You’ve devised a new invention, read our article about who can help you to patent it and, just when you thought you could relax and forget about patents for a while, your patent attorney sends you emails with lots of mysterious words in them! There’s a lot of legal jargon to wrap your head around. We feel your pain – we have to learn all that jargon too when going through the qualification process!
In this three-part glossary, we lead you through some of the key terminology you may come across when you’re going through the patent process.
In part 1 of this glossary, we explained the patent basics, the contents of a patent application, and where you can file patent applications.
In this second part of the glossary, we discuss the key terms that you’ll see when you file a patent application.
Patent application dates and deadlines
When a new patent application is filed, your patent attorney will send you a “filing report”, this will usually contain a few dates and some official patent office numbers. We take you through these in this section.
Filing date = The filing date is the date on which a patent application is filed with a Patent Office. The filing date also determines when the patent protection you eventually obtain for the invention described in the patent application (once the patent is granted) will expire. The patent term is 20 years from the filing date in most countries. The filing date also determines when renewal fees need to be paid in order to keep the patent in force once it is granted (and in some cases, to keep the patent application pending).
Priority deadline = The priority deadline is the deadline by which you can file any further patent applications for the same invention, and link the further applications back to the first application.
The thinking behind the idea of priority is as follows: if somebody devises an invention worthy of a patent in some country at a certain point in time, then they should, in the interest of fairness, be able to obtain patent protection for the same invention in another country at a later point in time. For example, a person may choose to file a first application for a patent in the UK in January. In order to impress potential customers, they choose to exhibit the invention at a conference in February. As a result of successfully securing customers in the USA, as well as revenue, the same person chooses to file an application for a US patent in November. In the absence of priority or priority rights, the invention in the US patent application would not be patentable. This is because the applicant exhibited the invention at a conference in February earlier that year, consequently destroying the novelty of the invention.
However, fortunately for the applicant, the UK patent application gives rise to a priority right. The applicant may claim priority from the UK patent application when making the US patent application. In this case, the US patent application has a priority date which is the same as the filing date of the earlier UK application. Crucially, the priority date is the cornerstone of assessing the patentability of inventions. The priority date defines what is considered new and feeds into what inventions are considered inventive. Therefore, in this example, the exhibition of the invention at the February conference cannot be cited against the US patent application.
For this reason, when you file the first patent application for an invention, your patent attorney’s filing report will include the priority deadline. The priority deadline is 12 months from the filing date of the first patent application for an invention. So, if you file the first application in the UK on 15 January 2024, the priority deadline will be 15 January 2025. This deadline is sometimes referred to as the “Convention deadline”, this is because the right to claim priority is enshrined by the Paris Convention treaty, which dates back to 1883!
Priority date = this is the date on which the first patent application for an invention was filed, and is used to assess the patentability of the invention described in the application. If an application does not claim priority from an earlier application, the filing date will become that application’s priority date.
An application can claim priority from multiple earlier patent applications. However, it is the earliest priority date which is used to assess patentability, and which triggers other important stages such as the publication date, the priority deadline, and the national phase deadline.
Publication date = this is the date on which a patent application will publish and enter the public domain. Until this point, the patent application will remain secret and only known to you, your patent attorney and the patent office. Patent applications are published 18 months from their earliest priority date.
One of the conditions for obtaining a granted patent is that you need to describe how your invention works in your patent application. That is, in return for being granted a monopoly right to stop others from using your invention without your permission, you need to disclose how the invention works. Publication is therefore an integral part of the patent process. Nevertheless, it is important to be aware of this requirement, as patenting your invention means that you have to “give away” how it works. However, for most inventions the benefits of patent protection outweigh the drawbacks of publishing how the invention works, especially for inventions that can easily be reverse-engineered or are likely to be developed independently by a competitor.
While you cannot enforce a patent until it is granted, publication of a patent application gives you some rights in many jurisdictions. For example, in the UK, you will be able to bring proceedings for any acts occurring between publication and grant that would eventually infringe the patent. More information is provided in this article.
Compliance period or deadline = this is the deadline by which a UK patent application must be in order for grant. If you file a UK patent application, your patent attorney’s filing report may mention the compliance period.
While the process to obtain a granted patent usually takes several years, UK law says the process needs to be completed by the end of the compliance period. Either the application must be granted or nearly ready to grant by this point, or the application must have been refused by this point. In other words, UK patent law prevents the patent process from dragging on for many years.
The compliance period is defined in the UK Patents Act as the later of: (i) four years and six months from the earliest priority date or if no priority is claimed, from the filing date, or (ii) twelve months from the date of the first substantive examination report.
There are some other countries which have a similar deadline, such as Australia. More information about how the compliance period is calculated for certain types of UK applications can be found here.
National phase deadline = this is the deadline by which a PCT application must be converted into national or regional patent applications in jurisdictions of commercial interest. The national phase deadline is calculated from the earliest priority date of a PCT application. The national phase deadline is generally 30 months from the earliest priority date, though some jurisdictions permit the national phase application to be filed 31 months from the earliest priority date. Some jurisdictions which use the 30 month deadline include the USA, Canada, China and Japan. Some jurisdictions which use the 31 month deadline include the UK, Europe, Australia, South Korea and India.
