While the specific requirements for patentability vary between jurisdictions (sometimes considerably), it is generally held that a patentable invention:
The materials submitted alongside the filing (abstract, drawing, description and so on) must also clearly explain how the invention could be practically manufactured under plausible circumstances.
Here are a few key points to remember regarding eligibility for patent protection:
You should always consult the patent office to which you are applying — or a local patent lawyer — to learn jurisdictional specifics regarding the patent application filing process. Such particulars make assistance of a patent expert such as those at Dennemeyer of huge benefit during the drafting stage. At any rate, in many circumstances, you will need to include:
The few jurisdictions (the United States, Australia and others) that allow filing for a provisional patent do not require as much supplemental material: no claims, affidavits or prior art disclosures. Only the provisional patent application, drawings, description and payment authorizations are necessary. Remember: Provisional applications are not published and never last longer than 12 months. Despite this, they offer the advantages of claiming an earlier filing date for a subsequent nonprovisional application and use of the term "Patent Pending."
The primary filing fee for a single patent application is usually the equivalent of a few hundred U.S. dollars or euros, but Dennemeyer's experts can deliver tailored quotations for a clearer picture. However, this fee can quickly increase if the application exceeds a certain number of claims (more than three, for example), requires a large number of sheets (digitally or physically), is filed by mail, exceeds your local patent office's file-size limits or causes other handling issues.
Additional fees are required for the application to be examined and published and may also become necessary for searches and responses to office actions. Many jurisdictions offer discounts on the various fees associated with patent filing to small businesses or those who are self-employed. Nevertheless, patent application costs can quickly spiral into the tens or even hundreds of thousands.
On the other hand, this must be weighed against the cost of not filing for a patent. In industries where the state of the art shifts quickly or patent eligibility is not easily met — like software and apps — securing patent rights may not be worth the cost due to the risk of obsolescence or invalidation. Be that as it may, in most fields, the ultimate value of patents can overshadow their application costs, whether through lucrative licensing deals, outright sales or sheer exclusivity.
Given the amount of paperwork, research, effort and money described above, it would not be fair to say filing a patent is easy. But the degree to which it is "hard" can vary considerably.
The factors below also affect the length of the patent approval process.
If your initial application is thorough, has little risk of running afoul of prior art and does not require the patent examiner to request additional information (or request it more than once), the process can be fairly routine. In this case, it may take as little as 12-18 months from filing to patent grant, a timeframe many in the IP industry would consider brisk.
On the other hand, if your filing is incomplete, uncommonly lengthy, has unnecessary claims, fails to disclose prior art or falls short in other areas, this will only lead to stress and costs that could have been avoided or minimized. It will also prolong the examination period. Working with a patent law firm like Dennemeyer & Associates can help mitigate the chance of application delays.
Large IP offices, including the United States Patent and Trademark Office (USPTO) and European Patent Office (EPO), often deal with a degree of backlog. The EPO disclosed an average examination period of 23 months during 2021 (a slight decline from 2020), while the USPTO's figure was about the same as its European counterpart's for 2021 (showing a steady increase).
An inventor or organization is limited to a specific time frame to file an opposition to your patent application. Depending on the jurisdiction, this may be two to six months for pre-grant oppositions and six to 12 months for post-grant procedures. Opposition proceedings last 18-19 months on average. In other words, a patent that might have gone into effect a year and a half after filing may instead require three years before it is in force. Moreover, if the opposing party has legitimate grounds for their action, it can persuade examiners to invalidate or restrict the patent grant (or their intent to grant).
With everything we have discussed, it is reasonable to expect to spend about two years getting a patent.
Some patent offices offer expedited processing, which can limit the examination period to 12 months or less, but this often requires an additional fee.
For patents already filed with a domestic office, foreign filing via the Patent Cooperation Treaty (PCT) system imposes a maximum of around 30 months before a patent must enter the national phase. Also, the Patent Prosecution Highway (PPH) is useful if trying to file simultaneously in multiple jurisdictions as it fast-tracks office examinations as long as a participating office has validated at least one of the application's claims.
As long as renewals are paid according to the laws of the jurisdiction where the patent is in force, most countries and regions allow patents to last 20 years before they expire. After expiration, the invention enters the public domain, which is why some inventors and organizations opt for trade secret protection over patenting (though the former comes with its own limitations).
If a patent holder misses a maintenance payment due to circumstances behind their control, the "abandoned" patent can be reinstated. In all cases, the argument made to convince patent offices that abandonment was unintentional has to be airtight. An application for reinstating a lapsed patent incurs specific fees and must be filed within two months of the office informing the patent holder of the abandonment.
Of the two, registered trademarks offer by far the most substantive legal protection. Unlike their unregistered counterparts, registered marks receive the full benefit of codified rights conferred by the laws of their issuing jurisdictions (the U.S. Lanham Act, the EU's Directive 2015/2436, Japan's Trademark Act and so on). International registration is possible through the Madrid System administered by the World Intellectual Property Office (WIPO). As the 114 members of the Madrid Union pledge to respect trademarks originating in other signatory jurisdictions, this is an efficient way to extend IP protection across more than 80% of world trade.
Infringement of your exclusive trademark rights can lead to civil penalties — or, if the offense amounts to counterfeiting, the possibility of criminal charges.
For a trademark to be registered (and remain as such), it must:
Actively using a trademark in commerce, or demonstrating an intent to do so, is a requirement to maintain registration. As a consequence, you will periodically have to affirm (and possibly prove) the mark's use or acceptable non-use in certain jurisdictions. Additionally, most countries permit members of the public to request the cancelation of a registered mark that has not been commercially used for several years (usually three to five).
First, conduct a trademark search to find any identical or similar mark that could imperil your registration attempt. Dennemeyer's professionals can provide invaluable assistance here. Having completed this step, your next move will be to file a trademark application with the IP office in your primary jurisdiction and pay the appropriate fees.
Along with the basic application form, you will need to specify the goods and services to which the trademark applies, and drawings or specimens may also be required. Some trademark offices have special description requirements for marks that use precise colors or are non-visual (scents, sounds, etc.).
An initial trademark filing will likely cost at least several hundred U.S. dollars (or the equivalent) as the fee is typically tied to the number of classes indicated. Countries that require statements of intent to use may call for additional payments. Extension requests, appeals, amendments and (if applicable) post-registration declarations can also add to the overall cost.
Trademark registrations can be renewed indefinitely if all relevant fees are submitted at the appropriate intervals. Periodic declarations of use are also necessary in some jurisdictions. This means key branding elements can be safeguarded for decades by combining Dennemeyer's protective services and strategies with a mindful attitude toward portfolio management.
Biro Oktroi Rosseno's Trademark Monitoring service includes ongoing searches for identical or overly similar marks that have received or are pending registration in jurisdictions relevant to you. If any surface, a BOR & Associates lawyer or member of a trusted partner firm will file an opposition or nullity action. Depending on the circumstances, this may require more than arguing the marks' similarity. Your trademark attorney may seek to prove that the contested mark would confuse consumers, create unfair competition or detract from the distinctiveness of your trademark.
Lastly, we can work with you to develop anti-counterfeiting strategies, remaining vigilant for signs of criminal infringements of your IP.
