Overview of Patent Prosecution
Melanie Szweras
Bereskin & Parr LLP
*Slides adapted from U of T – Patent Prosecution – An Overview January 2009 from Michelle Nelles
January 24, 2012
Canadian Patent Application Process
a. Searching
b. Preparation
5b. Appeal
1. Filing
2. Publication
3. Request Exam
4. Exam
5a. Allowance
6. Patent Issues
Searching
• Should conduct prior art search
– Guidance as to scope of patent potentially
available (broad or narrow patent)
– Helps to draft properly (do not want application to
read on prior art)
– Patentability search different from right to
manufacture search
• Wise to retain patent counsel to do search
Searching
• Can search patent databases on Internet but very difficult skill to
properly search
–
–
–
–
USPTO: www.uspto.gov
CIPO: www.cipo.ic.gc.ca
WIPO: www.wipo.int
EPO: www.epo.org
• Can search art-specific databases and general Internet searching,
for example, on Google
• Question to be answered: Is there any other source or combination
of sources that disclose what you want to patent?
• Usually at least $3000 for a search and verbal opinion
• Search has limitations – there is 18-month window until publication
in most countries; depends on extent of search, databases
searched, keywords used, etc.
Canadian Patent Application Process
a. Searching
b. Preparation
5b. Appeal
1. Filing
2. Publication
3. Request Exam
4. Exam
5a. Allowance
6. Patent Issues
Whether/Where to File
• Costs associated with patent protection and
enforcement are very significant and patents
are territorial (basically by country)
• Very general estimate: $7-10K for one country
(filing cost – does not include prosecution and
maintenance ); well over $100K once you
consider multi-national filings
Whether to File?
• scope of patent protection – likelihood of
broad or narrow?
• commercial life of the invention – can take 35 years at least to get a patent once you
request examination
• Term of patent 20 years from filing date
• Alternative – trade secret
Whether to File?
• Will the invention be produced by your client or
just offered for licensing?
• Will competitors be able to design around?
– Can take years to get the patent
– Market lead time can be significant
• Do you have maintain and enforce the patent?
– Litigation is prohibitively expensive (often more than
$1M for very simple patent in Canada; more in U.S. –
note litigation would also be jurisdiction-byjurisdiction)
Whether to File?
• Are you ready to file the patent
– Recall catch 22 of filing too early and not being
supported for desired scope of claims
• Financing/Licensing
– Is a patent application necessary to secure
funding?
• Defensive Reasons – to scare others away; to
preclude others from filing
Where to File?
• Picking where to file:
– Your market
– Your manufacturing facilities
– Your competitor’s market
– Your competitor’s manufacturing facilities
– Enforcement potential
– Prosecution charges (if budget)
The First Filing
• Depending on the reason for filing the patent
application, the following will affect where
you should first file:
– Desire for speedy issuance
– Indication of patentability
– Getting filing date to reserve place in line or due
to impending public disclosure
Parts of a Patent
•
•
•
•
•
•
•
•
Background
Summary
Brief Description of the Drawings
Detailed Description
Claims
Abstract
Figures
Sequence Listing (if present in application)
Types of Applications
• Full Patent Application – cost for drafting $6,000 to
$15,000
• “Short Form” Patent Application – provisional (U.S.) or
informal (Canada/UK)
– Has to be completed within one year of filing with full
application
– Can file without claims
– Does not save money in long run – more expensive as you
still have to prepare a full application at one-year mark
– Ballpark cost - ~$3,000 to $8,000
– Good if there is imminent public disclosure or if will take a
long time to get to market (provides additional year before
clock begins ticking on patent term)
Types of Applications
• The Patent Cooperation Treaty (PCT)
– PCT often called the International Application
– Administered by the International Bureau at WIPO
– Deemed filing in most countries in the world
• BUT: each filing is not crystallized until national phase entry (i.e. filing
in each individual country), which must be requested within 30
months
• Basically a 30-month delay in deciding where to file in exchange for
$4-6K
• National phase filings are very expensive and some require translation
– In certain countries (like Canada), national phase can be delayed
even further
– Why delay? Evaluate patentability, market, invention; raise
money; license; keep options open
Types of Applications
• Other Regional Patent Systems (such as Europe)
– Can designate over 20 countries – EPO conducts
examination and grants patent, which must be perfected
