A Guide to Patents: Part II (Page 3 of 5)
Patents – Getting Started
Preparing a patent application
Abstract, specification and drawings
A patent application consists of an abstract, a specification, and often drawings.
The abstract is a brief summary of the contents of the specification.
The specification is made up of:
- a clear and complete description of the invention and its usefulness; and
- claims that define the boundaries of patent protection.
The description must be clear and accurate, and it should be as simple, direct, and free from obscurity and ambiguity as possible. The description is addressed to persons skilled in the art or science to which the invention pertains and must be so written that those persons would be able to put the invention to the same successful use as had the inventor.
After the patent is issued, information you specify as protected by your claims cannot be used freely (for example, copied, manufactured or sold) by others until the patent expires. Information not protected by your claims can be used right away by anyone.
The challenge is to draft the claims so your invention is defined broadly enough to provide maximum protection while at the same time being specific enough to identify your invention by making sure it is different from all previous inventions.
Assisting your patent agent
To help your agent in getting the strongest possible patent while avoiding unnecessary costs, you can prepare a statement covering the following points:
- subject matter of the invention
- a broad description of the invention
- objectives of the invention (that is, its main practical advantages over existing practices or products)
- the "preferred practice" or most appropriate use of your invention, with details of at least one practical application
- features of the invention that are new and distinct from what has come before, whether they may be patented or not
- the scope of the invention (for example, materials, compositions, conditions, etc.) used to obtain good results
- the invention's limitations (for example, if good results can be obtained throughout the given range of the invention, or if there are exceptions)
- the results of laboratory or commercial tests showing both "preferred practice" (see item #4 above) and the conditions under which poor or dangerous results could be expected
- lists of relevant patents or technical articles you have already found in any literature search, including full details such as: name of the inventor, number of the patent, country and date of issue or name of the periodical and its date with a list of the similarities and differences of practices or products that are relevant to your invention
- any disclosure you have made (for example, people you may have told about your invention)
- your name, address and citizenship
- all countries in which you would like to file for a patent
Filing your application
Filing a patent application means preparing a formal application and asking the Commissioner of Patents to grant you a patent.
To receive an official filing date in Canada, you must submit no less than the following:
- a statement that a patent is sought
- documentation describing an invention
- your name
- your address, or your patent agent's name and address
- the filing fee, and signed small entity declaration if applicable.
Note: If you don't send a proper description of the invention, the Patent Office will not give you a filing date, will return the papers you have submitted, and will refund the filing fee, less $25.
A complete patent application includes the information listed on the previous page, as well as the following:
- a formal petition (see Appendix B)
- abstract of the invention (see Glossary or description above)
- claim or claims to the invention
- any drawings mentioned in the description
- nucleotide sequence listing, if applicable, in electronic form
- appointment of a patent agent or representative, when required
If you are applying for a patent but do not live in Canada or work at a specified Canadian address, you must appoint a representative who lives or works in Canada on the filing date of your application.
Note: It is best to file a full description of your invention and a complete application from the start; however, this is not always possible. If necessary, any of the items listed above may be submitted, without charge, within the 15 months following the priority date (or the filing date if there is no priority date).
If your application is still incomplete after 15 months, you will be notified by the Patent Office, and you will have to complete the application within a certain amount of time as well as pay a completion fee.
Models and specimens of your invention should not be submitted unless the Commissioner of Patents requests them.
Once accepted for filing, your application is assigned a number and filing date, and you will be informed about these. This is no guarantee of a patent; it simply means your application is pending.
The application will be open to public inspection (that is, the public will have access to your application) 18 months after the filing date or priority date. If you wish, you may request to have your application opened earlier.
Your application will not automatically be examined simply because you have filed it.
You must formally request examination and attach the examination request fee (located on the CIPO website). This request must be made within five years of the Canadian filing date, otherwise your application will be considered to be abandoned. If this happens, you may request reinstatement through a letter to the Commissioner of Patents and the payment of the prescribed fee.
There are several reasons why you might file an application and not automatically request examination. Perhaps you need time to assess the feasibility or marketability of your invention. If so, filing provides some protection for your invention, possibly making your competitors less likely to infringe (that is, make, use, or sell) on it for fear of having to pay retroactive compensation should your patent eventually be granted.
However, if you do not request examination within the five-year period and the reinstatement period has passed, anyone will be able to freely make, use or sell the products or processes described in your application.
Once you have requested examination, be patient! The large number of patent requests received by the Patent Office means the examination process may take more than two years.
Filing prior art and protests
After your patent application is made available to the public, anyone may raise questions about the patentability of your invention or one of its claims by filing "prior art" — information that might cause the patent examiner to object to one or more of your claims. The prior art can be patents, patent applications that have been open to public inspection, and published material that has a bearing on the case.
Anyone may also file a protest against the granting of a patent. Such protests will be made available to the public.
You may have special reasons for wanting an early examination of your application. Perhaps you expect competition soon, or you hope to establish a business once you have received protection for your invention. If your case is exceptional in this way, you may ask for advanced examination. An extra fee will apply.
Note: An advanced examination request will not be considered unless the application has been laid open to public inspection and a request for examination has been made.
What to do if your claim is rejected
The patent examiner often will object to some claims. The examiner may find previous patents or publications that show every feature of one or more claims in your application. Or, the examiner may feel some claims would be obvious to a person with ordinary skills in the field. The examiner's objection will be outlined in a report or letter called a "Patent Office action," which will provide objections, as well as a date for reply. The action may object to your whole application, or only some claims, or it may ask for other changes in your application.
Responding to the examiner's objections
Don't feel discouraged if the examiner objects to some of your claims. You may respond to the objections as long as you do so within the period specified in the action. You or your patent agent must send the response to the Commissioner of Patents.
The response may ask the Commissioner to amend your application by changing or cancelling some claims, or adding new claims. You must meet or overcome each objection raised by the examiner.
Helping your agent with amendments
Your agent will carefully study the Patent Office action to help you decide whether to proceed, amend or abandon your application now. If you decide to continue, you may be able to help prepare an amendment letter to point out the new features and advantages of your invention, as compared to others listed in the Patent Office action. Let your agent know quickly if you want to make changes to your invention, as she or he may recommend filing a new application.
Reconsideration by the examiner
Once the examiner receives your response, she or he will study it and prepare a second Patent Office action. This may be a "notice of allowance" informing you that your application is allowable, or it may be a call for further amendments. This exchange of Patent Office actions and responses may be repeated until the examiner allows your application, or states that the action is final.
If the examiner makes a final objection to your application, you have the right to appeal to the Commissioner of Patents, requesting that the Commissioner review the examiner's objection.
The review is conducted by the Patent Appeal Board, a special committee of senior Patent Office officials. If you wish, you may appear before this board. If the Commissioner objects to your appeal and refuses to grant a patent, you may take your case to the Federal Court of Canada, and from there to the Supreme Court of Canada.
Summary of steps to obtain a patent in Canada
- Determine if you need a patent agent.
(Note: If you choose to have an agent, they may assist you in the remaining steps.)
- Do a preliminary search (if there is an existing patent, consider ending the process now).
- Prepare a patent application.
- File your application.
- Request examination.
- Examiner does search for prior patents and studies your claims.
- Examiner either approves or objects to the claims.
- Respond to the examiner's objections and requirements.
- Examiner reconsiders and either approves or calls for further amendments.