Patents

Patent Essentials

 

What is a patent used for?

A patent is typically granted for a novel, non-obvious and useful invention that is of eligible subject matter. In Canada, this generally includes apparatuses, methods, systems, and compositions of matter, and improvements thereto; but can exclude certain restricted subject matter, for example, abstract ideas and methods of medical treatment.

What does novelty refer to with respect to an invention?

In Canada, novel inventions are those which have features that are not known publicly prior to their claim date. In most jurisdictions, if an invention has been disclosed to the public, anywhere in the world, prior to the claim date, it is no longer possible for it to be protected by a valid patent.

In a few countries, including Canada, there is a one-year grace period where the inventive features can a disclosed if made directly or indirectly by the inventor. The grace period allows an applicant to file the Canadian application within one year of the first public disclosure without losing rights to the invention.

What does non-obviousness (inventive step) refer to with respect to an invention?

In Canada, in order to be patentable, an invention also has to be not obvious. In essence, the difference between the inventive features and common general knowledge in the art must be more than an obvious difference. The common general knowledge includes the knowledge of a hypothetical person skilled in the field of art and can include, for example, prior patents and patent applications, publications, etc.

What does utility (industrial applicability) refer to with respect to an invention?

In Canada, an invention has utility if it is directed to a practical use and it is capable of doing what is indicated in its patent application. Utility must be established by either demonstration or by sound prediction.

The Patent Process

 

What is the first step to filing a patent?

At Bhole IP Law, the first step is always a discussion to facilitate a thorough understanding of the invention. Typically, the discussion is aided and supplemented by a disclosure document, which consists of a written description and is supported by drawings and flowcharts, which illustrate how the invention operates.

What kind of assessment can you provide my company or organization?

Bhole IP Law provides various patent related searches and opinions including patentability searches to assess the prior art, infringement analyses, freedom-to-operate searches, and more.

Is a prior art patentability search necessary?

In some circumstances, it may be beneficial to conduct a prior art search in order to prepare a patent application that emphasizes the differentiable aspects of a device or process over the prior art. In other cases, the inventors may be intimately familiar with their technical field and, therefore, could be considered to already have a strong knowledge of the prior art. In this case, a prior art search may not be necessary.

What are limitations on patentability searches?

An example of a limitation is that most prior patent applications are held confidential for the first 18 months following the priority date. Since it is customary to search prior patent applications during a prior art search, these confidential applications will not be located. Additionally, the various patent databases used classify patents by subject matter into a series of classes and subclasses and there may be an element of subjectivity in the classification. Furthermore, as with any significant collection of data, the records of the databases searched are known to contain errors and omissions. In addition, relevant prior art may be located in databases of other countries or non-patent databases which may not be searched for various reasons.

Patent Application Preparation

Why should I hire an IP professional for my patent application?

While you know your technology better than anyone, a patent professional can help translate that knowhow into strong protections around your idea. Some inventors and companies decide to self-file provisional patent applications; which can be appropriate in some limited situations, but can include significant drawbacks as further described here: (hyperlink to: http://www.bholeiplaw.com/why-to-be-cautious-about-a-weak-u-s-provisional-patent-application/). It is important to remember that thorough and valuable patent applications take a lot of time and preparation to complete, and should include particular court-construed patent language in order to maximize protection of the inventive idea.

As an example, the claims set out the scope of protection and  should be constructed so as to claim broadly but also differentiate over the prior art. This balancing act is crucial to ensuring the breadth and value of an ensuing patent. Further, there are nuances and strategies with respect to communicating with the Patent Office in order to have a patent application move forward to issuance, which can be handled and dealt with by the experience of a patent professional in order to maximize the chances of success.

What does the patent application consist of?

Typically, a patent application consists of the following sections:

  • Title;
  • Background (brief description of the prior art, setting up the need for the invention);
  • Summary of the invention (a few paragraphs outlining the inventive aspects);
  • Description of the drawings;
  • Detailed description of the embodiments;
  • Claims;
  • Abstract (an overview for the purposes of searching); and
  • Drawings.

