Patent prosecution
Practitioners need to ascertain what is already known to people familiar with the general field of the invention—such already-known material is termed the prior art, and to obtain drawings and written notes regarding the features of the invention and the background.
During this initial phase, sometimes termed "patent preparation", the practitioner may also seek to determine precisely who contributed to the making of the invention.
A prior public disclosure of the invention (or a sale offer) or an incorrect listing of inventors may incurably invalidate any patent that might result from an application.
As of May 2023, some countries (e.g. Argentina, Australia, Belarus, Brazil, Canada, Estonia, PR China, Japan (since June 2018), South Korea, Mexico, New Zealand, Russia, Ukraine, the US and Turkey)[3][4][5] give the inventor(s) a one-year grace period,[6] when their own disclosures do not count as a prior art to a subsequent patent application, although in practice it is difficult to take advantage of this rule.
Finally, on September 16, 2011, the United States shifted to the first-to-file rule with the enactment of the America Invents Act.
[10] Most patent applications have at least two components, including a general, written description of the invention and at least one "embodiment" thereof, and a set of "claims," written in a special style that defines exactly what the applicant regards as the particular features of his or her invention.
The search and examination phases constitute the main part of the prosecution of a patent application leading to grant or refusal.
For 2021, the patent grant rate was 62.7% for the EPO, 74.8% for the JPO, 74.0% for the KIPO, 55.0% for the CNIPA, and 79.2% for the USPTO.
Such opinions may take the form of a formal pre-grant opposition inter partes procedure or it may simply be an opportunity of filing observations as a third party.
In some jurisdictions (such as Japan and South Korea[citation needed]), after filing an application, examination is optional, and only on request, rather than automatic.
[19] Some jurisdictions including Bermuda, South Africa, China (in the case of Utility Models), Germany (in the case of Gebrauchsmusters (Utility Model)) and by option Spain, go one step further, in that an application is passed to issue and publication as an enforceable patent in short order, with no substantive examination.
Such systems are known as "invention registration" regimes, and have the benefit of reduced costs, because applicants may postpone or completely forego the expensive process of examination for inventions that are of small or speculative value in the applicant's field of endeavor.
[citation needed] At the same time, simply filing an application usually preserves the applicant's right to subsequently seek full examination and protection for his invention, if a competitor or a pirate is later discovered to infringe the invention.
For controversial areas such as business method patents, however, the appeals rate is much higher.
[2] Post-grant opposition serves as an efficient and cost-effective alternative to litigation for disputing a patent's validity.
In comparison to the opposition system, in general, the re‑examination is not time-bound and can be requested during the lifetime of the patent.
[27] In some jurisdictions, such as the United States, the patent holder may even seek to broaden the scope of the invention defined in the claims by filing a reissue application, although a broadening reissue in the USA must be filed within 2 years from grant.
The case of In Re Tanaka[28] established the principle that a patentee can add narrow dependent claims to an issued patent through the reissue process, because a patent with narrower dependent claims is less subject to invalidation when litigated.
[30] Unlike other invalidity considerations, only patents and printed publications will be considered in re-examination; see 37 CFR 1.552.
Interference practice does not apply to patents filed after September 12, 2012, because the U.S. moved to a first-to-disclose system which is in many ways similar to first-to-file.
In some jurisdictions only authorized practitioners can act before the patent office, although applicants (e.g., inventors) can generally represent themselves.
It allows inventors and applicants to freely share all relevant information—including sensitive technical details and potential legal issues—without fear that these communications will be disclosed to third parties[17] or become public.
[33] In many jurisdictions, patent advisors are bound by professional codes of conduct and legal regulations that mandate the confidentiality of client communications.
Breaches of this confidentiality can result in severe consequences, such as disciplinary actions, fines, or even imprisonment.
This disparity can lead to situations where confidential communications in one country may be subject to disclosure in another, undermining the protection of sensitive information.
