FAQ

The larger the island of knowledge, the longer the shoreline of wonder.
— Ralph W. Sockman

The process of getting a patent involves drafting and then filing a patent application with the Patent Office, paying the applicable fees, and responding to office actions. It is a time-consuming process that may take several years to complete.

It is recommended (though optional) to perform a search for prior art related to the invention. Even if the search does not reveal any prior art document that directly describes the invention, knowing the prior art allows the patent attorney to draft the patent application accordingly and differentiate the application from the prior art from the beginning. The result is a higher-quality application that has more chances of being granted quicker since the application already differentiates the invention from the prior art documents revealed by the preliminary search.

The inventor can of course draft his patent application, although it is not recommended. The drafting of a patent application requires good knowledge of the patent procedure and of the patent language, particularly for the drafting of the claims that provide the actual patent protection to the invention and this work should be done by a patent attorney. Drafting good claims is an art that needs a skill that goes beyond technical understanding of the nature of the invention to design claims that will effectively protect the commercialized product and prevent competitors from easily designing around the patent.

This depends on your strategic plans, on the completeness of the invention at the time the application is drafted and on the budget at your disposition for patent purposes. For inventions at an early stage, which need more data to support the claims as many inventions in the pharmaceutical and biotech areas originating from academic institutions, start-up companies and independent inventors, it is recommended filing a provisional application in the United States. For inventions that are complete and the main market is in the United States, as it happens with many high-tech inventions, it is recommended filing a regular non-provisional application in the US. In any case, the filing in the US or in Israel will give you 12 months to file an International Application under the Patent Cooperation Treaty (PCT), claiming priority from the first application.

Prosecution is the process before the Patent Office whereby a patent examiner examines the patent application, particularly the claims, to assert that the invention is patentable according to the Patents Law and the application complies with formal requirements of the Law and Regulations. The examiner issues then an examination report or office action with his/her rejections, objections or comments, and gives the applicant a limited period to respond. This can be repeated one or more times until the application is finally accepted, followed by the grant of the patent, or is rejected.

The term “Patent pending” refers to the patent application during all the period after filing and during prosecution, before grant of the patent

This will depend on the type of your invention and the countries where you or your licensees intend to market the product and, of course, of your budget. Your patent attorney can provide the information and costs for your decision.

The time period from filing to grant depends on the backlog of the Patent Office in that country for a particular field and the number of exchange of correspondence with the Patent Office in order to overcome the Examiner’s objections. It usually takes several years until a patent is granted. In some countries, such as Israel, Europe and USA, it is possible to ask for an accelerated examination in certain circumstances. For example, if the applicant declares that the product is ready to go to the market and that a patent protection is required since the product can be copied easily, the Israeli Patent Authority may accept the accelerated examination request. In those cases, the grant process in Israel can occur within a year.

The costs are divided into official fees payable to the Patent Offices and patent attorneys’ fees. The payments are due at several phases: initially, for carrying out a search, drafting and filing the application. After one year, for filing the international PCT application and, after another 18 months, for filing national applications in the countries selected by the applicant. After filing, there are costs for the prosecution of the application and payment of renewal fees in some countries until the grant of the patent and, after the grant, for payment of renewal fees.

You can only assert your patent rights against an alleged infringer after the patent is granted and you are in possession of the Certificate of Patent. In countries that publish the patent application before its examination, you can sue somebody retroactively for infringement from the date of the publication when the claims that are infringed are identical in the published application and in the granted patent. In Israel, the application is published for opposition after acceptance of the application, and you can sue retroactively from the date of publication of the acceptance.

As strange as it might first sound, having a patent granted on your invention does not give you automatically the right to make and sell a product based on the invention. This is because a patent gives primarily “negative rights”, namely, the right to preclude others from producing, using, selling or offering to sell a product based on the invention protected by the patent without the consent of the patent owner. For example, in the case of pharmaceutical or agricultural products, there is need of authorization from the Health or Agricultural authorities, respectively, in order to market the patented product. In another example, a patent claiming the invention of the first car comprising a patented carburetor does not give the right to produce and sell the car without the consent of the owner of the carburetor patent.