A patent is granted for a novel, non-obvious and useful invention that is of eligible subject matter, which generally includes most apparatus, methods, manufacture and compositions of matter but excludes particular subject matter such as methods of medical treatment.
Novelty means that an invention is new as of its claim date. In most jurisdictions, if an invention has been disclosed to the public anywhere in the world prior to the claim date of a corresponding patent application, 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 for such a disclosure 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.
An invention is considered obvious if a person skilled in the art could have arrived at the invention given the publications and common general knowledge, but without any inventive ingenuity, available at the claim date of the application.
A claimed invention that operates as promised will be considered useful, and thus have utility. The requirement of utility does not mean that the invention must have a benefit or advantage over alternative inventions. In most cases, with perhaps the exception of pharmaceutical patent claims, the utility of a claimed invention is not at issue.
How Does This Affect the Patent Process
When you engage Bhole IP Law, the first step is always a discussion to facilitate an understanding of the invention. This should, in all cases, be supplemented by a disclosure document, which consists of a written description and is aided by drawings and flowcharts, which illustrate how the invention operates. Please contact Bhole IP Law should you require a template to assist you in preparing such a description.
It is important to realize that understanding the “invention” is not the same as understanding a device, or a process. The “invention” refers to one or more aspects of the device or process that are differentiable over the prior art and, therefore, could be considered a patentable (novel, non-obvious and useful) invention.
A strong patent application is one that is prepared to emphasize the differentiable aspects of a device or process over the prior art. Therefore, it is crucial to understand the prior art landscape before drafting a patent application crucial. In some cases, the inventors are intimately familiar with their technical field and, therefore, could be considered as having a strong knowledge of the prior art. However, in most cases, the prior art is not fully understood at the time of this discussion.
Bhole IP Law provides patentability searches to assess the prior art for a particular invention. In most cases, it is advisable to conduct such a search. However, there are limitations to the search which would render it inadvisable in some cases. One such 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 application for a prior art search, these confidential applications will not be located. Therefore, for particular current fields of invention, prior art searching may not be extremely useful.
Once you are satisfied that there is value in seeking patent protection given the prior art, the next step is the preparation of a patent application. Generally speaking, Bhole IP Law will take the lead on the preparation of the application with the aid of the disclosure document.
A patent application must describe an invention in sufficient detail for a person of skill in the art to recreate the invention without inventive skill. Thus, inventive aspects must be fully described but known techniques can be abstracted.
The patent application consists of the following sections: a 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 an embodiment, claims, and abstract. Drawings are also prepared and filed with the application.
The detailed description makes up 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.
The claims may be considered the most important section of the patent application as they define the monopoly right that the applicant claims as its own. Claims are concise statements of the invention and must be written so as to differentiate over the prior art. Claims for subject matter already in the prior art will be rejected and will have to be revised. A significant amount of time and attention goes into the preparation of claims.
Filing the Application
Filing a prepared application includes assembling the documentation required for filing and the payment of government filing fees.
In order to file the application, you must advise Bhole IP Law of the following information: full legal names, addresses and countries of citizenship for each inventor; and the name and address of the applicant.
An inventor is an individual that contributed to the invention as defined in the claims. Typically, a person merely implementing an invention at the direction of another person would not be considered an inventor.
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 should be established prior to filing the application and, in some countries, should be re-established prior to the payment of any further fees.
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.
In most countries, an application is examined by the government patent office. Applications are reviewed both for formal requirements and substantive requirements. If it does not meet any of these requirements, the patent office examiner will issue an Examiner’s Report (also referred to as Office Action).
The primary substantive requirement 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 for the applicant and its agent, Bhole IP Law, to either argue the objection or amend the claims to avoid the prior art.
Depending upon the applicant’s desire for broad claims and/or fast prosecution, there may be between 1 and upwards of 4 Examiner’s Reports issued in any particular case. Applicants should be prepared to incur legal fees to respond to each office action. As objections become more complex, fees are likely to be higher.
Allowance and Issuance
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.
Payment of a nominal maintenance fee is required annually during the pendency of the patent application and following issuance in order to retain the rights available from patent protection. PATENT PRIORITY RIGHTS
In certain cases, the filing of a patent application in one jurisdiction provides an applicant 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 originating application.
It is important to keep in mind that certain facts may require that the foreign application be filed earlier than the end of the one year window.
Foreign Patent Applications
In many cases, an applicant will want to effect the filing of foreign patent applications, which Bhole IP Law is not directly entitled to file. Bhole IP Law, in these cases, will engage foreign counsel to conduct filings on the client’s behalf.
If foreign filings are required, clients should be cognizant that instructions to file should be provided well in advance (ideally at least 2 weeks in advance) as foreign counsel may need to obtain certain information regarding the applicant and its other applications, and may need to prepare a translation of the patent application.
Additionally, in most cases, Bhole IP Law will require the client to provide a fee retainer to cover the fees of the foreign filing prior to providing instructions to foreign counsel.