A complete guide to IP Prosecution – Patent Application
IP prosecution is the procedure and connection among an applicant seeking certain intellectual property rights – including patent applications, licensing agreements, trademark, design rights, plant variation protection, or even regional evidence suggesting – and an IP authority, such as the patent and trademark office, trademark registrar, copyright registration system, and so on. Pre-grant and post-grant prosecutions are possible; thus, the process doesn’t really finish with the IP registrations.
Prosecution entails executing a patent right with all relevant trademark offices in the regions wherever you want and maintaining IP protection until and after the patent is granted. Patent regulators in some countries, such as Luxembourg, Belgium, and the Netherlands, only perform a proper review before issuing this right. The formal technique focuses on evaluating the patent application details, such as whether the petitioner provided all requested documents and completed all required tax payments. Several countries, including Germany, France, and the United Kingdom, place a higher value on the substantial examination procedure, which went too far higher measures to evaluate patent validity, such as showing the presence of the product patents.
When one or more nations have awarded a patent, you will be able to continue the practice by applying for a patent with the World Intellectual Property Organization(WIPO) on an international level. It will really safeguard you under the provisions of the Patent Cooperation Treaty (PCT) but also its 150+ participating countries, effectively ensuring that your patent rights are almost unassailable on a worldwide scale.
Things to keep in mind during the process of Patent Prosecution
There must be other companies or businesses that will oppose your idea of innovation. They might argue that your patent application is void. You have to be ready with your justification with explicit arguments. Keep clear defenses and the assistance of your legal team. While you wait for regulation rulings, you must also pay special attention to the passage of time. Whenever patent counsel or investigators from specific patent offices ask for extra information, give it to them right away. Ignoring such demands can result in the rejection of your patent application among almost all regions and when you do so for a long time.
If you are refused during the assessment, you may file the right of appeal or request a hearing with the examiners allocated to your issue as quickly as possible. Allowing time to pass could result in a permanent lapse if the remedy’s deadline has passed. A patent attorney will be able to revive an expired patent application by asserting either inadvertent loss or due care in accordance with the rules of the countries involved.
Patent Prosecution steps
After you have decided to file for the patent application, create the blueprints and prepare all the required documents. Processes throughout many jurisdictions must be as simplified as feasible to maintain a broad patent application on track.
There are other steps involved in patent prosecution steps such as:
Step 1: Filing the patent application within the registration center in the respective office.
Step 2: A patent application is published within the estimated time period of 18 months, but you can publish it earlier. Your patent is published in the journal.
Step 3: Any individual can submit an objection to a patent application once it has been published and until the patent has been granted. It ensures that until the objection is overturned, the patent could be given. This process is usually free from any charges.
Step 4: The next step is to proceed with the examination request within the specified time period. The examination request has to be made within 48 months after you have filed for a patent application. In this process, an expedited examination is another rule provided.
Step 5: After you have submitted your request, the patent application examiner issues a FER that is the First Examination Report to the registered agent or applicant. The report gives a detailed summary about the technical aspect, summary and the list of mentioned documents, innovation procedure and other requirements. This report is provided by means of post.
Step 6: The most important step after the FER is to respond to the report within six months of the time period with acceptance or objection.
Step 7: After the applicant has responded, then, the controller of the patent application responds to it. The patent office signifies the intimation regarding the acceptance of the application. After the positive response, the grant certificate is issued to the applicant through the mail.
Step 8: To maintain the patent in effect, the renewing fee must be paid at the end of the 2nd year by the commencement of the patent or any subsequent year. Given the deadlines and difficulties associated with the patent prosecution procedure, it is highly recommended that you hire an experienced patent professional/patent agent.
Patent Prosecution is a critical procedure, and it requires a lot of assistance. So, it is always recommended to go for professional help.