Introduction

The process between approaching a patent agent with an invention and the grant of a patent may be thought of taking 4 roughly consecutive stages: drafting, filing, examination and allowability / maintenance.   In some cases, an initial searching stage may precede the drafting stage.

Searching

This is an optional stage.  Given the considerable up-front cost of drafting and filing a patent application, you may wish to get a preliminary assessment of the likelihood that you would be able to obtain a patent of a given scope of monopoly.  This is done by retaining the patent agent to undertake a cost- and time-limited patentability search and to provide you with a patentability opinion.

It is important to remember that this search will not capture all available prior art.  What it does is provide a snapshot in time of what references are presently publicly available in the resources and subject areas searched that may be considered by an Examiner to be relevant to the patentability of the invention.  Because usually the resources searched include patent databases, it should be borne in mind that patent applications are  usually held confidential for a period of 18 months after filing, so that a prior art patent application may be publicly available at the time of examination but not at the time of search.  Also, at the searching stage, the invention is sometimes not well defined or understood, so the subject area(s) searched may be different than those considered by the Examiner.   Further, sometimes references may be mis-classified or not well described.  Finally, the overriding principle in undergoing a search is to limit the cost, so that a full search will likely not be conducted.

Some inventors choose not to undertake a search.  If you are comfortable with the state of the technology, a search and the associated delay and costs may not be necessary.  Also, the results of any search undertaken, whether by the patent agent or the inventor, should be provided to the patent agent, as some jurisdictions have a requirement to disclose any references known to the inventor, the inventor’s company and the patent agent to the Examiner, or risk losing the patent even if otherwise valid.  Especially if the inventor is part of a large company, there is a risk that discovery of a competitor’s unexpired patent during a search, that covers what the company is doing, may inadvertently expose the company to increased liability for willful patent infringement.

If you do proceed with a search, you may want to allocate about 1 month for completion of the search and the preparation of the opinion.

Drafting

The drafting stage is where the ideas embodied in the inventor’s invention, are described and claimed in a patent application.  Even if you are planning to file in a number of jurisdictions, the patent draft for each jurisdiction will look substantially the same and you can expect that in most cases, only a single patent draft (with minor adjustments for each jurisdiction) will be necessary.

The patent agent will sit down with you to understand and to explore the ramifications of the invention, learn the way that the invention works, the Cadillac version of the invention and any optional features or tweaks, and settle on one or more inventive concepts.  You will also be questioned about the people and organizations with rights in the invention, your business plans, those of your competitors, the market available, and the fact and timing of any disclosures.  Then he or she will review available filing options and assist you with making filing decisions based on this information.  Finally, the patent agent will go away and prepare a draft based on the information you provide, including a disclosure and draft claims, for your review and comment.  As an inventor, your energies are best put to making sure that the disclosure is scrupulously complete and correct and to leave the format and scope of the claims to the patent agent.  A common mistake made by inventors, especially those who draft their own patent applications, is to make their claims too focused on the invention as they see it, which limits the scope of the monopoly potentially available to them.

If there is an upcoming deadline, the patent agent can usually accelerate matters to meet the deadline but may charge you a premium for such rush service.  It is better to provide the patent agent with between 2 weeks and 1 month to prepare a first draft.  You can reduce both the billable time spent on preparing and the elapsed time before receiving the first draft by providing the patent agent with a detailed written disclosure, with informal drawings and pictures of different aspects of the invention before the initial meeting and by responding quickly in writing to inquiries from the patent agent, usually embedded within the first draft of the patent application.

A number of drafts of the patent application may be required before it is filed.  The time to review and prepare these drafts depends largely upon the inventor’s responsiveness to the patent agent’s communications.

Filing

Once the draft has been prepared and settled upon, the patent agent will file the application in one or more patent offices.  Each filing incurs the payment of certain government fees on your behalf, which is over and above the patent agent’s charges for drafting and filing the application.

If the application will be filed in a jurisdiction (and/or a region) other than that of the patent agent, the patent agent may retain on your behalf a patent professional in such jurisdiction and/or region to attend to the filing under the patent agent’s instructions.

