A guide to the patent process – to the end of the first year and beyond...

Jeremy Smith is a Patent Attorney with Mathys & Squire LLP, and works out of the company's Cambridge office. Mathys & Squire is a commercially focused law firm, with a wide range of international and UK based clients. The company has attorneys specialising across the full range of technologies including the life sciences and IT and engineering.

In an earlier article, patents were introduced and some of the key elements of the first year of a typical patent procedure were discussed. This article focuses on decisions that typically have to be made towards the end of the first year, and the general procedure followed in the subsequent months.

The article assumes that an initial UK application has been filed, that a UK Intellectual Property Office (UK-IPO) search was requested and that the associated search report has been received.





Towards the end of the first year

If you wish to file further applications seeking protection in other countries and/or covering technical developments to the product/process that you are seeking to protect then, in most cases, these further applications should be filed in the year immediately following your initial UK filing so that the new application can benefit from your original application’s filing date.

While the commercial considerations surrounding each patent application are unique, it may help to undertake the following steps in the couple of months or so preceding the anniversary of filing:





  • Evaluate the commercial potential of the product/process that the initial UK application seeks to protect.
  • Evaluate the commercial potential of any significant technical developments to the product/process made since the initial UK application was filed.
  • Review the search results and assess their relevance to the product/process to which the initial UK application was directed and to any technical developments to the product/process.
  • Consider whether or not the overall commercial potential warrants continuing with the application taking account of the search results.
  • Assuming the commercial potential warrants it, formulate an appropriate strategy for filing any new applications in the UK and/or overseas.


Assessing technical developments

The most commercially important technical developments often include: developments that add a unique selling point to the product; developments that provide additional manufacturing benefits; and/or developments that solve technical problems encountered during development (especially developments that would be difficult to replicate). It may be possible to protect commercially important technical developments in a new patent application and so any developments, and their commercial importance, should be explained to your attorney.

Reviewing the search results

The UK-IPO search report will list any documents considered relevant to your invention and will categorise the documents according to their perceived relevance.

Do not be surprised if the search highlights several documents as being relevant or if some documents appear to relate to different technology. The search is based on the invention as defined in the ‘claims’ (found towards the end of the patent application). The claims define, in words, the products and/or processes that you are seeking to protect (effectively staking a ‘claim’ to a region of intellectual property (IP)). Normally, the claims will have been drafted to cover as large an area of IP as realistically possible and so it is usual for the UK-IPO to find at least a few documents of relevance.

Each document cited in the search report should be reviewed carefully, from a technical perspective, with your attorney in order to determine the key similarities and differences between the product/process that your application seeks to protect and what the cited documents describe. Do not be afraid to highlight anything that you consider may be problematic to your attorney - it is easier, and more cost effective, to address such issues within the year following your initial application.

Is the application worth pursuing?

At any stage, if the commercial value of a potential patent does not warrant the cost of pursuing it, then consideration should be given to abandoning the application.

Seeking Protection Overseas

Ultimately, the more countries in which you seek patent protection, the greater the cost. In most countries (over 140), with some notable exceptions, the decision on whether to seek protection in those countries, and the cost of doing so, can be delayed by a further eighteen months (or more) by filing an international patent application (also known as a PCT (‘Patent Cooperation Treaty’) application). This delay can provide additional time to commercialise your invention and assess the commercial potential of overseas markets.

There are also a number of regional treaties that allow you to seek patent protection in several countries through a single patent application. For example, the European Patent Convention (EPC) allows protection to be sought in nearly 40 different European countries.

Nevertheless, unless your budget is extremely large, the number of countries in which you seek protection will, ultimately, have to be restricted. In this regard, when considering an overseas filing strategy it is worth prioritising:

  • Countries in which the product/process has the biggest commercial potential.
  • Countries in which the product/process is to be manufactured/used.
  • Countries in which your key competitors are located.

The Examination Process

Most countries have some form of process for examining patent applications before they are granted. Central to the examination process in the UK, and most other countries, is an assessment of whether the invention claimed in the patent application is new and, if new, whether the invention provides a sufficient ‘inventive step’. Typically, an examiner will review documents considered to represent the prevailing ‘state of the art’ (referred to as ‘prior art’) before your application was filed and will evaluate the invention claimed in your patent application based on this review.

The examiner will report any objections that the patent office has to granting the patent and will provide a short period (typically a few months) to respond to those objections. The majority of patent applications will receive some form of objection and receipt of a negative report should not cause undue concern.

The examination report, and any documents relied on by the examiner, should be reviewed carefully and discussed with your attorney. Assuming that the examiner has not found something that makes grant of a commercially valuable patent impossible, then an appropriate response should be prepared based on this review. If the examiner’s objections are well founded, then it is generally necessary to amend the claims to overcome the objections. If the examiner has erred in the analysis of the prior art, or the claimed invention, then this can be explained to the examiner.

In the UK, and many other countries, there can be several iterations of examination report and response – especially if you disagree with the examiner. However, in some countries (e.g. Japan) the examination procedure is more limited and so a different approach may be more appropriate in such countries.

It is important that your attorney is informed of the most commercially important technical features of your invention. This not only improves the cost-effectiveness of the examination process but also helps to ensure that any patent granted is of the greatest possible commercial value.

Grant / Refusal

Ultimately the examination process will result either in grant of a patent or outright refusal.

Generally, refusal is relatively rare, especially if the applicant has applied a commercially focussed and pragmatic approach to the patent process that allows potential issues to be highlighted early and recognises when it is not worth pursuing a patent application ‘to the death’.