or validated in the individual countries where protection is
desired
– Initial filing cost (not including drafting) is ~$11,000 to
$15,000
– General rule of thumb – if interested in more than 3
European countries, better to file with EPO
– Some countries require translation – can be expensive ~$100 per page
– Validation in 5 countries often at least $20,000 to $30,000
Paris Convention
• Foreign Filing and the Paris Convention
– Paris Convention gives an applicant one year to file
one or more corresponding applications and claim
“priority” back to the filing date of the previous
application (regular or provisional)
– This relieves the applicant of filing in every
country in the first instance
– Example: Could do U.S. first, and then do PCT
Timelines
Priority
Application
0
National/PCT
filings
National
Phase Entry
of PCT filing
12
18
30
Deadline to
Request
Examination
in Canada
72 Months
Note: maintenance/renewal fees due throughout
depending on country
Publication
Canadian Patent Application Process
a. Searching
b. Preparation
5b. Appeal
1. Filing
2. Publication
3. Request Exam
4. Exam
5a. Allowance
6. Patent Issues
Patent Application Process
• In Canada, an Applicant can file – Applicant can
be the inventor or someone who obtained title to
the invention from the inventor
• In the U.S. – the inventor must apply but then the
invention can be sold/assigned to a company
• Patent Agent is usually used to draft, file and
prosecute a patent – a Patent Agent needs to be
appointed if the applicant is not an inventor
• Can have joint inventors
Timing – Filing an Application
• Most countries require absolute novelty
– Must have first application on file before any
public disclosure
• Some countries offer grace period for
inventor-derived public disclosures but if
desire multi-national protection, should have
application on file before first public
disclosure (e.g. United States, Canada)
Grace Periods
• In Canada, you are too late to apply for a patent
if:
– You waited more than a year to apply after you or
your disclosees made the invention available to the
public in Canada or elsewhere; (grace period) or
– Someone else made it public before your claim date.
(absolute novelty)
• “Claim date” means the date of a claim in an application for
a patent in Canada, as determined in accordance with
section 28.1 [Patent Act, s. 2] - (each claim can have own
claim date)
– Someone else filed for same invention before your
claim date/filing date (absolute novelty)
How to File in Canada?
• Once application has been drafted and approved,
need to prepare a petition, which must include:
–
–
–
–
Title
Names and addresses of Applicant and all inventors
Priority claim details
Pay filing fee
• Note: Public Servants Inventions Act – if you are a
public servant then must disclose such and
cannot file outside of Canada without the
Minister’s permission
Canadian Patent Application Process
a. Searching
b. Preparation
5b. Appeal
1. Filing
2. Publication
3. Request Exam
4. Exam
5a. Allowance
6. Patent Issues
The Examination Process
• Publication
– Applications are published or laid-open to the public for public inspection
after 18 months from the priority date
– Can request earlier publication – e.g. may be preferable if concerned about an
infringer as can get reasonable compensation once (s. 55.2 Patent Act)
• Examination
–
–
–
–
Need to request examination (s. 35 Patent Act)
Anyone can request examination
Requests for examination may be deferred up to 5 years from filing in Canada
Currently a delay of about 2-4 years to start examination once it is requested
(depends on art)
– An Examiner is assigned to the file – should be technically competent –will do
a prior art search (for novelty and inventiveness)
– Can request expedited examination if you have a reason (like infringer on
market) and you pay a fee
– Examination is usually faster in the U.S. Patent Office
Canadian Patent Application Process
a. Searching
b. Preparation
5b. Appeal
1. Filing
2. Publication
3. Request Exam
4. Exam
5a. Allowance
6. Patent Issues
The Examination Process
• What does the Examiner do?
– Examiner reviews the application and requisitions
compliance with the Patent Act and Patent Rules
– Will often issue an Office Action alleging that the
application is not allowable (e.g. not new or inventive,
claims are unclear, not supported, etc.)
– Applicant responds with arguments and/or
amendments
– Back and forth between Patent Office and Patent
Agent (costs can equal cost of application preparation
in a difficult matter) – akin to negotiation between
Applicant and Patent Office
The Examination Process
• Amendment is limited
– Cannot introduce new subject matter (s. 38.2 Patent Act)
– Some jurisdictions need literal support in description (e.g.
