First of all, let's summarise which are these options, then what are the main requirements that shoud be met in each case.
To apply for a patent, you must lodge a patent application with a Patent Authority either for a national patent or a multi-national patent.
Primarly, a provisional patent application can be lodged, which regularly is followed by a standard/complete patent application, a special patent application but for a limited patent (e.g. petty patent for six years - Australia or "Abzweigung" for 10 years, divisional petty patent - Germany; design patent - US; innovation - some countries members of the European Community), a regional patent application (e.g. European Patent Application), or an international PCT patent application. Some of the applicants may decide or choose to bypass the provisional patent application stage and put straightforward a full patent application in both cases domestic and/or international.
A provisional application is a new type of patent application created by the GATT legislation, which is designed to be a simple and inexpensive application that will not be examined except for certain formal requirements. The provisional application provides a method by which applicants can quickly establish an early effective filing date in a patent application and gives an inventor up to twelve months to further develop an invention, determine marketability, acquire funding or capital, seek licensing, etc. before filing a full application. A provisional application cannot mature into a patent, so a full application must be filed within twelve months of the provisional filing date to preserve the original filing date.
During this one-year period, the invention has patent pending status. This is critical since most companies will not discuss an invention with an individual until the invention is at least patent pending.
Provisional Patent Application - Advantages and DisadvantagesAdvantages
- relatively easy to prepare and file
- establishes the priority date for a standard/complete patent application if this is field in term (twelve months)
- permits further development of the invention before filing the standard/complete patent application
- it is never-ever published/open to the public inspection (OPI), which means that does not disclose the invention state of art if the inventor/applicant, for some reasons, fails to file the standard/complete patent application
- availability to an international-type novelty search which may be conducted by an International Searching Authority on request
- one or more than two provisional applications can be associated to the same standard/complete patent application but in term of twelve months from the filing date of the earliest associated provisional application
- initially it can be filed in any language but translation must be filed in due course
- inexpensive to file
- it is not absolutely clear whether a provisional patent application may be used as the basis for making a priority claim for filing patent applications in other countries under the Paris Convention.
- the "twelve months" term it cannot be extended rather than very special conditions must be considered
- further inventive features developed after filing a provisional application are not disclosed until a standard/complete patent application describing those features is filed
- if the description is not adequate, the provisional specification will not serve its function of establishing a priority date for the standard/complete patent application must be filed
A standard/complete patent application establishes the filing date and consists of the following:
- An abstract (a brief summary of the contents of the specification)
- A complete/fulltext specification, which has two parts:
- a clear and complete description of the invention and its usefulness
- a list of the claims, which set out the essential features and define the boundaries of patent protection being sought
- Drawings - if applicable, showing all features of the invention, as defined by the claims.
NOTE: A test of the specification's clarity is that it should enable anyone with average skill in the technology to make or use the invention
A divisional patent application is an application claiming priority from some previously filed patent application and known as parent application in which more than one invention was disclosed. The divisional application has claims directed to a different invention than that claimed in the parent application.
Petty Patent protection is more cheaper and easier to obtain than a standard patent, but the invention claimed is also be limited in scope and the patent life is shorter (6 years - Australia, 10 years - Germany). Technically, the petty patents are similar to standard patents in most respects, but they have a few important differences. A Petty Patent:
- lasts for shorter time
- is examined automatically, and is usually granted within 6 to 12 months
- can only have one single independent claim, and no more than two dependent claims
- the overall cost of a petty patent is usually much less than that of a standard patent application
International Patent Application
If foreign protection is sought, no matter which alternative is to be adopted, the application must be filed before the particulars are publicly disclosed and/or disclosed in a printed document or publication anywhere in the world.
There are two alternatives: to file a spearate application in each individual country or, to file one single application under the European Patent Convention and/or Patent Cooperation Treaty (PCT).
By lodging a European patent application under the European Patent Convention, it is possible to designate any country-member under this convention and the application will be examined as a single application. If patent application is found to be acceptable, each of the designated countries will grant a national patent on the application. However, an European patent application is normally cost-effective only if more than about three or four countries are designated.
By using the PCT procedure, the inventor/applicant bigins with filing of an international application (international phase) and ends the grant of a number of national and/or regional patents (national phase).
The international phase consists of four main steps:
- filing the international application
- establishment of the International Search Report
- publication of the international application with the International Search Report (as soon as possible after 18 months from the priority date)
- establishment of an International Preliminary Examination Report (optional)
AdvantagesNOTE: The PCT provides a common application procedure which in certain circumstances may be advantageous to the inventor/applicant, but the cost of using the PCT international patent application should be carefully balanced against advantages to be obtained.
- more time for evaluation
- saves effort, time, and money when protection has been sought in a number of countries
- helps the inventor/applicant to make decisions following the international search report results before entrered into national phase with each national office of the designated countries
- facilitates the inventor/applicant to file one application, in one place, in one language and pay one set of fees in one currency
- reduces the formal requirements differing from one country to another to one single international standard form
- refrains the inventor/applicant from appointing attorneny or agents in each country in which protection may be sought
- delays considerably paying the national fees up to 20 months from the priority date or even longer (30 months) where international preliminary examination may be requested
- covers both its member-countries and various regional patent treaties or systems
- allows to name the European Patent Office (EPO) as one-single designated country
- slow to issue if prior art is a problem
- permits only 8 months deferrment of examinations and payments
- application is rejected, can no longer file in any country, although total rejection is unlikely
- the search and examination conducted under the PCT is not binding on any national Patent Office
© 1996 - 2015 Patents Online Pty Ltd