I have designed an invention but what to do next, or a short guide on how to obtain a patent

Step 1 – Knowledge

1. Definition

Every one of us has heard of an invention and patent but what do these words mean precisely?

An invention is a new and unique solution that is based on an idea, creative thought, intellectual effort and knowledge, or inventor's own work. You can obtain patent protection for your invention.

A patent, on the other hand, is a right of exclusive use of an invention for a limited time for financial (industrial, commercial) gain in the territory of a given country or countries, which is granted by a competent national, regional, or international body.

What are the benefits of patent protection for an invention?

The modern economy cannot develop without innovation, hence research and development (R&D) play an important role. Therefore, appropriate protection of inventions is one of the factors that ensure an advantage on the market and, as a result, tangible economic benefits.

Patent protection for your invention may ensure:

- strong competitive advantage on the market,

- higher income or return on investment,

- access to new markets,

- increased certainty of turnover,

- possibility of obtaining grants or increasing funds,

- a strong tool to take action against infringers,

- prestige, positive image of the company as an innovator,

- know-how protection.

2. Regulations

Who issues a patent?

Patents are granted by a competent body through a national, regional, or international procedure.

National procedure – an application is filed with the Patent Office of the country concerned. For Poland:

PPO (Patent Office of the Republic of Poland) - www.uprp.pl

Regional procedure – an application is filed with Regional Patent Offices.

EPO (European Patent Office) -  https://www.epo.org

EAPO (Euroasian Patent Organization) - https://www.eapo.org

International procedure – an application is filed with the International Patent Office under the Patent Cooperation Treaty:

WIPO (World Intellectual Property Organization) - https://www.wipo.int

National, regional, or international procedure – which one is best?

A procedure should be selected based on how many countries or in what area we would like to file an application for an invention. It also depends on the type and discipline of a given invention. If an invention may be used only in a local market or in a narrow specialisation present in several countries, there is no need to apply for a wide range of protection. However, if an invention has a global potential, the widest possible international protection should be considered. If an application for an invention is filed in several countries, it is more preferable to apply a national procedure. An application for an invention in Europe or Eurasia requires a regional procedure, but in many countries an international procedure is required instead.

Regardless of the procedure applied, the applicant has the right to file an application for the same invention in other countries or regions within 12 months of the date of filing the first application. The right of priority applies to all countries except the USA.

Important information:

You can address the Patent Office in person or via a representative, i.e. a Patent Attorney (Patent law firm). Regardless of the method, first of all you should familiarize yourself with regulations and procedures for obtaining a patent. In Poland, innovation is governed by the Act of 30 June 2000 - Industrial Property Law (Journal of Laws of 2017, item 776, of 2018, item 2302). All necessary information is available on the Patent Office of the Republic of Poland website at www.uprp.pl.

Before filing an application, you cannot:

- publish invention-related information (articles, scientific papers etc.),

- discuss about the commercialisation of your invention,

- place products containing your invention on the market.

3. Patent document

Example 1: National patent - Poland

(11) - publication/patent number

(12) - document name

(13) – publication type

(19) – Patent Office – national/regional/international

(21) – application number

(22) – date of filing

(43) – date of publication of application

(45) – date of publication and mention of the grant of the patent

(51) – international classification

(54) – invention title

(57) – summary of patent description + drawing

(72) – inventors

(73) – proprietor

(74) - representative

Example 2: European patent - EPO

(11) – patent (application) number, the letters at the beginning indicate the country that granted the patent e.g.: EP – European countries, WO – international procedure, PL – Poland, US – United States of America

(12) - document name

(19) – Patent Office – national/regional/international

(21) – application number

(22) – date of filing

(30) – earliest application

(43) – date of publication of application

(45) – date of publication and mention of the grant of the patent

(51) – international classification

(54) – invention title

(72) – inventors

(73) – proprietor

(74) - representative

Step 2 – Patent search

Before an application for an invention is filed, a patent search must be carried out. In other words, you should verify whether our idea is a new and unique solution. The patent search is based on patent and non-patent literature (e.g. Patent Office bulletins, databases, patent websites, books, scientific and technical journals).

