- In Patents
- 27 March 2018
Examination Procedure of a Standard Patent
By Christy Grobbler PhD
Filing a standard patent application is a first step towards obtaining patent protection but it doesn’t end there. In order to obtain enforceable protection, an application needs to be examined and accepted before proceeding to grant. Only once a patent has been granted and is in force is it able to be enforced against an infringing third party.
There are several steps involved in prosecuting a patent application through to grant. These steps are briefly summarised below with reference to the accompanying flow chart.
Request for examination
Examination may be requested at any time. However, the Patent Office will typically issue a direction to request exam about three to four years after the filing date. Once the Patent Office receives a request for examination, the application will be substantively examined for validity by an examiner of the Patent Office.
The examiner will conduct a prior art search to locate relevant prior art (mainly patent specifications disclosing similar inventions) that existed before the priority date of the application. The examiner will then compare the invention disclosed in the application with the located prior art and determine whether the invention is new or different from the prior art and whether any differences are non-obvious. In other words, the examiner will consider whether the invention is novel and inventive. Further, the examiner will consider if any other changes need to be made to the application before acceptance.
The Examination Report
As part of the examination process, the examiner will either issue an examination report or a notice of acceptance. If an examination report issues, the examiner will provide details as to why he or she does not consider the application to be in a condition for acceptance. An examination report or notice of acceptance will typically issue 12 months after filing a request for examination.
Responding to Examination Report(s)
If an examination report issues, there is an opportunity to resolve any objections the examiner may have in regards to the validity of the application. This can be done by either making changes to the specification (within strict limits) and/or by providing submissions, for example, as to why the invention is novel and inventive over any cited prior art referred to in the report. The examiner will then consider these changes and/or submissions before either accepting the application or issuing a further report. Further examination reports will issue until all the examiner’s objections are resolved.
Acceptance & Grant
Once the examiner issues a notice of acceptance, the application will be advertised for opposition purposes of a period of three months before proceeding to grant, provided no opposition is filed.
A standard patent has a 20 year term commencing from the filing date, provided annual official renewal fees are paid from the fourth anniversary onwards to ensure the patent remains valid and in force for the remainder of the patents term.
One important thing to keep in mind while a patent application is undergoing examination, is that the application must be accepted within 12 months from the date of issuance of the first examination report, otherwise the application will lapse.