Design Filing & Administration

When you have developed an invention, it is important to keep this confidential. Indeed, any disclosure of the invention prior to filing a patent application may compromise the ability to get patent protection on the invention.

Before evaluating the patentability of the invention, you may want to consider whether it has a commercial application. Applying for a patent is expensive and the envisaged commercial advantages should be greater than the costs of obtaining and maintaining your patent rights. De Clercq and Partners can help you with to determine whether the rights to the invention could be of potential interest to third parties.

Once the commercial value of the invention has been determined, an important consideration is whether the invention is indeed patentable. The main requirement for patentability is novelty, which requires that the invention has not been made public by yourself or another in any way.

Very often, the inventor is very much aware of the scientific literature in the field of his invention. A lot of information is however published only in patent documents, so it is important to consider also this type of publications. De Clercq and Partners can help you find your way on public databases or can provide a search on your invention.

In order to be patentable, the invention must also comply with the requirement of inventive step and it should be possible to describe the invention in such a way that it can be carried out by the skilled person. As the application of these criteria is quite specific, it is advisable to obtain advice from a patent attorney to consider these issues.

The information provided in the “frequently asked questions” can also guide you through the process of obtaining patent protection.

A patent application filed in one country only provides protection for that country, therefore, multiple foreign filings are necessary to have wide geographical coverage. The system of priority filing was set up by the Paris Convention which was signed by almost all countries. This convention determines that a first patent application filed in one country party to the convention will determine the “priority date” of the invention for any applications filed within 12 months on the same invention in any country. The priority date is considered the date on which the invention was deposited such that any documents which are made public after that date can not considered by the patent offices for determining the patentability of the invention. 

The use of the system of the priority filing allows applicants to postpone costs relating to filing in different countries of interest for 12 months. In the meantime information on the commercial relevance of the invention can be obtained.

A patent is a territorial right, which implies that the right only applies in the country where the patent is granted. It is advisable to file for patent protection in countries with large economies, or countries expected to show growth in your particular field. As patenting in many different countries is expensive, a selection of the most important countries must be made. This will often be sufficient, as development and marketing in the remaining countries will often not be of sufficient interest to the competitor.

A European patent application commonly contains the following parts:

• Background, describing the prior art
• Description of the invention
• Claims
• Abstract or summary
• Examples and figures (optional)

A patent application should contain an appropriate description of the invention. While the claims of an application may be amended during examination, the rest of the application can not, and (most particularly in Europe), any amendments to the claims must be based on the application as filed. Thus, it is important to ensure that the application complies with the different requirements and anticipates any problems which Examiners may raise.

It is recommended to ask the advice of a qualified patent attorney to assist in the drafting of a patent application. An attorney not only is familiar with the specific formal requirements an application has to comply with, but also has the experience to anticipate potential issues that will be raised during examination.

De Clercq & Partners can provide you with assistance in the drafting of a patent application on your invention. Where available it can be of interest to start from a description of the background, the invention and the experiments provided by the inventors. Alternatively, De Clercq & Partners can draft the complete applications based on experimental data only.

The claims form the most important part of the patent application as they stipulate the scope of protection. In other words, the claims define what is protected. Claims should generally contain only and all the essential characteristics of the invention.

Patent applications commonly contain  different types of claims, with an aim to protect different aspects of the invention. The two basic categories of claims are:

• Product claims aimed at a product (e.g. chemical compound, biological material) or a device, and
• Method claims aimed at a procedure, process or method. A special type of method claim is the “use” claim (not allowable in all countries) protecting the (general) use of a product or process for a specific application.

The product claims provide the broadest coverage, because they cover the product and any use thereof. Method claims can be directed at a method of manufacture or at a use or a process.

By including several categories of claims in an application, potential infringers can be targeted at different levels including production, sale, and end use.

It is advisable to obtain expert advice in order to ensure that the application on your invention optimally covers the different aspects of your invention. De Clercq & Partners can help you to ensure that the claims are optimally drafted to ensure that different aspects of your invention are covered.

To obtain a patent, a formal application needs to be filed with the national qualified authority. In Belgium , this is the “Office for Industrial Property” which is under the jurisdiction of the Ministry of Economic Affairs. In The Netherlands, this is the committee for the Industrial Property in The Hague . For European applications it is the European Patent Office, either in The Hague or in Munich . For International applications (PCT), the patent application can be filed in all above-mentioned offices, also with the International Office in Geneva.

The application has to be accompanied by a full description of the invention in the appropriate language.

The filing of a patent application is subject to different fees (filing fee, search fee etc.).

Depending on regional patent legislation, a more or less extensive examination for the patentability of the invention is performed by the patent office where the application is filed. Novelty, inventiveness and industrial applicability are assessed. Also it is considered whether the invention is described sufficiently such that it can be repeated and whether  the breadth of the claims is justified.

Many patent offices also consider whether the  patent application comprises more than one claimed invention. As only one invention can be protected by a patent application, in case it is considered that more than one invention is claimed, a restriction to one of the inventions will be requested. In that case one or more additional “divisional” patent applications can be filed, to obtain protection for the other remaining inventions.

In Europe, many countries have signed the “European Patent Convention” (EPC). With only one filing, a patent is applied for all member states of the EPC. It is examined centrally by the European Patent Office. Once granted, the European Patent however becomes a bundle of national patents..

De Clercq & Partners has a number of qualified European patent attorneys who can assist you with the filing and prosecution of a European patent application

The Patent Cooperation Treaty or PCT is a treaty of more than 100 countries and regions, including the EPO. It allows for the filing of a single international application, which can then be converted into national applications in each country of interest. Again, the purpose is to allow the applicant to postpone the decision on which countries to file in until a better indication is obtained of the patentability of the invention and the commercial value of the patented invention.  The international application will be searched to identify the most relevant prior art and there is the possibility for a preliminary examination.

International applications are published as “WO YYYY/XXXXXX AX” 18 months after the earliest priority or filing date.

De Clercq & Partners can help you decide whether or not the filing of an international application is of interest for your invention.

In almost all countries, the full content of the patent application is published 18 months after the first filing. Thus, filing a patent application on the invention will make it available to third parties. As the description of the application needs to be quite detailed for the invention to be patentable, it is not possible to leave out essential information relating to how the invention is performed. Thus it is important to establish that obtaining patent rights to the invention outweighs the fact that the invention is made public to your competitors.

Before the patent application is published, most patent offices will issue a search report, which provides an indication on the patentability of the invention. It is possible to withdraw the application before publication if the applicant no longer wants to continue with the application.

De Clercq & Partners can help you to determine whether or not the publication of the application outweighs the rights that could be conferred by a granted patent on the invention.