Knowledge Transfer Office

FAQ on Patents

The information here is intended as a rough overview to the world of patents, and is subject to change. In practice, there are far too many exceptions and intricacies to patent systems than can be covered here, but the KTO would be happy to help on an individual basis.

    Disclosure:
  1. What is disclosure and why does it matter?
  2. What can be done to protect patentability?
  3. What is a research notebook and why do I need one?
  4. How to keep a research notebook for patent purposes?
    Patents in General:
  1. What is a patent?
  2. What is the difference between patents and copyright?
  3. Who owns the rights to a patent?
  4. What can be patented?
  5. How does a patent protect an invention?
  6. What is a priority right or priority claim?
  7. How to contact patent offices? Where to search for patents?
    Different Kinds of Patents:
  1. Are there different kinds of patents?
  2. How are patents different across countries?
  3. What is a European patent?
  4. What is an international or PCT patent?
  5. What is a short term patent?
  6. What is a provisional patent?
  
    Applying for a Patent:
  1. Who can apply for a patent?
  2. Which country to file in?
  3. What does a patent application process involve?
  4. How long does a patent application process take?
  5. How much does it cost to file and keep a patent?
    Preparing a Patent Application Document:
  1. What is a Patent Application document?
  2. What does a Patent Application consist of?
  3. How to write the Specifications and Claims in a Patent Application?

  1. What is disclosure and why does it matter?

    Disclosure is letting someone know about something that he/she would not otherwise know about. It can be made through publications, conference presentations, seminars, communications on the internet, prototypes, samples, grant proposal submissions, promotional or sales literature, or talking to any person.

    To be patentable, an invention must pass the novelty test, among others. In this context, making a public disclosure (which generally means giving information to someone who has no obligation to keep that information confidential) may make an invention unpatentable, unless the conditions and timing of the disclosure are such that they fall within the grace period allowance in some countries, or under the loophole that exists as a result of certain treaties between the US and some countries. The loophole is that if a patent application has been filed in the US before public disclosure, and is then filed in such countries within a year of the US filing date, then the later application may still be patentable.

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  2. What can be done to protect patentability?

    It is possible to publish and exchange ideas without losing the chance of patenting an invention. In general, you should observe these guidelines:

    • File before publishing: If the publication date is later than the patent filing date, the invention is not considered prior art, and patentability is not affected.
    • Use Non-Disclosure Agreements: If you disclose information under a Non-Disclosure Agreement (NDA), the receiving party is obliged to keep the information confidential. It should be noted, however, that should the receiving party violate an NDA to make the invention public, the invention would be considered publicly disclosed as far as patentability is concerned, even though the disclosure may have been beyond your control.

    • Avoid revealing technical details: Disclosure will affect patentability if it is detailed enough to enable a person skilled in the field to reproduce the invention. You can protect patentability when communicating with a large audience (where signing individual NDAs is not practical) by not giving complete technical information about the invention.

    • Mark information as "Confidential": Although there is no guarantee that the receiving parties will keep the information confidential, this at least reminds them of their obligation.

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  3. What is a research notebook and why do I need one?

    A research notebook is simply a record of your research notes, probably with descriptions of your work in text and sketches, experiments and observations made etc. Keeping a research notebook is good practice in itself. It is also evidence of how and when an invention came into being if and when you need to prove this.

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  4. How to keep a research notebook for patent purposes?

    Most importantly, make sure that your notebook include dates, is presented so that a person with ordinary skill in the field would understand the entries, and is seen (or witnessed) by people who you trust and who understand the material. Here are more recommendations:

    • Use bound notebooks (not loose pages) and number pages.

    • Write with permanent ink. Cross out mistakes, write in corrections and correction dates in the margin and place your initials there. Draw a line through blank pages between entries and write "cancel". Initial and date them.

    • Use past tense when describing actions/experiments done. Differentiate them from ideas/proposals/suggestions.

    • Describe in detail how you propose to translate an idea into actual practice. If the proposed method does not work out in the end, the record will prove only the conception of a problem, not the conception of an invention.

    • Use abbreviations/terms consistently. Include a summary of their meanings in the notebook.

