Patenting an Invention

The process of patenting is a money and time-consuming process, highly regulated by national and international IP laws.

After the communication of invention to IRIS and receiving the positive decision of the legal representative of the R&D institution to which you are affiliated to or which resources (physical and financial) were used to develop the invention/technology, the patenting process starts with the hiring of an AOPI and drafting and deposit of an initial patent application in  Portugal.

Portugal IP laws states that a Portuguese Inventor must deposit its first application through INPI, under the penalty that, if he/she does not do so, the patent application may be denied once the patent application reaches Portugal, during the patenting process.

This first patent application may be done through three routes: national (INPI); European (EPO) or International – PCT (WIPO) 

                                                                                                      Figure 13. Patenting routes

 

The least expensive route is the national route. European and International routes may be selected only if there are written interest of a company, that is willing to support the patenting costs, or when there are is budget in public-funded projects to file or maintain patent applications.

National applications are made through INPI – Institute Nacional da Propriedade Industrial, Portugal.

In Portugal, you can apply directly to a Portuguese definitive patent application, submitted in Portuguese or  to a Provisional Patent Application (in Portuguese – Pedido Provisório de Patente). This PPA is often used to secure a priority date without the need to meet all the rigorous requirements of a definitive patent application. This PPA must be converted into a definitive patent application within 12 months of filing. Learn more at the INPI website.

The PPA is a tool that may be useful in certain, not always, circumstances. Each process should be analyzed separately in order to define the best route for protection and commercialization of a particular invention. In other words, a PPA is not a standard route and should only be used whenever  duly justified and proven to be the most suitable tool for that particular situation.

All top research institutions should be able to simultaneously manage their scientific publications and IP rights with socio-economic potential. Therefore, the need to submit a paper for publication or defending a MSc or PhD thesis, for example, should not represent an exceptional situation to file a PPA.

The PPA should be written in a comprehensive and detailed way to have a practical effect. The document submitted must show without doubt all the technical characteristics essential for the invention to have the desired technical effect. These technical characteristics will later be claimed in the definitive patent application. When converting a PPA to a definitive patent application, within a 12-month period, it is not possible to add new subject matter to the patent application under the penalty of having different priority dates for different claims. IRIS experience tell us that poorly written PPAs destroy any chances of getting a strong definitive patent application, which greatly decreases the probability of valorization.

The 12 month period until conversion, is important in some cases for IRIS and inventors to show case non-confidential information about the technology in the several marketing channels that we have at our disposal and further determine if the invention/technology has commercial relevance, decide on a territorial extension and find companies interested in exploiting the technology (although market players often prefer definitive patent applications or an international patent application).

Patent applications remain confidential for 18 months after filling.

 

Portuguese Provisional Patent Applications, if not converted after 12-months of filling into a definitive patent request, will never be published by the Patent Offices. Hence, Provisional Patent Applications do not constitute a scientific indicator since no one will be able to find these applications in patent databases.

The European patent application can also be submitted trough INPI or directly at EPO claiming a Portuguese priority. Following the European Convention, one patent application safeguards the priority date of your application in the territories that belong to the EPC (38 countries). Such patent application is examined by the European Patent Office and if granted it is in force for all such EPC members. Nonetheless, since there is need to pay renewal fee in all the countries, after issued, it is common that the European Patent is validated only in a subset of these 38 countries.

The international patent application can be submitted through INPI or directly at WIPO claiming a Portuguese priority. Following the Patent Cooperative treaty (PCT), one patent application aims to facilitate the procedures for protecting inventions in multiple territories in a cost-effective and informative way (153 PCT member states). The PCT application will be analyzed in terms of requisites for patentability and the applicants receive the International Search Report (ISR). The ISR is very valuable in terms of tech transfer, since the positive or negative opinion of the international agency that performed the state of the art search (usually the EPO) already gives important hints about the probability of success of the patent application. Companies enjoy having this preliminary opinion on the patent application.

At the end of the international phase, (30 months from the first patent application) the international patent application must be converted into a bundle of national and regional patent applications which are then examined by national or regional patent offices. The decision of which territories to enter with the patent application is highly dependent on the market trends and segmentation. Hence it is important that at this tage, there is already a company interested in licensing-in the technology or co-developing it with the R&D Institution.

 

A PCT application will never be granted or examined and thus, there is no such thing as a world patent or international patent.

Most common strategy followed at IRIS for highly relevant technologies

At IRIS we prefer to follow the national route followed by the International route (Figure 14), since this strategy allows to postpone the selection of the countries as well as delay the higher costs with patenting by 30 months, allowing to secure a priority date while searching for commercial partners.

The National Application may be through use of a PPA (in English) or through a definitive patent application (in Portuguese). Nonetheless, the patent document will always be written with the full formality obligations of a definitive patent request, meaning that it will contain claims, so that the examiner will know the scope of protection that the applicant is applying for and produce a Search Report tailored to the invention disclosed.

Scientific publication during the 12-month period of a PPA is strongly discouraged, although possible, since the priority date is secured. Since the PPA is not definitive, any new technical material that is included in the scientific paper may compromise the novelty or inventive step of the definitive patent application. Additionally, one of the greatest advantages of the PPA is to have a first examination to check if the invention is considered novel and inventive. Sometimes PPA’s are withdrawn and filed again with more data that will strengthen the patent application. If you publish immediately after the PPA filing, there is no more options to improve the patent document.

                                                                           Figure14: National route followed by the International route.

Entry in national and regional phases is a highly pondered decision due to the costs that it entails: applying for a patent in Europe, and US may cost up to 3500 € each. Countries like Japan or China, due to the mandatory translation may cost up to 6000 €. Additionally, as soon as the patent application enters national and regional stages, annual renewal fees are due per country. This is the stage when the patent application will be examined by the countries’ IP offices. Each notification may cost up to 1500 €, considering official fees and attorney’s fees. Such stage may amount to a total of 50,000 € expenditure until the patent is granted and lapsed, depending on the number of countries where the patent request has been filled. Without feedback from industry, to indicate the appropriate territories where to file, according with their business model and funds, and/or budget on public-funded projects, internal policies dictate to withdraw the patent application and place the invention/technology in public domain.

Last updated in: 28/02/2021

Knowledge Valorization @ IRIS by IRIS is licensed under CC BY-NC-ND 4.0