Europe)
• Amendment may broaden or narrow the scope of the
claims
• Patent to issue to a single invention
• May be required to restrict to a single invention and
pursue claims to other inventions in additional
applications (called divisional applications)
Canadian Patent Application Process
a. Searching
b. Preparation
5b. Appeal
1. Filing
2. Publication
3. Request Exam
4. Exam
5a. Allowance
6. Patent Issues
Patent Application Process
• Allowance and Issuance
– Get Notice of Allowance once approved
– Must pay a final fee and then the Patent Office
will issue the patent
– Need to pay yearly maintenance fees to keep
patent in force (timing of maintenance fees may
differ by jurisdiction)
Patent Application Process
• What happens if application is refused by the
Patent Office?
– When Examiner considers applicant has not traversed
a rejection, may make next rejection on the same
grounds final
– Applicant must amend as required by the Examiner or
argue over on next response of the application will go
to the Patent Appeal Board
– Patent Appeal Board extends opportunity to Applicant
to be heard
– Commissioner receives Patent Appeal Board’s findings
– Decision can be appealed to the Federal Court
Patent Application Process
• Protests – filing prior art
– Third party may file prior art with a statement
– Third party involvement is limited
– Could actually strengthen a patent
• Note: Other jurisdictions (e.g. EPO and soon,
the United States) have opposition procedures
that allow third parties to be quite involved
Patent Application Process
• Abandonment and Reinstatement
– When Applicant fails to comply with a
requirement by the due date, the application
becomes abandoned
– The Applicant can reinstate the application with
12 months along with completing the original
requirement and paying a reinstatement fee
Canadian Patent Application Process
a. Searching
b. Preparation
5b. Appeal
1. Filing
2. Publication
3. Request Exam
4. Exam
5a. Allowance
6. Patent Issues
Patent Application Process
Post issuance options
• Three major provisions available to clean up patent if necessary:
1.
Disclaimer
•
2.
To disclaim (narrow) a part of a patent
Re-examination
•
•
•
•
3.
Re-opens examination
Cannot broaden scope of claims
Based on prior art
Can lead to cancelled, confirmed or amended claims
Reissue
•
•
•
•
Also re-opens examination
Can broaden
Test is inadvertence, accident or mistake – need to show meant to protect
initially
4-year time limit from date of issuance
Claim Drafting
• Claims: should specify in a positive manner all
the elements, features and critical aspects of
the invention which are necessary to ensure
the result set forth in the description
• Directed towards a person skilled in the art
• Series of “fences” or “nested fences”
Claim Drafting
• Each claim is a single sentence
– Preamble or introductory phrase
– Transitional phrase (e.g. comprising – means
including as well as others as opposed to
consisting of)
– Body – each element that is required – main and
sufficient elements should be described
Claim Drafting
• Clarity of Language
– Antecedents – if say “the pencil” must first have
used the term “a pencil”
– Ambiguous terms must be avoided – e.g. “about”,
“substantially”, etc.
– Negative limitations should be avoided
– Language must be consistent
Types of Claims
• Independent (broadest) vs. Dependent
• Types:
– Product or apparatus
– System
– Process or method
– Method of use and use
– Markush (selected from the group consisting of…)
– Jepson (“the improvement comprising…”)
Example
• What is the goal or objectives to be achieved?
• What is the minimum functions/elements
needed to achieve the benefit or advantage?
Chair Claim
•
What are the elements of a chair?
– Essential
•
•
Seat
Support element
– Optional
•
•
•
•
•
•
Chair back
Additional support elements
Wheels
Cushion
Arm rests
What is the function?
– Essential
•
Support a person in a sitting position
– Optional
•
•
•
Adjustability of seat back
Adjustability of height
Moveable
Chair claims
• A chair comprising:
a seat; and
a vertical element providing support for the seat.
• A chair comprising:
a seat; and
a vertical element providing support for the seat;
wherein the vertical element is connected to the
underside of the seat;
wherein the seat is raised to a position above the
ground by the vertical element.
Dependent claims
• The chair of claim 1, wherein the seat
comprises a cushion.
• The chair of claim 1 or 2, wherein the support
comprises a plurality of vertical elements.
Thank You
Melanie Szweras
mszweras@bereskinparr.com
Bereskin & Parr LLP