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PBL Guide to Patenting

The Patent Process

Preparing and prosecuting Patent Applications

Patents are legal documents that describe inventive technical advances (inventions). Patents describe the invention as fully as possible and in such a way as to provide the skilled reader with the best method known to the inventor for realising the described invention. The invention itself may be a material thing (eg, a machine, or a gene, or even certain living organisms), or it may be a process for making something or doing something useful. Drafting a patent application takes into account many legal precedents that are located in substantial bodies of patent case law.

The case law provides guidance on what can and cannot be patented, what may and may not be included in the scope of claims, and guidance on many other legal issues relating to patenting.

The case law is constantly evolving and new precedents are laid down continuously. These may provide new guidance with respect to what the draftsman should and should not include in his patent application. Drafting is a specialist task and it is extremely unwise for a technical person having no or little training in Intellectual Property to take on the task of drafting patent applications.

Once drafted, a patent application is submitted through various national and regional l Patent Offices that examine the patent for certain qualifying features – chiefly that the invention described must be new (novel), useful and non-obvious (inventive) (see Patentable Inventions). In the (often lengthy) process of the examination, the applicant argues for and tries to show the Patent Office that the application has these qualifying features. A patent takes the form of a body of text and data that describe the invention, together with a set of "claims". The scope of the invention is defined by the "claims" in the final granted patent. The monopoly afforded by a granted patent is of limited duration, 20 years in most territories. Because the patent process may take several years and is fairly costly, the patent owner must consider whether the returns will justify the costs, and also whether the timetable of patent protection matches the commercial timetable over which the inventor will be able to benefit from patent protection – eg, if the practical/commercial lifetime over which the invention can be exploited is very short the filing of a patent application may be of no or little real value.

Defending and Enforcing a granted patent

A patent, once granted, may be opposed or subject to revocation proceedings by others challenging its validity. Alternatively, parties may knowingly or unknowingly infringe the claims of the patent. In either case a patent owner should be able and prepared to defend the patent, or to follow infringers (through the courts if necessary) if compensation in the form of damages or income under a suitable agreement is to be enjoyed. Defence of a patent in the case of a challenge to validity may mean extremely detailed examination of original technical records – SO THE KEEPING AND ARCHIVING OF ACCURATE RECORDS IS CRUCIAL. Needless to say, the costs of defending or enforcing patent rights are potentially enormous.

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