Patent Speak Blog

Filing a Patent: How to Get Started

  • February 15, 2015 /
  • by admin /

When you have an idea or an invention ready to be patented, one of the first steps you’ll want to do is get in touch with your patent agent. He or she will likely ask you a bunch of questions to get an idea of where, when and what kind of patent application to file.

When to file

The most important question you’ll need to answer in order to determine how to proceed is when you would like to file the patent application? Hopefully, you have kept your invention secret and not told anyone about how the invention works. If this is the case, then you have some flexibility in when you file the patent application. If you haven’t kept the invention secret, in some cases you may still be able to file a patent application, at least in some jurisdictions. If you haven’t yet disclosed the invention, but are about to do so by writing an article, sending out a brochure, demonstrating the invention or even selling a product that uses the invention, you need to get in touch with your patent agent as soon as possible. They may be able to file a patent application (or if time is really short, a provisional application) to make sure that you will be able to maximize the patent rights you are entitled to before the disclosure takes place.

Why do you want to patent?

The next important question is why you want to have a patent for your invention? In some cases, you may want to prevent competitors from using the invention. In other cases, you may want to leverage the patent to get funding and/or investment for your business, or you may want to get royalties from the sale or licence of your patent. The answer to these questions will have some impact on where and what kind of patent application to file.

Who will own the patent?

The third question is who is / are the inventor(s) and who will own the patent? This is important to get right. Adding someone who is not an inventor as an inventor or leaving a real inventor off the patent application may impact the validity of the patent. You should understand that each inventor has rights in the patent unless and until they are transferred. Determining who is an inventor usually revolves around who contributed to the inventive concept, and because the inventive concept that ultimately is identified may be different from what you as an inventor think it is, a person whom you identify as an inventor may in fact not actually be an inventor at the end of the day. Also, a person you may not have considered an inventor initially may need to be added as an inventor before filing.

With regard to ownership rights, think about who is going to pay for and who is going to own the patent. If you are working with someone else on the invention, whether or not that other person is also an inventor, you may wish to share or assign the rights to a specific person or company. Don’t get hung up on percentages of the invention. In most cases, what you are really talking about is what share of the money that the patent generates goes to which person. As a general rule, any person who has rights in the patent, whether as an inventor or as an assignee, has an undivided right in the patent. You can set up a contract between the rights holders to assign percentages of the revenues from the patent separately.

What happens next?

Once you have answered the questions above, you’ll want to start preparing materials ready for your patent agent. This includes a written description of your invention,

Description

You may have already drafted something like this, especially if you have been thinking about disclosing it as a product (like a user manual), advertising your invention, or obtaining mechanical drawings for manufacturing. If so, this is a great starting point for your patent agent and he or she will be able to establish if there is any other information that needs to be added. If you haven’t yet prepared a description, you’ll want to include a brief outline of what makes the invention important, why it is cool, unique or useful, and how it works. Don’t spend too much time and effort organizing your thoughts until your patent agent has had an opportunity to review – he or she will likely have questions and additional information he or she will want to add, and can help you shape this description further.

Drawings

If you don’t have drawings, think about providing some. They can be as simple as hand-drawn sketches (no artistic talent required!), or if you have a working device, photos from different angles of the device that include the interior parts will also be useful. Most patent agents often work with illustrators who are able to take these photos and turn them into proper patent drawings. If you are providing drawings or photos, it is very useful to provide both a clean set and a marked-up set, where you tell the patent agent what different parts are and what they do. If you have a working device or model that you can do without for a bit, then that’s even better. Provide the device or model to the patent agent to study and develop drawings from.

Demonstrate the Problem

In addition to the description of the invention and the drawings, you should look around to see if you have any materials already that describe the problem that is being solved by your invention, whether or not the materials describe the invention. If you are filing a patent application in the US (which is usually the case for Canadian inventors), you will be required to disclose these materials to the patent office.

