How an IP creator contends with deadlines in the patent process

With the ever-increasing focus on tech in our lives and the sheer volume of new, ground-breaking tech launches that one hears or reads about, you could miss one vital element of their story. The IP behind them. And, for any tech that has significant IP value, the IP creator/founder needs to be acutely aware of the lead times available in the patent process. If deadlines are missed, rights can vanish in an instant. Jim Gastle, IP enthusiast and patent agent, explains this in more detail.

To understand how this all works, you need to understand how the patent system operates. In essence, it is built on a quid pro quo between society and the IP creator.  Society sees value in IP creators revealing their unique solutions to problems we haven’t yet figured out. In return, society provides the IP creator with a limited monopoly to control the manufacture, use and sale of an invention. So, the IP creator reveals the secret invention in sufficient detail to enable a person of 'skill in the art' to be able to reproduce it. Suppose that vacuum cleaners have been plagued with clogged filters for many years. An IP creator then spends time secretly trying to solve the challenge and works out that replicating a cyclone in a chamber will change the way air travels through the filter. As part of the patent process, the IP creator would explain how to make this happen in a manner that those familiar with the design of vacuum cleaners would understand and be able to reproduce. Society then gets the secret solution and the IP creator receives the limited monopoly.

A patent defines the limited monopoly, giving the right to take legal action against anyone who makes, uses or sells this invention without a patent holder’s permission. To be granted a patent, the invention must fulfil all of the following criteria: it must be something that can be made or used, new, and inventive. It’s certainly worth remembering in the tech world that it cannot be just a simple modification to something that already exists, so it is always worth ensuring that you know/have access to a good patent professional and/or their knowledge to help at the early stages. 

However, as one might suspect, all is not as simple as it sounds and there are conditions. After all, society doesn’t give out limited monopolies without being sure that the IP creator is in fact entitled to receive it in the first place.

All of this is governed by patent statutes and regulations that define the procedures by which a National Patent Office (in the UK this is the Intellectual Property Office (IPO) [potential link] https://www.gov.uk/government/organisations/intellectual-property-office) which receives a patent application setting out the enabling description and a proposed set of claims to define the limited monopoly.  And IPO figures show that the number of patent applications is on the rise, increasing by 7.3% between 2019 and 2020.  20,651 were applied for; 10040 were published and 9,772 were granted. 

The IPO explains that an application must include; 'A full description of the invention (including any drawings), a set of claims defining the invention and a short abstract summarising the technical features of the invention'. The National Patent Office then sets out to examine both to determine the IP creator’s entitlement to the proposed claims, for the invention as disclosed.  In the UK, this means that the IPO will carry out a search to check whether the invention is indeed both new and inventive and these search reports can take up to six months. 

Unsurprisingly, there are a number of deadline-driven steps and requirements along the way, from the actual filing of the application, the form that the application takes, requesting examination, and paying the various fees correctly at the appropriate times to keep the application in good standing.  If you miss any such deadline, it could very well put some or all of a patent strategy in jeopardy.

We’re all used to deadlines in our daily lives, for things like council tax, income tax returns and the like, and these are usually subject to interest or other financial penalties for those who do not pay on time.   Imagine how shocking it would be if your home were to be repossessed by the authorities immediately on missing a deadline!   The point is, we’re just not used to this kind of consequence.   For an IP creator working to protect their valuable IP rights, this is a consequence they must prepare for. 

Faced with all these deadlines and complexity, the IP creator can be forgiven for wondering why all the bother. The good news is that the patent system provides a number of tools to lessen a large portion of this deadline management task until further along in the process. For example, the patent system allows for a first patent application filed in, say, the UK (on what patent professionals call the 'priority date') to provide patent pending status (at no additional cost!) in most industrialised countries for up to twelve months from the priority date. Getting this right can form a launchpad for success in many cases.  Getting it wrong can be a profound risk.

Using our inventive vacuum cleaner as an example, a first UK patent application filed on December 1, 2021 (our 'priority date'), would then confer patent pending status in most countries for the following one year up to December 1, 2022. 

But the key point here is the priority date. And the important condition that the priority date is before any public activity that makes the invention 'available to the public' (a public disclosure of the invention is an example of this, among others.) Preparing for this step is critical, since most countries in the world have this as a requirement for novelty in any event. Often IP creators will intentionally delay any such public activity and will work closely with their patent professional to ensure, in writing, that the priority application is on file first. Some countries, like the United States, also have requirements and associated deadlines that are based on other public activities where the invention may be concealed or other confidential activities such as offers for sale, so getting professional help is key to planning to meet these deadlines.

Which means that for all your tech creators out there, before you rush to tell the world about your latest invention, think about the consequences for your IP and make sure that you spend some time understanding this element of your business alongside your focus on funding, getting the right team, finding your customers and your sales and marketing.