Patent Filing and Prosecution

Prior Art Search

While an idea might seem new and different to every individual who conceived it, a detailed survey of the literature must be performed. This will ensure “re-inventing the wheel” doesn’t take place. It can also lead to some refining of the ideas for a more elegant solution. The search is conducted globally as the novelty requirement is based on global novelty. Some of the useful links for the search include: espacenet, patentscope, uspto Google patents, etc

• Landscape study
  Landscape study is undertaken to get a sense of the “state-of-the-art” in a given field. This would give an idea of the general direction and approaches used by others while addressing the technical problems. This study can also be used to stimulate ideas to improve and/or refine the proposed solutions.

• Critical prior art identification
  One of the main objects of a prior art search is to identify the closest relevant prior art to the invention. Only when this is done in an objective manner can the proposed solution be distinguished with clarity. Quite often, the closest prior art will also assist in designing experiments and interpret results. At this point, the proposed solution will be checked for novelty, inventive step and industrial applicability, thus deeming it as an invention.

• Positioning the invention
  Based on the identified prior art, the invention is positioned in the greater scheme of things. For example, the invention may be deemed as a breakthrough, alternate, incremental etc. These types of definitions will be used for further business decisions, such as whether to file or not, valuation exercises, marketing of the invention, further research, and the like. For more information, please see Licensing and Technology Transfer Agreements section.

• Identify critical differentiators
  The search will also help identify all those parts of the invention that are known in the prior art, and the portions that are new or different. Defining the critical differentiators from the prior art will go a long way in clarifying the inventive step. This is one of the key elements of a good patent application.

Protecting the Invention

An invention is defined as any product or process that is NOVEL, INVOLVES AN INVENTIVE STEP AND IS INDUSTRIALLY APPLICABLE. As explained before, a good prior art search vis-à-vis the proposed solution will help define these three aspects that characterize an invention.

• Drafting a patent application
  A strong patent application that emphasizes the novelty, inventive step and industrial applicability of the invention should be carefully constructed to ensure the invention is adequately protected. The application should also include the best mode of practicing the invention. This is to satisfy the requirements of most patent offices around the world that states that one skilled in the art should be able to read, understand, and be able to replicate the invention without undue experimentation. The application also needs to be translated into technical Arabic to comply with local requirements of most MENA countries, such as Kingdom of Saudi Arabia.

• Filing of the application

• National
  Filing in a specific country is referred to as a national filing. As is seen below, the national filing could be the original filing, or through Paris Convention filing, or a national phase of an international application.

• Regional
  A group of countries include provisions for an applicant to file and prosecute with them, which then serves as a basis for a patent that is enforceable in the respective countries. For example, the Gulf Cooperation Council (GCC) includes Qatar, Kuwait and Oman as of 2023. European Patent includes more than 40 countries. Hence, filing a single patent application with EP would result in a patent that is potentially enforceable in all the countries that are members of EP. Patents filed in one country can claim priority when filing in a subsequent country through the Paris Convention within 12 months of original filing. Thus, an application filed in SA can be filed subsequently in EP within 12 months from the original SA filing.

• International
  Patent applications can be an international application or Patent Cooperation Treaty (PCT) application. When filing through the PCT route, the national phase applications can be filed 30 months from original priority filing. It is important to understand an international application will NOT result in a granted patent. Instead, it is a filing mechanism that allows the applicant additional time before filing national applications claiming priority through the international application.

Prosecuting the Application

Prosecution of applications is a process through which the examiner(s) of the respective patent office correspond with the applicant(s) of the invention about the application to ensure the final granted patent complies with the local laws and regulations. The prosecution can be broadly divided into 2 phases: Formal and Substantive Examination. During the formal examination, examiner(s) ensure that the paperwork complies with the requirements. During substantive examination, the novelty, inventive step and industrial applicability of the application are assessed by the examiner(s), and the results are communicated to the applicant(s). It should be stressed here that there is a deadline for responding to every communication from the patent office. Missing this deadline will result in the lapse of the application.

• Amending the application
  During prosecution, it is very common for certain portions of the patents, especially the claims, to be amended in light of various factors, such as prior art, local requirements, etc. Amendments need to be done very carefully to ensure the application protects the key facets of the invention. Amending too much might result in losing too much of the invention, while amending too little might result in infringing on others’ rights.

• Arguing against objections & rejections
  Another common strategy to overcome objections and rejections posed by the examiner would be to argue against them. This would entail providing a clear explanation of the invention with a view to differentiating it from the cited prior art. A combination of amendments and arguments can be used effectively to garner protection for the invention.

• Appeal decisions
  Generally, the correspondence during substantive examination lasts multiple rounds, and eventually results in a final decision by the examiner that may be favorable or unfavorable to the applicant. An unfavorable decision can then appeal to a higher authority, such as an Appeal Committee, in an effort to overturn the unfavorable decision by providing appropriate evidence, such as expert testimony, technical opinion etc.

Securing the Invention

Culmination of all the efforts of the applicant(s) through their local representatives in the prosecution phase of the application results in the grant of the patent. A granted patent is enforceable by the owner and/or the license holder of the patent. For more information, please see “Enforcement” section.

• Granting of the Patent
  Once a final favorable decision is communicated to the applicant, a few final formalities, such as payment of grant fees, need to be undertaken. The decision to grant is then published by the patent office, and any interested party can file for an opposition for the grant of the patent within a time period. In GCC, this time period is 3 months from the date of decision, but in other countries, this time period varies.

• Rights of a Patent Owner
  A granted patent gives the owner of the patent the right to prevent others from making, selling, offering for sale, or importing the product covered by the patent, or a product made by the process covered by the patent

• Term of Validity
  Patents are valid for a period of 20 years from the date of filing. This period cannot be extended beyond this term. Once a patent expires, all the knowledge contained within the patent becomes part of public knowledge and is available for exploitation by any member of the public.

• Paying Annuities
  All patent applications need to be maintained by the payment of annuities every year. Non-payment of annuities in a timely manner results in the patent to be lapsed. Therefore, the deadlines and timelines need to be monitored carefully and adhered to rigorously.