    • Sign and date each page of the notebook as it is completed. For pages on ideas/work that may lead to inventions, have them witnessed and dated as soon as possible by people who you trust (but are not co-inventors) and who can understand the work.

    • Keep the first samples of the products produced by an invention if possible. Attach to each sample a permanent label that is dated, signed and witnessed.

    • Attach photos of new experiments/apparatus. Have them signed and dated.

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  5. What is a patent?

    A patent is a set of rights that excludes anyone other than the patent owner from exploiting the patented invention (such as making, using or selling it) for a certain period of time (usually 20 years from the date of filing) in a certain country. When a patent expires, anyone is free to use the invention.

    To qualify for patent protection, an invention must satisfy certain requirements. A detailed description of the invention must also be made available for public inspection (usually within 18 months from the filing or priority date, though the US has certain allowance in this).

    The patent system was initially introduced to encourage the development and disclosure of new inventions, in exchange for exclusive use or income gained through licensing.

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  6. What is the difference between patents and copyright?

    Both are intellectual property rights, and their main differences are as follows:

      Patent Copyright
    Form of Protection Exclude unauthorized parties from exploiting an invention in a particular country for typically 20 years. Exclude unauthorized parties from exploiting a form of expression worldwide for typically 50 years.
    Type of Work Protected Inventions that meet certain requirements (novelty, non-obviousness, usefulness), eg., processes and devices. Forms of expression of ideas, eg., writings, software, choreography, drawings, photography, certain architecture, recordings. (Ideas themselves need not be new, and they are not protected.)
    Registration Requirement Inventors must pass an examination process before a patent will be issued by a patent office. Usually no registration is required, and the copyright of a piece of work is recognized as soon as it is created.

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  7. Who owns the rights to a patent?

    An individual owns what he/she invents, but if the individual is an employee, the employer may own the rights to the invention and the patent. An inventor may also transfer or assign the patent rights to anyone. See more on patent ownership at CityU.

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  8. What can be patented?

    An invention can be patented if it satisfies these requirements:

    • Patentable Subject Matter: Inventions involving activities that are illegal, against public policy or immoral are often unpatentable. So are products of nature not modified by human beings. Some examples of patentable inventions are processes (eg., diagnostic methods), machines (eg., circuit boards) and manufacture/composition of matter (eg., DNA probes). 


    • Novelty: An invention must be new to be patentable. It must not have been made available to the public, for example, through public use, printed publications or promotion brochures, to become part of what is referred to as the prior art or state of the art. Nonetheless, in a few countries (eg., the US, China and Japan), an invention is still considered novel within a certain time of public disclosure, usually subject to specific conditions.

    • Non-Obviousness or Inventive Step: To be patentable, an invention must be non-obvious (for the US) or involve an inventive step (for Europe and China); it must not be obvious to a person who has access to all the latest and highest levels of development of the field (referred to as the state of the art of the field) and who has the ordinary skills and knowledge in the field (referred to as being skilled in the art).

    • Utility or Industrial Applicability: An invention must have a use (for the US) or be applicable to a certain field (for Europe and China).

    A patent lawyer can help gauge the patentability of a particular invention in a particular country.

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  9. How does a patent protect an invention?

    A patent excludes anyone other than the patent owner from making, using or selling the invention. This is not to say that the owner would automatically have the right to make or use the invention, because the making of the invention itself may involve the use of other inventors' inventions which are protected by patents themselves. Permission to use these inventions may be needed.

    In most countries, a patented invention can be used for personal or non-commercial research purposes. In the US, however, the rules are more restrictive.

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  10. What is a priority right or priority claim?

    Under the Paris Convention, within one year of filing a patent application in one of the countries to the Convention, an applicant can file the same invention in any other country and claim the earlier filing date as the filing date for the later application.

    The priority right not only gives the applicant more time to prepare for the later application, but more significantly, it means that any publications made after the earlier filing date will not be considered prior art in the later application as far as the novelty test is concerned. The applicant is also free to disclose the invention before the actual filing date of the later application.

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  11. How to contact patent offices? Where to search for patents?

    A list of patent office websites can be found here.

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  12. Are there different kinds of patents?

