Preparing Patent Applications :
The first question a patent agent needs to have answered upon receiving a request to prepare a patent application is: how soon does this application need to be filed?
The World’s patent laws all have strict requirements regarding when an application must be filed with respect to various events. These events can range anywhere from the first date of attempted commercial exploitation, the first date of export, and the first date of public disclosure. The patent agent needs to know:
(1) Where does my client want to protect his invention?
(2) Has something already happened that would impair the client’s ability to protect the invention in the desired countries?
(3) How soon does the client intend to do something that would jeopardize his ability to protect the invention in the desired countries?
Even if the patent agent has no time obstacles in his way, he should endeavor to complete the patent application as quickly as possible, as would be expected of any professional. A third party might file an application on the client’s invention at any time, thus leaving the patent agent as the primary reason for his client not receiving a patent. Also, prior art might become available (e.g. an article might be published) that couldn’t have been used against the client’s application if the application had been filed earlier. However, the patent agent should know that his workload is typically driven by dates that are largely out of his control and he will frequently have to re-arrange his work schedule to accommodate unexpected time bar discoveries.
After filing the application, you create a file for the provisional patent application, containing a copy of everything you sent to the patent office including all the forms and copies of any checks for fee payment. The file also includes the original mail deposit receipt from the post office that has the date of deposit. Thus, if the patent office does not provide your patent application with the proper date of receipt, you have everything you will need to provide the proper filing date to the patent office – a date that is absolutely crucial in preserving your client’s rights to obtain patent protection. It is essential to note that one day late is too late.
Patent agents must strive to protect their client’s patent rights and sometimes protecting the applicant’s rights involves simply making sure that critical dates are observed. If the patent agent above had forgotten to ask about possible bar dates or had not pressed the engineer for precise information, the patent agent might have returned to his office and spent the next two weeks drafting a beautiful legal document for an invention that could no longer be patented.
Finally, the patent agent must try to understand early if the applicant wants to file in foreign countries. In countries that are Member States of the Paris Convention, applicants have one year to file their patent application abroad after the national filing date (or priority date). The filing of a PCT application also operates within the one-year time frame of the Paris Convention. The patent agent should docket the priority application’s filing date, and check with the applicant well ahead of the anniversary date. Even when the applicant has initially indicated no interest in foreign filing he may change his mind in a year. Also, remember that the patent agent does not need to wait a full year before filing. The patent agent should also determine if the applicant is interested in obtaining protection in a non-Paris Convention country before filing the priority application. If the applicant is interested in a non-Paris Convention country, the patent agent needs to understand that country’s specific priority rules. Non-Paris Convention countries can have very unique rules for inbound foreign applications. In some cases, the patent agent may even need to co-file the application in the non-Paris Convention country and in the inventor’s home country at the same time in order to ensure patentability.
A patent agent will likely not be allowed directly to represent his client before foreign patent offices. Foreign associate attorneys will represent the client abroad. There are several models for interacting with foreign associate attorneys. In the “hands off” model the foreign associate sends official correspondence and provides information on local rules but takes little substantive action in the case. The patent agent who filed the original priority application makes all the major decisions. In the “hands on” model the foreign associate drafts proposed responses to office actions and forwards them to the patent agent for approval. The patent agent may use different models for different foreign associate attorneys, e.g. “hands on” in some countries, and “hands off” in others.
Article 2.1 of the TRIPS Agreement requires its signatories who are not Paris Convention signatories to honor certain provisions of the Paris Convention such as the one-year period for claiming priority. As noted elsewhere, the patent agent needs to verify the actual practice and procedural requirements being followed in countries of interest to his client.