If the services of a Patent Attorney are used, the patent search is carried out by them.  

Examples of database search engines:

https://grab.uprp.pl/PrzedmiotyChronione/Strony%20witryny/Wyszukiwanie%20proste.aspx

https://patentscope.wipo.int/search/en/search.jsf

https://www.epo.org/searching-for-patents/technical/espacenet.html#tab-1

If the patent search reveals that the idea is a new solution, patent documentation may be prepared.

Step 3 – Preparing patent documentation

Preparing patent documentation properly is the most important part of the entire invention application process. The patent documentation content will determine the efficiency of verification by the Patent Office.

The description of an invention must include the following:

- title,

- determination of a technical field,

- description of prior art,

- description of an invention that reveals the essence of the new solution,

- indication of benefits of an invention,

- description of drawing figures,

- description of an example of use,

- claims,

- summary.

1. Title

The title of the invention should clearly indicate the subject of the invention. Simultaneously, it should be concise and indicate the field of use. A correct title is very important for the further preparation of the invention description and patent claims. 

Example 1 (Patent No. PL 217462 – Longwall shearer, preferably for short and undulating longwalls):

"Mining longwall shearer, preferably for short and undulating longwalls"

2. Technical field

This description part should specify to which field of technology the invention relates.

Example 1 (Patent No. PL 217462 – Longwall shearer, preferably for short and undulating longwalls):

"The subject of the invention is a longwall shearer with a hydraulic or electric drive, intended for operation in short and undulating longwalls."

3. Description of prior art

This description part should include information about known solutions similar to the subject of the invention, e.g. patents or scientific literature should be cited.

Example 1 (Patent No. PL 217462 – Longwall shearer, preferably for short and undulating longwalls):

"There are known solutions for longwall shearers with an electric or hydraulic drive, which include at least two bodies a and b (see Pos. 1) connected to each other separably, both ends of which have articulated joints c for mounting arms d with cutting drums. Between the articulated joints there are components e and f that transfer power to wheels g engaging with a conveyor ladder and an electric equipment block h."

"Polish patent specification No. 186603 mentions a power supply and control unit, which has two separate and interconnected bodies, in which a hydraulic unit and an electrical equipment unit, the latter being separate, are located. To the wall of the body, in which the hydraulic unit is located from the outside, a gear is mounted, whereas the final part of this body has an oil tank, into which a block with oil drain filters is inserted. The block tightly closes the part of the body that forms the oil tank, whereas the rear wall of the block in the upper part is open and overflows the oil flowing through the filters into the main tank chamber. On the front side, the body in which the hydraulic unit is located is closed with covers, on which oil discharge filters, pressure gauges, oil contamination indicators, and a gear oil level indicator are mounted. The main shaft of the gear is connected by a driving engine through an elastic coupling, which is fastened between two parallel walls in the body. The main and auxiliary pumps in the hydraulic unit are mounted to the body through adapter sleeves, in which couplings are also located. The gear is located in the housing, which is connected to the body wall separably. The surface of the gear housing has channels, through which the cooling medium of gear oil flows.

1. Description of an invention that reveals the essence of the new solution

This description part should reveal the essence of the invention. The description of the technical solution must be clearly understandable to the extent that it can be implemented.