It is important to note that you are not required to look up materials that describe the problem or the invention. However, if you do look up these materials or have them in your possession, you must disclose them to the patent office. In many cases, because you are familiar with the industry to which the invention relates, you likely already know what is out there without having to do an online search. If so, you might be better off just describing what is out there to your patent agent when you meet, without doing a search. If you do a search, we suggest printing off a copy of your search results. A handy rule of thumb is not to print off the list of pages that comes up in the initial Google (or other search engine) search, but if you click on any of these pages in the initial search because they seem interesting, print off a copy of the page that comes up, whether or not you decide that the page was relevant.

Notes

Although it is less important now than it used to be, if you keep a notebook or notes about your invention and the development process, you will want to make a copy of them and give them to the patent agent. Before 2012, we used to recommend that you keep your notes in bound notebooks and that whenever you came up with anything you thought was inventive or solved a problem you were working on, to have someone you worked with sign and date the page that you had your notes on, or to copy the pages and mail them to yourself (keeping the envelope sealed). This was to be able to document your date of invention, since the US at least worked on a first to invent system (the rest of the world is on a first to file system). Now that the US has adopted first to file, this is less important but it is still a good idea to keep good notes and to adopt a regular practice of note-taking.

It is probably a good idea to think about what you think makes your invention special and what you think the invention is. You will probably find that once you have met with your patent agent, the focus of what the invention is will get clarified and may even be different from what you initially thought it was. But spending some time on this issue will be helpful to the patent filing process.

Finally, your patent agent will probably ask you for a deposit in advance, and request that you sign some documents to formalize your relationship.

Once you have met with the patent agent, he or she will probably go away and think about the invention and prepare an initial draft of the patent application. It is a good idea to get an estimate of the time the agent thinks he or she will need to do so, and also to get an idea of the total cost for drafting the application and filing in the jurisdiction(s) you have decided upon.

Reviewing the draft application

When the initial draft is done, the patent agent will send it to you for review and comment. Most likely there will be questions that the patent agent has that you will need to answer. Since typically the initial draft will be in a word processing format sent to you by e-mail, you can put in the answers right in the document and e-mail it back to the patent agent. It is usually helpful to turn on “track changes” to allow the agent to quickly see what you have added or corrected. In addition to answering any questions from the patent agent, carefully read the application. It will be in two parts, a description portion and a claims portion. Focus on the description. Make sure there is nothing in there that is incorrect or confusing. Make sure it is complete. If you know of something that you think is important, set it out so that it can be put into the description. Use proper terminology throughout, so that others who work in the field that is relevant to your invention will understand the description.

You can also look at the claims, which sets out the scope of the monopoly you will be claiming. However, you should realize that the patent agent is probably trying to claim very broadly for you. Inventors typically try to add details to the claims because they have those details in mind and because the description is very detailed. Resist the temptation to add details to the claims. Every detail will narrow the scope of monopoly you are claiming and will make your patent less valuable.

Finally, try to get your comments, corrections and answers back to the patent agent as quickly as possible. The patent agent may be working on a number of inventions for a number of clients at the same time and the sooner you get your comments back, the sooner your patent application can be finalized. Also, you will find that this will minimize the cost of the patent application, because the patent agent can schedule work more efficiently and may not have to refresh his or her recollection each time.

Filing the patent

After one or more iterations of the draft review process, the patent application should be ready for filing. You will probably be asked to do a final review of the application and if it complete and correct, to advise the patent agent that you are ready to file. In some jurisdictions, you may be asked to sign some formal documentation when you file, although in other jurisdictions, your patent agent can sign on your behalf. You may also be asked to sign or to have signed assignment documentation transferring rights in the patent application and the underlying invention from one or more inventors to one or more applicants. Once these documents are signed and returned, the patent agent can file your patent application. Usually, you will get a quick email when this is done, and a more formal report (and a final bill for the process) a bit later, when the patent office issues a filing receipt with the patent application number to the patent agent.