Patent Application Process

(1) Invention Disclosure

The process begins with the inventor(s) describing what they have invented to the patent agent. Usually, prior to a first discussion with the agent, the inventor will send us a description of the invention (including any diagrams, like flowcharts, graphs, and block diagrams, that can assist in explaining the invention). We routinely ask our inventors to fill out an Invention Disclosure Form (IDF) prior to this first discussion. An IDF will be provided to you after our contact.

Once we have received the IDF, we usually schedule an in-person meeting or teleconference to discuss the invention and whether we need further information before pursuing next steps.

(2) Prior Art Searching and Patentability Opinions

This is an optional stage. Once we have discussed the invention details with you, we begin searching for prior art (patent applications or issued patents) in international patent databases. We can also search in academic journals, and we routinely do an Internet search for prior art (particularly when we are dealing with more emerging technologies). Once we have found a list of relevant prior art, we prepare a patentability opinion. Our opinion compares the prior art found with your invention and determines what, if any, differences between the prior art and your invention are patentable.

Some clients will forgo this stage because they are confident that their invention is novel and not obvious (in the patentable sense) and that their invention has not been discovered by anyone else yet.

(3) Patent Application Drafting

At this stage, we are prepare a patent application for filing in one or more countries/regions. We use the IDF and our discussions as a basis for drafting the patent application.

A patent application will include claims that basically set out the scope of your invention. We try to draft these as broad as possible, but within reason given the prior art found. The process of us drafting the patent application is usually an iterative one. We send you a first draft, possibly with questions, and you provide us with your comments. There are often several back and forth drafts before we are all satisfied that the patent application describes and protects everything it needs to.

(4) Patent Filing – First Filed Application in US/Canada

After we have drafted the patent application, a decision must be made as to where to file first. Under the Paris Convention Treaty, a patentee has one year from the date of filing a first patent application in a Convention country to file in all other foreign jurisdictions. Most countries are signatory to the Paris Convention. The Paris Convention is important because it enables patentees to delay filing in other countries/regions for up to one year, which in turn defers those filing costs, and yet it enables the patentee to claim the benefit of that earlier filing date in those later-filed foreign jurisdictions.

(5) Patent Foreign Filings – PCT v. National/regional filings

Within a year of that first filing, a decision needs to be made as to where (which countries/regions) you wish to protect your invention. If you are interested in three (3) or more countries, it likely makes sense to file a Patent Cooperation Treaty (PCT) international application. This buys you up to 30 months to file further patent applications in the various countries/regions. This PCT application process is an excellent cost deferral strategy. Alternatively, within the Convention year, we can file patent applications in the various countries/regions in which you wish to seek patent protection.

One regional office that may be of interest is the European Patent Office (EPO). You can file a single European patent application, and then, once you have obtained a European patent, simply validate it in the various countries with the payment of a further fee in each country. The benefit is that rather than have your patent application examined by each European country’s respective patent office, you can have it examined once, and then validate in each country as a mere formality. There is a significant cost savings in doing so if you are interested in three (3) or more European countries.

(6) Prosecution phase

After you have filed a patent application, a patent is not automatically granted. The patent office in which you have filed your application will examine the application and determine whether it is patentable. They will search prior art and often cite the closest prior art they find against your patent application if they deem your claims to be broader than that closest prior art. It is common to have to respond to at least one office action from an examiner before getting a granted patent.

Please note that in Canada, a Request for Examination must be made within four (4) years of the filing date.

Once a patent has been granted by a patent office, issuance fees will be due. Most countries also require you to pay maintenance fees. Depending on the country, maintenance fees may be due every year after filing, or in intervals of years. They are typically on the order of a few hundred dollars each year.