Example 1 (Patent No. PL 217462 – Longwall shearer, preferably for short and undulating longwalls):

"The longwall shearer according to the invention, preferably for short and undulating longwalls, has a single body, the lower part of which has left transmission unit components and/or right transmission unit components. In the upper part of the body, at its ends, over the transmission unit components, there are articulated joint eyes for mounting ranging arms. An electrical equipment block is installed in the upper part of the body between articulated joint eyes or in the lower part of the body near left transmission unit components and/or right transmission unit components. There is a separate hydraulic chamber in the upper part of the body between articulated joint eyes. The upper surface of the articulated joint eyes is lowered in relation to the shearer height, and above it there are hydraulic cylinders for raising hydraulic covers, whereas these cylinders and covers are mounted in holders of the cylinders and holders of covers fixed to a stiffening sheet respectively. The articulated joint eyes are connected by the stiffening sheet to fastening eyes mounted thereto from the sidewall side. Hydraulic cylinders are connected to ranging arms through these fastening eyes. In the lower part of the body, between the eyes for fastening sidewall supports, there is an additional hydraulic chamber that forms an oil tank for the hydraulic system for controlling ranging arms and hydraulic covers."

2. Indication of benefits of the invention

The next part of the description covers the indication of possible benefits.

Example 1 (Patent No. PL 217462 – Longwall shearer, preferably for short and undulating longwalls):

"The solution according to the invention has fully met the expected objectives. The design of the body allowed for the entire shearer length to be reduced considerably; therefore, the shearer has become more universal and is suitable for operation in short longwalls and seams with high undulation. The design of the shearer, in which the main units, parts, and equipment fill the shearer body space almost entirely, makes it very compact and stable."

3. Description of drawing figures

If the invention is illustrated by a drawing, this part should include what individual drawing figures represent.

Example 1 (Patent No. PL 217462 – Longwall shearer, preferably for short and undulating longwalls):

"The subject of the invention is presented in an embodiment shown in the drawing, in which:

- Fig. 1 presents the shearer according to the invention in a perspective view from the caving side,

- Fig. 2 presents the shearer according to the invention in a perspective view from the sidewall side.

The longwall shearer according to the invention, preferably for short and undulating longwalls, has a single body 1, the lower part of which has left transmission unit components 2 and/or right transmission unit components 3. In the upper part of the body 1, at its ends, over the transmission unit components 2 and/or 3, there are articulated joint eyes 4 for mounting ranging arms 5. An electrical equipment block 6 is installed in the upper part of the body 1 between articulated joint eyes 4 or in the lower part of the body 1 near left transmission unit components 2 and/or right transmission unit components 3. There is a separate hydraulic chamber 7 in the upper part of the body 1 between articulated joint eyes 4. The upper surface of the articulated joint eyes 4 is lowered in relation to the shearer height, and above it there are hydraulic cylinders 8 for raising hydraulic covers 9, whereas these cylinders and covers are mounted in holders of the cylinders 10 and holders of covers 11 fixed to a stiffening sheet 12 respectively. The articulated joint eyes 4 are connected by the stiffening sheet 12 to fastening eyes 13 mounted thereto from the sidewall side. Hydraulic cylinders 14 are connected to ranging arms 5 through these fastening eyes. In the lower part of the body 1, between the eyes 15 for fastening sidewall supports 16, there is an additional hydraulic chamber 17 that forms an oil tank for the hydraulic system for controlling ranging arms 5 and hydraulic covers 9."

List of designations in the drawing

1. single body
2. left transmission unit components
3. right transmission unit components
4. eyes of the articulated joint
5. ranging arm
6. electrical equipment block
7. hydraulic chamber
8. hydraulic cylinder for covers 9
9. hydraulic covers
10. holder of cylinder 8
11. holder of hydraulic covers 9
12. stiffening sheet
13. fastening eyes
14. hydraulic cylinder for arm 5
15. eyes for support 16
16. sidewall support
17. additional hydraulic chamber

1. Description of an example of use

Where it is not clear from the description of the invention where the invention can be applied, at least one example of the possible application should be given.

Example 1 (Patent No. PL 217462 – Longwall shearer, preferably for short and undulating longwalls):

"The subject of the invention is a longwall shearer with a hydraulic or electric drive, intended for operation in short and undulating longwalls."

Example 2 (Patent No. PL 214479 – Two-stage pressure relief valve):

"A two-stage pressure relief valve is used in support systems of powered roof supports, especially to protect hydraulic supports against a sudden increase in pressure caused by dynamic loads of the rock mass."