    Some countries offer different types of patents. For example, the US has utility patents (for protecting processes, machines, articles of manufacture, composition of matter and any new and useful improvements), design patents (for protecting the ornamental rather than functional features of manufactured goods for 14 years) and plant patents (for protecting the asexually reproduction of certain new variety of plants for 20 years).

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  13. How are patents different across countries?

    Each country has its own set of patent laws which determine the way patents are protected and regulated there. Below are some of these differences:

    • "First-inventor-to-file" vs. "First-to-File": If two or more people file for the same invention, who should be granted the patent? Should it be the one who first came up with the invention, or the one who goes to file it first? In most countries, including the US, the answer is the person who filed first, even if someone else actually came up with the invention before this person did.
    • Grace Period: For an invention to be considered novel, it should not have been publicly disclosed before filing. Some countries take this requirement literally, while others provide for a grace period during which certain kinds of disclosures are allowed without affecting the novelty claim of the patent application. Examples of countries with grace periods: the US and Canada (one year), Japan (six months with conditions).

    • Provisional and Short-Term Patents: Available in the US and the UK, provisional patents are temporary patent applications with less formal filing requirements. Some countries offer short-term patents that are valid for less than 10 years.

    • Maintenance Fees: Whether one needs to pay to keep a patent valid, how much (usually increasingly expensive with time) and how often this is required is different across countries. Here are some examples:


        For Pending Patents For Granted Patents
      US None Due 3.5, 7.5 & 11.5 years after grant
      Europe Annual maintenance fee applies from third year of filing; first payment due around first anniversary of filing date Annual renewal fees due to each country involved
      UK None Annual renewal fee applies from fifth year; first payment due on the fourth anniversary of the filing date
      China Annual maintenance fee applies from third year of filing Annual renewal fee applies with six-month grace period
      PCT None Renewal fees due to each country


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  14. What is a European patent?

    A European patent refers to a patent granted by the European Patent Organisation (EPOrg), which is set up by the European Patent Convention (EPC). A European patent is not one patent to cover all European countries, but rather a bunch of national patents that are granted under the same examination system but enforceable each in its own country.

    The 38 members of the EPC are called contracting states, and these are different from the members of the European Union.

    The application process is as follows:

    1. The applicant files an application, designating which EPC countries he/she wishes to apply to.
    2. The European Patent Office (EPO) performs a novelty search, and examiners determine patentability accordingly.
    3. If the application is found to be patentable, a so-called European patent will be granted.
    4. Within nine months of the grant, if the European patent is found to be invalid, all national patents will be revoked.
    5. After nine months of the grant, any opposition to the European patent will be dealt with individually by the national patent offices. This also applies to issues on infringement.

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  15. What is an international or PCT patent?

    The Patent Cooperation Treaty (PCT) provides for a single process for patent application in multiple countries. However, a PCT application does not itself result in the grant of patent. The examination process is handled by the patent offices of individual countries. So too are patent infringement and enforcement issues. The PCT currently has 146 members or contracting states.

    The application process is as follows:

    1. The applicant files an application to the International Bureau of the World Intellectual Property Organization (WIPO), designating which PCT countries he/she wishes to apply to.
    2. One of the major patent offices performs a novelty search, and produces a search report.
    3. Based on the report, each national patent office concerned determines patentability according to that country's patent laws.


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  16. What is a short-term patent?

    Some countries offer patents that are valid for less than twenty years, often with less stringent patent application requirements and shorter processing time. Examples are Hong Kong (maximum term eight years) and Ireland (up to ten years).

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  17. What is a provisional patent?

    A provisional application is available in the US and the UK. It requires less formal disclosure in the Patent Application (eg., claims are not required), undergoes no examination process (and therefore costs less to file), and expires one year from its filing date.

    Before a provisional application expires, a complete (non-provisional) patent application can be filed, claiming the filing date of the provisional application (or claiming the benefit of the provisional application). This does not reduce the 20-year term of the ordinary patent. The filing date of the provisional application may also be used to claim priority right in patent applications in other countries.

