From Idea to Grant 103/ How to make a patent application

After completing an Invention Disclosure Form(IDF), the next step is to write a patent draft and make an application to the authorized patent office. There are different parameters for the decision of making a patent application. To name these, the type of the protection you need, the geography you want to be protected and the prosecution strategy you pursue.

Parameter#1 Patent or Utility Model 

Patent If a stronger protection is demanded compared with utility model, especially if the subject matter of invention that includes a method or if the budget allocated to intellectual rights is relatively sufficient, patent protection may be preferred. Protection period is at maximum 20 years from the date of application. Corporate companies, universities or startups with high growth potential often prefer patent application. 

Utility model If the subject matter of the invention to be protected is more about a physical product(not method), if the budget is limited or if it is a situation that needs to be taken quickly, a utility model application can be preffered depending on the countries. Protection period is at maximum 10 years from the date of application. Countries such as Turkey, Germany or China offer utility model protection as legislation. Also, the utility model application can be converted into a patent application during the office review process. Individual inventors and startups prefer utility model application.

Keep in mind that in addition to all method inventions, pharmaceutical, biotechnological, chemical or biological inventions cannot be protected in this way. To sum up, it can be seen in Figure 1.

Figure 1

Parameter#2 Geography

Any invention should be protected in your target market or where you want to commercialize it. Patent protection depends on country legislation and there is no such protection as "world patent" valid in all countries. In case of any patent infringement, the courts of the country where the infringement occurred are authorized. Applications can be made either to national offices or to regional systems as can be viewed in Figure 2.

Figure 2

By National Offices If protection is requested in a single country, a direct application can be made to that country office. It is possible to apply to other countries within one year from the date of application.

By Regional Offices

For more time and cost-efficiency, there are two commonly used regional offices to make an application in more than one countries. One of them is an application system called PCT through World Intellectual Property Offices. The other one is a grant system called EP through European Patent Offices.

PCT If protection is requested in different geographies such as the USA, European countries and China, an application can be made with PCT via WIPO in order to speed up the patent search procedures and to minimize the fees. World-wide 140 countries has a membership of PCT. The PCT is only an application system and must be entered in the relevant country for the examination and grant process. Also, persons residing in Turkey can apply through Turkish Patent Office, WIPO or EPO.

EPO If a protection covering 40 countries that are members of the European Patent Convention, including Turkey, is requested, a European Patent application can be made on the EPO. It provides a similar function to PCT in both speeding up all registration processes and minimizing costs. Unlike PCT, the EP system is a grant system, and with the patent registration, the right of protection is obtained in the desired country. Also, persons residing in Turkey can apply through EPO, Turkish Patent Office or any EPC member patent office.

Paremeter#3 Prosecution strategy

The right to file a patent application belongs to the persons authorized to represent before the patent offices. The inventor can carry out the application process directly or as a representative of the institution he works for. Apart from these, the persons authorized to transact in the patent offices are the patent attorneys and these persons must be given a power of attorney by the applicants. Working with IP professionals is a both time-efficient and cost-efficient solution, as patent application and registration is a long and technical process. Patent prosecutions can be managed in three different ways.

Without IP attorneys All inventors, whether legal or natural persons, have the right to apply to the patent office without using an IP attorney. Only the formal conditions required by the relevant patent office must be met. Since patent drafting and filing require expertise, when patent filing is done by inventors or non-professional people, it is not meaningful due to lack of formal knowledge or lack of information. Applications made by authorized patent experts working in the company in-house intellectual property department can be made without an IP attorney. Applications made without an attorney should generally be made by IP professionals, as they will reveal the know-how of individuals or companies. Otherwise, it is obvious that it will cause a great loss of time, effort and money.

With IP attorneys Applications made through patent attorneys are generally within the scope of services provided by authorized IP professionals to whom companies or individuals apply for patent applications. There are many patent attorneys working at the national or international level and they undertake both patent research, patent drafting and the prosecution of the patent process. The advantage of applications made through an attorney is that all transactions before the patent office are carried out professionally. Depending on the service and attorney's fees paid, the quality of the attorney may vary, and the protection of the invention within the broadest scope of protection depends on this. The disadvantage is that attorneys or firms charge increased fees for inventions or services that are meaningless or impossible to patent in order to gain more profit. Due to the information asymmetry here, IP-trained contact persons can both optimize your costs and enable you to move to a more strategic patent portfolio.

With IP consultancy firms

Generally, individual applications of companies that do not have a holistic patent application strategy are far from threatening to competitors. Since it is much more profitable to write a patent application or give a positive opinion for IP attorney companies, very narrow and worthless applications and grants may arise in this regard. At that point, IP consulting firms create a bridge between patent applicants and patent attorneys. In particular, they help build a strategic patent portfolio by analyzing the opportunities and risks to extract value, commercialize and create an innovative image in IP. They work as part of your company or organization, maximizing cost and time effectiveness. They allow you to optimize your costs and work with qualified IP attorneys by giving a more independent view on whether the subject matter of the invention is worth protecting, unlike an application made using only an IP attorney firm. They help you create patent thickets in certain areas, especially by detecting blue and red oceans technologically.

References

TURKPATENT Patent/Faydalı Model Kılavuzu(2021)

WIPO PCT Application Guidelines

EPO Guidelines for Examination