2. Claims

This is the most important part of the invention description. It specifies the features that are subject to the requested protection.

Example 1 (Patent No. PL 217462)

"1. A longwall shearer, preferably for short and undulating longwalls, equipped with at least one arm having a cutting drum, at least one transmission unit and an electrical equipment block, characterised in that it has a single body (1), the lower part of which includes left transmission unit components (2) and/or right transmission unit components (3) and the upper part of which, at its ends, over transmission unit components (2) and/or (3), includes eyes (4) of articulated joints for mounting ranging arms (5), whereas the electrical equipment block (6) is installed in the upper part of the body (1) between the eyes (4) of the articulated joints or in the lower part of the body (1) near left transmission unit components (2) and/or right transmission unit components (3).

2. The longwall shearer according to claim 1, characterised in that there is a separate hydraulic chamber (7) in the upper part of the body (1) between the eyes (4) of the articulated joints.
3. The longwall shearer according to claim 1, characterised in that the upper surface of the articulated joint eyes (4) is lowered in relation to the shearer height, and above it there are hydraulic cylinders (8) for raising hydraulic covers (9), whereas these cylinders and covers are mounted in holders of the cylinders (10) and holders of covers (11) fixed to a stiffening sheet (12) respectively.
4. The longwall shearer according to claim 1, characterised in that the articulated joint eyes (4) are connected by the stiffening sheet (12) to fastening eyes (13) mounted thereto from the sidewall side. Hydraulic cylinders (14) are connected to ranging arms (5) through these fastening eyes.
5. The longwall shearer according to claim 1, characterised in that the lower part of the body (1), between the eyes (15) for fastening sidewall supports (16), there is an additional hydraulic chamber (17) that forms an oil tank for the hydraulic system for controlling ranging arms (5) and hydraulic covers (9)."

Step 4 – Filing an application for an invention with the Patent Office

Once the patent documentation is prepared, you can move to the next step: filing an application for the invention with the Patent Office. To do so, further formal and legal documents available on the official websites of Patent Offices must be prepared. They are most often applications/forms. Information to be submitted includes:

- name of the applicant and contact data,

- data of the representative, if applicable,

- invention title,

- various types of statements,

- name(s) of the inventor(s),

- address for correspondence,

- list of enclosed documents (patent documentation, powers of attorney, proof

  of payment etc.).

Applications may be filed in original (paper) or electronic form.

Before filing the application, you should pay a fee; in the Polish Patent Office, the basic application fee is PLN 550. Fees vary depending on the application path and the Patent Office.

Important:

It is not necessary to file a worldwide application for an invention right away. Filing an application in one country is sufficient. Then the applicant has 12 months to file applications in other countries or regions by right of priority.

Step 5 – Application verification process, publication

In the first place, the Patent Office verifies the correctness of the application. In case of irregularities, the applicant is asked to supplement/make corrections to the application within the imposed deadline. Once the application is verified successfully, the Patent Office carries out a patentability search.  Within 18 months of the priority date for obtaining an invention patent, the Office publishes the application in a patent bulletin. The applicant may request that the application be published at an earlier date, which expedites the process of making a decision by the Patent Office. During the patentability search, the Office may request the applicant to provide explanations or additional documents, drawings, or to make corrections.

Step 6 – Conclusion

Verifying an application and conducting a patent search are time-consuming. Depending on the complexity of the submitted invention, they usually take a few years to be completed. Finally, the Patent Office makes a decision on:

- granting a patent,

- refusing to grant a patent,

- termination of proceedings.

If the decision on granting a patent is positive, it is necessary to pay a fee for the first protection year. Once it is paid, the protection right is granted.

Note:

The protection right period for a patent is a maximum of 20 years if fees for each protection year are paid.

Sources:

1. Act of 30 June 2000 - Industrial Property Law (Journal of Laws of 2017, item 776, of 2018, item 2302), as amended
2. Publications and information of the Patent Office are available at: www.uprp.pl