    Inventors planning to claim the benefit of a provisional application when making a non-provisional application should make sure that they understand how the system works. For example, the subject matter claimed in the non-provisional application must be supported in the provisional application. Also, at least one of the inventors in the non-provisional application must be an inventor in the provisional application.

    Provisional applications are often filed to buy time:

    • To file before impending disclosure: If there is not enough time to prepare a formal patent application before an invention becomes unpatentable (eg., a public disclosure is pending, or nearing the end of the disclosure grace period), a provisional application may be filed first.

    • To buy time to decide whether to apply for a patent: Applying for a patent involves considerable time, effort and money. Filing a provisional application is a less daunting undertaking, giving inventors and potential licensees more time to find out whether applying for a patent is a worthwhile investment for the future products and market.

    • To buy time to find application funding: Some inventors try to find sponsorship for an ordinary patent application during this time.

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  18. Who can apply for a patent?

    In general, the inventors themselves can apply for the patent. However, if the inventors are employees, such as of a company or university, the employer may own the rights to the invention. In these cases, the employer may apply for the patent.

    Note that because the US patent system does not allow entities to apply for patents, employee inventors have to apply for US patents under their names but assign all patent rights to their employers in the Patent Application.

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  19. Which country to file in?

    First of all, different countries have different patent systems. Also, pursuing a patent costs considerable time, effort and money, and it makes sense to limit filing to the country or countries most appropriate for the invention concerned. The KTOcan help you with specifics, but here are some general factors you may like to consider, besides the differences in patent systems:

    • Degree of Disclosure: Has the invention already been made public? A published or otherwise disclosed invention may no longer be considered novel in countries with no grace period allowance.

    • Market Location: Where will the product be sold and marketed? Is a particular market big enough to justify filing costs?

    • Manufacturing Location: Where will it be manufactured?

    • Timing: Some countries may take longer than others to issue patents. Can the product afford to wait, or will it lose its edge to competitor products?

    • Degree of Protection: Is patent enforcement in a particular country adequate to protect the product from infringement?

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  20. What does a patent application process involve?

    Applying for a patent is a considerable task, even after funding issues have been sorted out. The KTO can help throughout the process, which involves these main steps:

    1. Perform novelty search: The research for prior art, to find out whether the invention has already been published or patented. If the invention is found to be unpublished as yet, the inventor still needs to know how existing inventions fail to address the same problem, or, if they do, how the ways they address the problem are different from his/her own. Many patent office websites provide online search tools.

    2. Prepare Patent Application: If the results of the novelty search suggest that the invention may be patentable, a Patent Application is prepared, usually with the help of a patent lawyer.

    3. File application: The patent lawyer files the application at the patent office of the country concerned. (For European patents or PCT patents, filing may be done at a patent office of any contracting state.) Filing in a foreign country may involve more than one patent lawyer, as some patent offices only accept applications from local patent lawyers or agencies. From the date of filing, the inventor may label a product using the invention with the words patent pending.

    4. Patent Office publishes application: Eighteen months from the date of filing, the Patent Application will be made available for public inspection, or published. Some countries (eg., the US) accommodate requests for early publication (usually to deter competitors) or nonpublication (for confidentiality in case the patent is not granted in the end).

    5. Examiner performs novelty search: Based on the Patent Application, the examiner will perform his/her own search.

    6. Examiner decides on patentability: If the examiner decides that the claims of an application satisfy the patentability requirements, a patent will be issued. However, it is not uncommon for the examiner to consider the invention inadequate in novelty or non-obviousness (or having an inventive step), and to reject the application or certain claims in the application by issuing an Office Action or Communication.

    7. Respond to examiner findings: The patent lawyer may modify the application to clarify the invention's uniqueness compared with prior art, and argue the case with the examiner. There may be several iterations of office actions and amendments. In the final iteration, if the examiner still decides against patentability, the inventor may decide to appeal the case, re-file the application, file a Continuation-In-Part application or abandon the application altogether.

    8. Patent Office issues a patent: If the examiner decides that the invention is patentable, a patent will be granted.

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  21. How long does a patent application process take?

    This depends on the country, the field of the invention, and the circumstances of the application, and can take several years. As a rough guide, the following are average timeframes suggested by patent offices themselves:

    • UK Patent Office: 2-3 years
    • US Patent and Trademark Office: 24.6 months

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  22. How much does it cost to file and keep a patent?

