Protecting Your IP - Medical Device Design: Innovation from Concept to Market - page 301

domain (that is, a member of the public can access it from somewhere). It is prior art that will
be the downfall of your patent if you do not conduct a proper prior art search and if you do
not keep your work confidential before filing.
The critical reason for hiring a patent attorney is the development of the claims. It is the
claims that carry the patent forward. The claims must be written by someone who knows
what they are doing - to do so without this detailed knowledge is akin to performing an
appendectomy on one's wife because one has watched the whole second series of Scrubs .
Once developed the patent agent will file your patent with the relevant office. You will receive
a notification of filing and from that date on you can undertake any number of public domain
events without the fear of IP theft. However, the patent application is kept secret for at least
1 year (often 18 months) - so you may wish to use this time to perfect your launch while
keeping your “powder dry.” During this period your device is “patent pending”: you should
use this 12-month window to look at any innovations you have incorporated since filing as
you are able to modify the patent application (within reason) during this period.
13.2.1.2 Examination
At some point, when the backlog of applications has departed, your patent application will
come to the top of the list. At this point a patent examiner will examine your application.
Their job is to make sure your claims are new. This is where your stated prior art comes in;
if you have done your job correctly then the patent examiner will not find any other prior art
than the ones you have already cited. Because you have cited them you will have already
stated what is new.
It is highly unlikely that an examiner will not produce some prior art in their examination.
They will contest one or more of your claims, and your application will be rejected at the
first examination. This is not the end - it is a part of the process. You will need to produce
arguments as to why your claims are valid or, with your patent attorney, produce different
claims which avoid any conflict. The patent attorney would then return this new, modified,
reasoned application to the examiner. Hopefully they will see sense and grant your patent. If
not another rejection may come your way. At some point the examiner will state that enough
is enough and a response is not welcome; this is the end of the road for your patent and you
have been unsuccessful. However, the more pleasant outcome is that the examiner states
enough is enough, and they now agree that you have a new invention worthy of patenting and
your patent is granted. You receive a lovely certificate (called a letters patent ) stating that you,
as the applicant, are the proud owner of a patent.
Figure 13.2 illustrates the first page of a granted patent - in this case for an orthopedics device.
It reveals a great deal of information. Not only do you know the inventors, but you also know
who the applicant is. The “also published as” list demonstrates that this has a USA filing, a
Japan filing, an Australia filing, and the EP in the title suggests it is being filed in the EC.