- The Basics
- Approximate Costs
- Patent Lingo
- The Need for Confidentiality
- Process & Timelines
It depends. Where do you practise the invention? Where do your competitors practise the invention? And how much budget do you have? There are over 200 patent-granting jurisdictions around the world. For most of our Canadian clients, we usually recommend filing at least in the US (sometimes instead of filing in Canada). Other popular jurisdictions include Japan and Europe (there is a regional patent process available that will allow you to get the application approved centrally and then pay individual countries validation (and sometimes translation) fees to get the patent issued in a number of European countries. If you are thinking of filing in more than four jurisdictions (counting Europe as one), you may wish to consider the extra step (and cost) of filing a Patent Cooperation Treaty (PCT) International Application. Despite what it sounds like, this is not an international patent, but rather a filing deferral process. In exchange for the additional costs of going the PCT route, you get the ability to defer the decision of where to file (and maintain the opportunity to file in any PCT member country or region) for up to 30 months (2 1/2 years) after your initial filing date. This may allow you enough time to better understand your market and that of your competitors in order to make a better decision on where to file for patent protection.
If you are reasonably responsive to our follow-up questions, we can usually complete a patent application draft for you within a month of our initial meeting to go over your description of the invention. After filing the patent application, you may be asked to wait for a year (or even more) before receiving an office action. In some jurisdictions, examination will not start until you actually request (and pay the fee) examination. In Canada, you can wait up to five years from the filing date to request examination. Typically, you have between 3 to 6 months to respond to the office action. You can expect to receive between 1-3 office actions before a final decision on the validity of the patent application is reached. Once your patent application has been approved, you will be asked to pay an issue fee, after which the official patent will be granted. At that time, you have an opportunity to file additional applications for the same invention, but different claims. Once your patent issues, you will have a monopoly to make, use and sell the invention for up to 20 years from the date you filed the patent application. In the US, you may get additional term to take into account delays by the patent office in processing the application, but in most other jurisdictions, the 20 year term is fixed no matter how long you delay requesting examination or how long the application process takes.
The costs usually vary according to a number of factors, including the complexity of the invention, the thoroughness of the initial documentation, your responsiveness to our questions, the urgency of the case, how many jurisdictions (and where) you are filing in and whether there are multiple inventors or a complicated chain of transactions affecting the ownership of the patent rights. However, as a rule of thumb, you may consider that the costs of drafting a patent application will be between $8,000 – $15,000, and the cost of filing in a single patent jurisdiction will be about $3,000 – $5,000. If you file in multiple jurisdictions, you only have to pay for a single draft. Some jurisdictions will require translations into a foreign language. Still other jurisdictions will build into their filing fees, the charges for requesting examination and annual fees for keeping the application in good standing, while other jurisdictions charge these separately. There are usually fees for having the patent issued and after the patent is granted, you may be asked to pay periodic renewal or maintenance fees to keep the patent in force. Once we have met to go over your invention with you, we can provide you with a more precise estimate of the costs we anticipate you will be charged.
The most important thing is to let us know if you have disclosed (or about to disclose) the invention publicly to any one, to whom, how and where, and when. While ideally you should keep the invention secret until the patent application is filed, in some cases we can get something on file and get patent protection for your invention in short order if we are aware of a recent or upcoming disclosure. Document your invention. Come up with one or more drawings that show how the invention works. If you have a working device, take photos of the device and take views that show the inner workings. Ideally, use the camera date and time stamp feature (or write the date down on the drawing or on the back of the photo) to prove a date that you had figured out the invention. Then start to work on a description of how the invention works, how to make it and why it is so useful or cool. Don’t worry about whether your description looks like a patent. Use your own words. If you have specific dimensions for the device or for a part, or certain features (speed, angle) of operation, or certain specific parts that you use (identify the manufacturer and the part number if you have it), make sure that this is set out. Finally, try to explain why it is so useful. How did other people try to solve the same problem? Why didn’t those attempts work (or work as well)? Be careful about doing computer (or other) searches to find out what is out there. If you do such searches, you will need to keep records of what you find, because you may have to disclose these searches to the patent office in order to keep your patent valid. But you are not required to do such searches. Often, you are familiar enough with the marketplace without performing any searches, that you can explain the advantages of your invention and describe what competing approaches are out there without doing any search.
An inventor can always file a patent application personally. But to paraphrase the legal saying, “if you act as your own patent agent, you will have a fool for a client”. By the very fact that you have invented something, there is no doubt that you are quite bright. But very likely, you do not have much knowledge of the specific rules and practices that govern patent applications. Violating any of them may invalidate your patent with no ability to fix things. Even if you don’t break any of the rules, you will very probably draft claims that are far too narrow. This means that you will have disclosed your invention to the world (and paid for the privilege) but you may not be able to prevent your competitor from coming up with something that is very close to your invention. Finally, don’t you think your precious time should be used in developing your technology and growing your business?
You may be surprised to find out that the answer is not always yes. In some cases, while you may have a patentable invention, you may find that the scope of protection that a patent would give you is so limited that it may not be worth it to pay the costs of obtaining a patent. We can help you get an idea of how broad a patent you may be entitled to, which may help you with your decision. Also, some inventions, by their very nature, may not be easily detected, for example, if your invention relates to a novel method of making a product that you can’t figure out from examining the product. This means that on the one hand, it may be very difficult to prove that a competitor selling the product is copying your invention. If so, there may not be any reason to get a patent, because you will never be able to enforce it. On the other hand, you may not want to file for a patent because in doing so, you will disclose the invention, and it is unlikely that if you did not file for a patent, that the competitor would have figured it out. So why teach your competitor how to practise the invention and at the same time, limit your monopoly to a term of twenty years? If you keep it as a trade secret, you can have it forever.
No. As patent agents, we have an ethical obligation to keep confidential any information you give us about your invention. While this is not the same as a legal privilege that you might have in discussions with a lawyer acting as a lawyer, it means that disclosing your invention to us will not be treated as a public disclosure that might make any patent we prepare for you invalid. Incidentally, even if you work with a patent agent who is a lawyer (and our personnel are lawyers, just not practicing as lawyers), if all the lawyer is doing for you is preparing a patent application, your discussions with him or her may not be privileged anyway.