Patenting process (links to patent dbs at the end of the text)
The patenting process is rather a straight forward one, but many people still do mistakes. The following description is focused on legal terms involved, not mentioning the role/relationship of employee and employer.
A) First there is an invention.
B) Second, this invention is transferred into a written form – text of a patent application.
C) Third, the patent application is filed and officially registered at a Patent Office – usually it is the national Patent Office in a selected country (in our case it will be most often the Czech Patent office – “Industrial Property Office“ (Úřad průmyslového vlastnictví).
D) The registration date (the date when patent is registered at the patent office) represents a so called “Priority Date” from which the protection of the invention will be provided in case of granting the patent. Let us consider a hypothetical case – for instance January 10, 2011.
E) Now the invention is known only to the inventors and the Patent Office. On receipt of the priority date you have 12 months to fill the International patent application possessing the same priority date and in case of publication of your patent application or granting the patent nobody can gain a protection of the same subject with a later date of priority. In our example the term is until January 10, 2012 and your priority is world wide. The invention is kept secret. The cost of this first step is around 2 000 – 5 000 CZK + cost for creation of the patent application which depends on the patent agent used (0 CZK if IOCB TTO is engaged, around 15 000 CZK if some local patent agent is engaged, around 50 000 if some local patent office is used and around 500 000 CZK if some top patent office from abroad is used).
F) Before expiration of the 12 month period the owner of the patent (in our case it is the Institute) has to decide whether its invention is a promising one and future protection abroad is needed. If its decision is YES, then the patent application is filed according to the PCT protocol (Patent Cooperation Treaty). This will costs around 70 000 CZK + costs of agent. Protection in European countries can be assured by the “regional” European patent, which is obtainable also via the PCT application.
G) If the Czech Patent Office is used as the primary one for registration, it will publish the patent application, i.e. disclose it to public, 18 months after the priority date at latest. The same term is valid for the “PCT application” thus PCT application will be published by the international authority (before July 10, 2012 in our example) together with an International search report. Until 22 months after the priority date (or 3 months after obtaining a Search report) also International preliminary report on patentability can be requested (it costs about 45 000 CZK).
H) Considering results of the International search report there is another decision to be done until 30 months from the priority date – to continue the patenting process in so called “National phases” or not. It means that the institute has to decide in which particular countries the future patent could be requested . The protection of the invention is effected only in the countries where the patent is granted and where the fees for protection are paid. This is becoming costly, one country protection will cost around 100 000 – 200 000 CZK and the overall costs can reach easily several millions of CZK during the first 2-3 years of protection. Because of the above mentioned costs it is the best solution, if the licence agreement with a third party concerning the patent is prepared before the national phases entry.
I) The expiry of the patent protection in particular countries can slightly differ but it lasts usually 20 years from the Priority date.
The whole process is shown schematically on the picture below :
There are of course many fine tips (griffs) and many details which are different case by case, but the time limits are given by law and cannot be changed.
Few comments on patenting –mistakes most often occuring:
- The worst-case: a presentation of your results as a poster or at a conference (or in any other way, e.g. publication) before filing the patent application –it will be then considered as lacking the novelty and rejected.
- A researcher comes on Tuesday with following sentence : “Friday I am leaving for a conference and I would like to file a patent on things which I am going to present”.
- Patent is submitted in Czech Republic - people believe it will protect their invention world wide.
- Patent is submitted in Czech Republic, and without the PCT procedure (or obtaining the European patent) people want to patent it in a different country 4 years later = impossible, it is already too late, newly filed patent application will not fulfil the criterion of novelty and the patent will not be granted.
- Patent is too broad – mistake – patent prevents your own later patents.
- Patent is too focused – mistake – somebody else will patent the things around.
Links to patent databases :
Europe : http://ep.espacenet.com/quickSearch?locale=en_ep
quick contact
Flemingovo n. 2, 16610
Prague, Czech Republic
tel.: +420 220 612 258
email: info@iocb-tto.cz