and retains the filing date as a priority date only if a complete patent application is filed within up to 12 months from the date of filing the provisional patent application. The provisional application is not considered or examined in a certain way. The provisional application is confidential and unpublished.
The benefits of filing a provisional patent application
- The level of description required is relatively low because according to the rules of the USPTO, it is not necessary to include in this application the claims that define the scope of the monopoly required in relation to the invention;
- The cost of drafting a provisional patent application is lower than drafting a complete patent application.
- The application allows a safe presentation to investors who wish to be exposed to the invention before they invest their money.
- Extends the time period for registering the patent and therefore delays costs per year.
The disadvantages of filing a provisional patent application
- The provisional patent application is perceived by the investor as “less serious” and more dangerous.
- The examination date is far away and it is not possible to obtain an indication from the patent examiner regarding the chances of registering the patent;
- Extends the patent registration process by one year;
- It creates a risk that due to differences between the provisional patent application and the complete application, the complete application will not get the priority date of the provisional patent application.
- There is a concern that there will be material differences between the provisional patent application and the complete application. In this situation, there is a fear of losing the priority date of the provisional patent application, so that the priority date will be the date of filing of the complete application and the priority date of the provisional patent application will be revoked (Void).
- In a situation where the priority date of the provisional patent application is revoked, there is a fear of prior self-publication (self-publication between the date of filing the provisional patent application and the date of filing the complete patent application) which will deny the validity of the complete application.
- Additional costs- double payment both for the drafting and filing of a provisional patent application and also for the drafting and filing of a complete application.
- We do not recommend to file a provisional patent application.
- If there is no other choice, we recommend drafting it as a complete patent application
- If there is no other choice, it should be filed as detailed as possible.
- A provisional application is only suitable for those whose budget is very limited and it is still important for them to receive some protection in the interim period of up to initial capital raising.
- A provisional application is only appropriate when the invention is still in development and the description of the invention is not clear, so there may be many changes in the invention and it is still important to get some protection in the interim period until the invention matures.
recommendations for the next step:
- After 12 months it is recommended to file an international application by virtue of the provisional patent application – a PCT application and not a national application.
Step 4- The national phase – filing in the countries where we seek protection
The patent protection is granted in the territory in which it is registered. Therefore, insofar as there is a commercial need for protection in different countries, the patent must be registered in each country separately by virtue of the priority date of the first application.
There are two options for the date of the national phase:
Option 1- the Paris convention: a patent may be filed in a member state, provided that the filing takes place within 12 months from the priority date.
Option 2- the PCT: a patent may be filed in a member state, provided that the filing takes place within 30 months from the priority date (in some countries – 31 months).
Entry into the national phase involves the appointment of a local patent attorney, fees payment, payment of the national fees at the patent office of each destination country or destination area and translating into the language required by the law of the relevant state.
The patent is protected only when it is granted in each and every country separately. if we do not file in the time required, we will not have a patent monopoly in the country where the patent was not filed.
Step 5 – Examination of the patent application in each country
After a patent is filed in any country it is examined in accordance with the existing queue in that country for the purpose of examining patents. The queue is usually determined according to the existing patent load in that country and the technological field of the patent.
Under certain conditions, it is possible to file an application to advance the examination in each and every country (for example: as part of the PPH track, as part of an application for an urgent examination, as part of green applications, etc.).
Each patent will be examined separately in each country in accordance with the low of that country. Although there is no uniformity in the patent law systems of each and every country, there are clear common principles for examining a patent application.
In this step, it is necessary to respond to an Office Action that are received from the authorities of each country in which the patent application was filed. When we act as intermediaries, we will give recommendations to the local patent attorney in relation to the answer required.
Step 6 – Patent certificate in each country
As the examination procedure ended and the examiner has decided to accept the patent application for registration, in some countries the patent will be published for oppositions while in others the patent will be accepted for registration immediately without oppositions.
Upon receipt of the patent the relevant country will issue the patent holder a patent certificate and the patent holder will receive a monopoly on his invention in that country.