Pre-Filing

1.1 The patenting process is started by receiving information from the inventors during a technical deposition. This is an interactive meeting that is usually recorded. Inventors may supply additional material.

1.2 A technical deposition transcript is returned to the inventors for review. One or more proposed claims may also be included. Any additional technical information should be identified at this stage. The scope of the invention as claimed should also be agreed.

1.3 A draft patent specification is prepared and supplied for approval. It is returned with any amendments (that should be minor) and full inventor details confirmed.

1.4 A first patent application is filed at the UK-IPO or the European Patent Office with a request for search.


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Post Filing Formalities

2.1 Formal details of filing are confirmed from the filing receipt, consisting of the application number and the date of filing.

2.2 An assignment from the inventors is obtained.

2.3 The designation of inventor is filed.

2.4 Diary systems monitor the arrival of the search report.


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Substantive Prosecution

3.1 The pertinence of cited prior art is considered to produce a paternability report following search.

3.2 Within twelve months of filing, a decision is made as to whether patent protection is required outside Europe.

3.3 The specification and claims are amended for filing in the United States.

3.4 Signatures are obtained from the inventors for the US application.

3.5 An associate is instructed to file an application within 12 months of the first application being filed.

3.6 A certified copy of the first application is obtained and filed in the US to support the claims to convention priority.

3.7 The EP and the US applications publish at 18 months from the first filing (priority) date.

3.8 A request for substantive examination is filed in Europe.

3.9 From the second anniversary of filing, a maintenance fee is required in Europe (but not US.)

3.10 In Europe - An examination report issues setting a period of four months to respond. A written response usually includes amendments to the claims and arguments. Further examination reports may issue. However, if a claim set cannot be agreed, the examiner will issue a summons to oral proceedings.

3.11 After obtaining patent grant, the European patent must be validated in individual countries, which may involve filing translations.

3.12 In the US – An Office Action issues setting a three month period to respond. If possible, we would advise you to respond within two months. If a second action issues it is likely to be made final. It is not unusual to pay additional fees in the form of a continuation and/or divisional. No maintenance fees are required while the application is pending. Interviews with Examiner can be a productive way of making progress towards patent acceptance.

3.13 After gaining acceptance of the application, and issue fee is required and the patent issues.


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Post Grant Renewal

4.1 The duration of the patents is twenty years from their date of filing.

4.2 In European countries, renewal fees are required annually in each individual country.

4.3 In the US, a (higher) maintenance fee is required at 3, 7 and 11 years from issuance.

4.4 During the development of an invention, it is possible for several provisional applications to be filed within the twelve-month convention term which are all used for a priority basis in substantive applications filed thereafter.


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