The patent filing process begins once relevant searches have been carried out and the patent strategy has been determined.
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, the next stage in the patent filing process is examination 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 and throughout the patent filing process, as you know best 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 if additional time is required to focus on 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.
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.