    Here are the most common kinds of costs involved, though not all are needed in every case:


    Fees to
    Patent Lawyers/Agents/Translators

    Fees to
    Patent Offices

    • Legal advice on patentability.
    • Translation fee, required in some countries (eg., Japan).
    • Patent search and prior art search.
    • Drafting and preparation of the Patent Application. Costs may depend on complexity of invention.
    • Filing by foreign patent agents for countries which only accept local applications.
    • Responding to examiner findings, which may involve several iterations of Patent Application amendments and/or explanations.
    • Filing fee, which varies across countries, and can depend on such factors as number of pages, number of claims etc.
    • Search fee, required in some countries.
    • Examination fee, required in some countries.
    • Issue fee, if a patent is granted.
    • Maintenance fees, payable annually or at set intervals. In some countries, this is required for pending patents too.


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  24. What is a Patent Application document?

    A Patent Application is a document with information about an invention and detailed descriptions of what the invention consists of. It is usually written by a patent lawyer based on drafts of the inventors, and submitted to the patent office to start the patent application process.

    Usually, eighteen months after its initial filing (or after its priority date), a patent application is published for public inspection. After its publication, a patent application may still undergo further revisions in response to the examiner's comments. As a result, the granted patent, which is also published, may be different still.

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  25. What does a Patent Application consist of?

    Apart from the identification numbers (patent number, filing number) and dates (grant date, filing date), a Patent Application consists of these main parts:

    • Title: A descriptive name of the invention.

    • Inventors and Assignees: The applicant may be the inventors or a person or entity who has the rights to the invention or patent. Applicants should make sure that all co-inventors have been included in the Patent Application, as amendments after filing may not be possible.

    • References: The list of patents and publications that the applicant has provided and the patent examiner has used to determine patentability of the application.

    • Abstract: A brief description of the invention is required in some countries such as the US.

    • Specifications: This is a textual description of the invention itself and of the process of how to make and use it. For details on how to prepare this section, see here.

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  26. How to write the Specifications and Claims in a Patent Application?

    The specification section is the part of the patent application that describes the invention itself and how to use it, and is usually written by the inventors with the help of patent lawyers. A typical specification consists of these aspects:

    1. Field and Background:
      This section includes the field where the invention is applicable, states the problem the invention claims to be able to solve (thus proving its usefulness), and shows how existing inventions (or prior art) fail to address the problem or how they address it differently.

    2. Detailed Description and Drawings:
      These instructions need to be detailed enough to enable a person with the ordinary skills and knowledge of the field to make and use the invention. Drawings are usually included to help describe the invention; they must conform to specific standards and the parts of each drawing need to be labelled and referenced.
      The level of detail required here is more demanding than that for a technical paper or a journal, and patent lawyers can help with the preparation of these sections. Care must also be taken to make sure that no essential information is omitted, because once the patent application is filed, no new information can be added anymore.

    3. Claims:
      The claims section is the part of the Patent Application that defines the invention by the breadth and depth of the territory it covers. For example, a set of over-simplified claims (for the sake of explanation) may read as follows:

      Claims:
      1. A device for extracting desired particles from a sample stream containing said particles.
      2. The device of claim 1 made by an X process.
      3. A device of claim 1 having a width between 10mm and 50mm.
      4. A method for extracting desired particles from a sample stream containing said particles.
      5. The method of claim 4 wherein said sample stream is Y.

      Claims can be independent or dependent claims. Independent claims (claims 1 and 4 in the example above) are definitions on their own, and dependent claims (claims 2, 3 and 5 in the example above) add specific details to the elements in the independent claims.
      The claims are the most important elements and the enforceable part of a patent, as they are the basis for defending a patent in infringement litigation. For example, if someone makes a product that has the same definition as an independent claim of a certain patent, the product is infringing on that claim. If an independent claim is determined to be invalid in court, then dependent claims (though narrower in scope than independent claims) can still continue to offer some protection to the patent owner.
      Claim language is a specialized legal language, and are usually written by patent lawyers based on information provided by the inventors. 

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