The detailed description comprises the bulk of the patent application, and must describe at least one embodiment of the invention that would enable the reader to understand and recreate the invention.

What does the parent filing process look like?

Filing a patent application includes assembling the documentation required by the Patent Office for filing and payment of government filing fees.

In order to file the application, you must advise Bhole IP Law of the following information:

  • Full legal names of all the inventors;
  • Addresses and countries of citizenship for each contributing inventor; and
  • The name and address of the applicant (if applicable).

In addition, in some countries an applicant can qualify for reduced government fees if they are considered a “small entity”. Whether an applicant is a small entity varies by country and, generally, should be established prior to filing the application and, in some countries, should be re-established prior to the payment of any further fees.

Post-Patent Filing

 

How long does it take for the patent to be published?

Once the application is filed, it is typically held confidential for a period of 18 months following its priority date. After the 18 month period expires, the application will be published.

What kind of examinations are patent applications subjected to?

In most countries, an application is examined by the government’s patent office. Applications are reviewed both for formal requirements and substantive requirements. If the patent application falls short on any of these requirements, the patent office examiner will issue an Examiner’s Report (also referred to as Office Action).

The most common substantive objection that will be faced in an Examiner’s Report is a citation of prior art that the examiner believes renders the claims of an application not novel or obvious. It is then up to the applicant and its agent, Bhole IP Law, to work together to develop a styrategy to respond to the Examiner’s Report, by either arguing against the objection and/or amending the claims to avoid the prior art.

Depending upon the nature of the claims and the composition of the industry or art, there may be between 1-4 Examiner’s Reports issued in any particular case.

If my examination is successful, what happens next?

If the Examiner believes an application meets formal and substantive requirements, the application will be allowed and will issue upon payment of an issue fee. Once issued, the applicant (now patentee) is entitled to enforce the patent against infringers.

Patent Maintenance and Rights

 

Is there a maintenance fee?

Yes, payment of a maintenance fee is required during the pendency of the patent application and during the term of the following patent. The frequency and cost of the maintenance fee varies by jurisdiction.

How long do I have to file corresponding foreign patent applications?

In certain circumstances, the filing of a patent application in one jurisdiction provides an applicant with a one-year window to file corresponding foreign applications. In such cases, the claims of the later-filed foreign application will be evaluated as if filed on the earlier filing date. In other words, the claim date for the foreign application will be the filing date of the original patent application.

In other circumstances, a Patent Cooperation Treaty (PCT) patent application may be filed, which provides an avenue for national phase entry in multiple foreign jurisdictions.

Can you help me file foreign patent applications?

Bhole IP Law can directly assist you with any patent application filings in Canada and in the United States (where the inventors or applicant are Canadian). While Bhole IP Law cannot directly file your patent applications in other foreign –jurisdictions, we can work within our trusted network of foreign associates to file your application in your desired foreign jurisdictions.

Note that for foreign filings, there may be additional filing requirements as foreign associates may need to obtain certain information regarding the applicant and its other applications, and may need to prepare a translation of the patent application. Thus, additional time for foreign filings should be budgeted.

 

 

BHOLE IP LAW is a boutique IP firm located in downtown Toronto, Canada and practices in all areas of IP, including developing business-minded patent strategies for startups, small and medium-sized businesses. BHOLE IP LAW provides competitive fees and, importantly, takes pride in its responsive and advisory approach.

**The information provided herein is a general background of intellectual property law concepts, does not constitute legal advice, and should not be relied upon as legal advice. Bhole IP Law, and the author, make no express or implied representations or warranties in respect of the information, including but not limited to the accuracy of the information. Note that while Bhole IP Law is a firm of Canadian lawyers authorized to practice before the United States Patent and Trademark Office, we are not U.S. lawyers nor lawyers in any other jurisdiction. As such, other foreign counsel may need to be consulted for U.S. or foreign legal matters.**