Patent Filing Process

Patentability

There are a number of different criteria which an invention must satisfy in order to found to be patentable.  These include the following:

  1. Must have patentable subject matter;
  2. Must have utility; and
  3. Must be novel/unobvious.

The novelty of an invention is set out in one or more “claims” which form the core of every patent application.  Claims specifically point out and define the scope of the invention.  In drafting a patent application the general goal is to claim as broadly as possible without overlapping previously known inventions or ideas, while at the same time fully describing the essence of the invention.  Prior art is the yardstick against which the Patent Office measures the novelty of an invention.  In addition to published patents, prior art can be any printed information in books, articles, brochures, as well as general knowledge that was made public before the date of filing of the patent application.  Such prior art can render a patent application unpatentable for lack of novelty, or on the basis that the invention is obvious.  In terms of a lack of novelty, there are two key terms used to further refer to the status of an invention vis-à-vis the prior art.  These are “anticipation” and “obviousness”.  “Anticipation” occurs when the elements of a certain claim in a patent or patent application are all described in a single prior art reference – a “dead ringer” reference if you will.  In contrast to novelty, obviousness renders an invention unpatentable if the invention can be said to be obvious by combining one or more prior art references.

In contrast to anticipation, obviousness renders an invention unpatentable if the invention can be said to be obvious by combining more than one prior art references.  The question is whether at the date a patent application is filed an unimaginative skilled technician, in light of general knowledge and the prior art available to the technician at that date, would be led directly and without difficulty to the invention.  There is a four-factor test to showing obviousness:

  1. identify who the “person skilled in the art” is, and identify that person’s common general knowledge;
  1. determine the inventive concept of the claim in question;
  1. identify the differences, if any, that exist between matters forming the “state of the art” and the inventive concept of the claim; and
  1. consider whether the differences would have been obvious to the person skilled in the art or whether they require a degree of inventiveness.

The invention is obvious if no degree of inventiveness is required.  There may also be a question as to whether an invention was “obvious to try”.  For a finding that an invention was “obvious to try”, someone must convince a judge or the Examiner that, on a balance of probabilities, it was more or less self-evident to try to obtain the invention.  This is a high standard to meet, since mere possibility that something might turn up is not enough.

In terms of chronological relevance, there are a couple of key dates and concepts to understand as well in terms of the scope and applicability of various prior art references uncovered in the search. Generally speaking the date at which relevance of a prior art reference is determined is the date of filing of your own patent application. Any patent references or other prior art references which are created or published in advance of your filing date are strictly speaking relevant in the perspective of an assessment of novelty and patentability. Items that are created or published after your filing date strictly speaking and generally will not be relevant.

Patentability2

Patent searching

An inventor may wish to obtain an assessment of the patentability of their invention prior to incurring the additional drafting and filing expenses discussed herein.  Patents from all countries are relevant to the patentability of an idea in Canada (and elsewhere) and while a search of Canadian and U.S. patents is not exhaustive, it typically does provide a good idea of the state of the prior art as it relates to the proposed invention at a reasonable expense.  In addition this search can locate and provide copies of prior art which is required for the drafting of the patent application.  Patents and patent applications which are disclosed by their inventors in turn provide a great deal of useful technical information to those interested in searching patents for such information.

There are numerous advantages to doing a comprehensive patentability search before proceeding to draft and file a patent application.  These include the ability to fine‑tune your own patent application based on problematic pieces of prior art revealed in the search to avoid Patent Office rejections based on those at a later date.

General process

A patent application in its entirety needs to describe the invention in sufficient detail to be understood by a person with ordinary skill in the technical field to which the invention relates (this fictitious person is nominally referred to as a ‘person skilled in the art’).  The claims define the scope of your patent.  The remainder of the document needs to substantiate the scope and contents of the claims – anything which is claimed but not explained or enabled in the remainder of the patent application is not covered by the claims.  It is the claims of your patent which are interpreted by a court in any infringement action.

In most countries, the first person to file a patent application for a particular idea is the individual entitled to patent protection, versus the first to invent.

Examination of application

Once a patent application is filed, it will be examined by the Patent Office in each jurisdiction in which it has been filed.  In Canada it is necessary to specifically request the commencement of examination of the application, which can be done at any time up for up to five years after the date of filing of the application.  It is important to recognize that patent applications are not simply approved as filed – at issue is the grant of an important monopoly right which can be legally enforced against others to exclude them from making, using or selling the patented invention.  Applications are therefore subject to careful scrutiny by the Patent Office, who may reject an application on numerous grounds.

Examiners in each Patent Office will review the claims and disclosure to ensure that claim is only made to subject matter to which you are entitled, and that various formalities are met.  Additionally, the Examiner assigned to the case, who will be a person skilled in the technical field of the invention, will conduct a search of patent and non-patent literature to see what if anything similar has been done previously in the field.  It is entirely possible that the Examiner will then object to the contents of the claims or the patent application on the basis that the invention is not sufficiently different from the prior art to be entitled to patent protection.  Exchanges between an applicant/agent and the Patent Office will occur at this stage, the applicant/agent making arguments and effecting changes or amendments as necessary to satisfy the Patent Office.  If the Patent Office should reject some or all of your application, there are usually avenues of appeal available as well.  You should work closely with your lawyer or agent in the drafting and review of your patent application, as only you really know just what the scope of your idea is and what it includes.

In some countries, the substantive examination of the patent application will be conducted automatically by the patent office in question in due course.  In other countries, it is necessary to pay additional fees and to initiate a request for the commencement of substantive examination of a patent application before the document will be examined by a Examiner in the patent office in question.  In the United States for example, examination of patent applications will take place in sequence automatically following the filing of the application.

In Canada it is necessary to request the commencement of examination of the patent application before the Canadian Intellectual Property Office and to pay an additional fee for that to take place.  The request for examination before the Canadian office can be deferred for up to five years from the date of filing of the patent application.  Practically speaking with this means is that an applicant can, once they get their application on file, simply let their application lie for a while while they get back to concentrating on the other commercial aspects of their project.  Other commercial reasons why examination might be deferred may be to further deferred the incurrence of additional significant costs in the examination process, or to stretch out to the greatest degree possible the length of the “patent pending ” period if it is anticipated that there will be difficulties in obtaining an allowance of the patent application.

Confidentiality period

In Canada, the United States and most other countries, there is an 18 month confidentiality timeframe following the filing of a first patent application, within which the contents of the patent application will not be available to the public.  As such, following the filing of either a provisional/incomplete or a complete patent application, patent applicant can enjoy up to 18 months of secrecy around the contents of their patent application if they wish to do so.