Understanding the dynamics of a patent application

Relationship between timeline and disclosure

Patent law can be very complex, and it is often quite tedious for non-experts to understand the details of what goes on during the filing and prosecution of a patent application. However, if I had to pick one thing that everyone who works with patent attorneys should understand, I would pick the timeline of a patent application - what I call the dynamics.

Understanding how the process works from invention to patent application to granted patent will help you improve the quality of your applications and save you money in the long run.

Let's look at the different stages and what is possible or needs to be done at each stage:

1 - Crafting an Invention

At this stage, you are free to define the scope of your invention. This means that you are free to adapt the claims defining your invention as you wish.

2 - Filing a priority application

Once the application has been drafted and filed, the so-called priority year begins. During this year, the applicant has the right to file other applications for the same invention in the same and other countries, claiming the filing date of the first application. It is possible to amend the disclosure and claims in these later applications. However, the amendments are rather limited and broadening the scope of the invention will lead to the loss of the priority right for the additional matter.

3 – Examination of the patent application

During the subsequent examination of the application and up to the grant of the patent, the claims may be amended, but only within the limits of the original disclosure. It is not possible to expand the scope of the claims or to add matter to the invention.

The concept of original disclosure of an invention is very important because business objectives may change during the life of a patent application. So keep in mind that the ability to implement changes decreases exponentially after filing.

Consequences of the dynamics

So what do we learn from this? It is important to work on your invention as much as possible before filing. In addition, filing an application should be planned and not rushed.

To work on your invention to prepare a strong patent application, consider and implement the following questions

• What do we want to claim or protect?
• Why will the customer buy our inventive product?

To answer these questions, it is helpful to think beyond the technical aspects of the invention. For example, you may want to involve marketing and sales colleagues to better understand your product and market.

Key takeaways

• The ability to make changes after a patent application is filed decreases exponentially.
• Work on your invention and plan the patent application.
• Think beyond the technical aspects to the business implications.