In most cases, the filing will be a “regular” patent application.  However, in some instances, your patent agent may recommend filing a provisional patent application, usually to pre-date an anticipated disclosure.  A provisional application will usually be less comprehensive than a regular application and the costs and time to prepare will be less as well.  However, a regular application must be prepared and filed no more (and often-times much less) than 1 year after the date of the provisional application.

In some cases, you may wish to consider filing a Patent Cooperation Treaty (PCT) International Application.  The PCT International Application is useful as a filing deferral mechanism to allow you to delay making absolute decisions on where to file for patent protection for your invention.  The best way to think of the PCT International Application is as a file cabinet in the PCT office into which you deposit your fully drafted patent application.  You rent the file cabinet for a period of time by paying a PCT Application fee.  The maximum period of time is generally 30 months from the earliest priority date.  So effectively you can extend the maximum 1 year priority period to a further 18 months by filing a PCT application within the priority year.  Within the 30 month period, you may ask for the PCT application to be removed from the filing cabinet and submitted as a patent application in any patent office that is a member of the PCT (effectively any patent office in the world), in a process known as national (or regional) phase entry.  When you enter the national phase in a jurisdiction, that patent office treats the filing as a filing of the patent application in the form set out in the PCT application on the PCT International filing date (kind of backwards time travel).

The filing date usually starts clocks running toward examination and other deadlines that must be met with little or no opportunity to delay or extend.  These include dates by which other applications covering the same or a related invention must be filed in the same or other jurisdictions.

If there is an upcoming disclosure, the patent application(s) should be filed in advance of the disclosure date.

Examination

Once the patent application has been filed in a given jurisdiction and/or region, an Examiner in the patent office for that jurisdiction and/or region will engage in correspondence with the inventor through the patent agent to negotiate the form and/or substance of the patent application.

Typically, a fee and/or a request to commence examination must be submitted before examination commences.  In some jurisdictions, such as the U.S., the fee and examination request is bundled into the filing fee so that no additional steps are required.  Otherwise, strict time limits exist for submitting the fee and examination request.

Once examination commences, the application is queued into the docket of an examiner with capabilities to process the technical subject matter.  For some technologies, the queue is quite long, so it is not unreasonable to wait upwards of a year after examination commences to hear anything from the Examiner.

When the patent application is reached by the Examiner, except in the rare case where the application is considered immediately allowable, the Examiner issues an Office Action or Examiner’s Report listing perceived defects in the application that prevents it from being issued as a patent.  These defects may be formal or substantive.   Formal defects can usually be remedied by modifying terminology in the disclosure, and/or claims including correcting technical errors, and/or submitting corrected drawings.

In some cases, there may be a concern that more than one invention is contained in the application.  This may sometimes be remedied by cancelling one or more groups of claims, which can usually be re-submitted in a separate application before the main patent application issues as a granted patent, without jeopardizing the “prior art date” of the separate application.

Other substantive defects may relate to concerns about the patentability of the subject matter, or more typically, to the identification of one or more prior art references that the Examiner believes renders one or more claims unpatentable.  The patent agent will work with the inventor to overcome these defects, either by pointing out a flaw in the Examiner’s logic or understanding, amending the claims by adding features from another claim or an unclaimed (but documented in the disclosure) feature of the invention or by cancelling or withdrawing one or more of the claims in issue.

Allowability and Maintenance

Once the Examiner is satisfied that the patent application has no remaining defects, a Notice of Allowance is issued.  This triggers a number of steps that must be followed by the inventor, including at least the payment of an issue fee, to obtain an issued patent.  At this stage, the patent agent will engage with the inventor to discuss options, including additional divisional or other filings which must be made before the patent issues, minor amendments to the disclosure and/or claims without invoking further examination, or even re-submitting the application to further examination for a  variety of reasons.

In addition to the issue fee, some jurisdictions require the payment of periodic (often annual) maintenance or renewal fees after the patent issues.  Failure to pay such fees by the deadline may result in the cancellation of the patent and the loss of all rights in the patent.

Some jurisdictions, such as Canada, also institute a maintenance fee regime requiring the payment of annual fees during the patent application process.

Such maintenance fees, while minor in amount, require considerable attention to be paid in order to ensure that no rights are forfeited, out of proportion to the amount of the fee due.  The patent agent usually maintains a docket of such deadlines and provides reminders to the inventor in advance to ensure that decisions to pay (or not pay) the fee can be made well before the due date.