Understanding the patent process

Navigating the process to obtain a patent is complicated and so this month we invited Dan Polonenko to help answer some questions to help local entrepreneurs and business owners understand more about the patent process.

Dan is a registered Canadian and US patent agent in Gowling WLG’s Calgary office with a practice that includes patent drafting and prosecution in the fields of health, medical devices, oil, gas, energy, environmental equipment and technologies, and process engineering. 

What is a patent?

A patent is a legal grant of a commercial monopoly provided by a Government Patent Office.

An issued patent is valid and enforceable in the country wherein that country’s Patent Office issued the patent.

Is there a place that I can search to find out if my invention is unique?

Each country’s Patent Office makes its patent database available for searching. For example:

in Canada

in the USA

in the World Intellectual Property Office (WIPO)

One of the best free patent search engines is Google patents

What is the process to get a patent and how do I determine if it is feasible to do so?

The process to obtain patent protection generally includes the following steps:

1.Summarize the proposed invention and list the key elements (or components or steps).

2.Determine if the proposed invention is potentially patentable and there are 3 criteria to consider:

(i) Is it novel, i.e. has it been completely disclosed in public before, e.g., in published patent application, in a website posting or on social media, has it been presented at a tradeshow or in a slide presentation?

(ii) Is it obvious to someone skilled in the art, i.e., would someone working in that field be able to combine one or more previously publicly disclosed documents or presentation, and produce your invention from those combinations?

(iii) Does the invention have utility, i.e. commercial value (would somebody be willing to pay you money for the invention?)

3. If it is determined that your proposed invention is patentable (i.e., novel, not obvious, and has commercial value), then this step is to write a patent application and submit it to a Patent Office.

(i)  The Patent Office will review your patent application and will make a decision whether or not it is patentable.

(ii) If the decision is yes, they will issue a Notice of Allowance and a deadline for paying the issue fee. After you pay the issue fee, the Patent Office will issue your patent.

(iii) If the decision is no, the Patent Office will issue an Office Action that lists their objections and rejections and provide a limited time period for you to respond. You can then prepare and file a response which the Patent Office will consider and respond to. This part of the process is called “prosecution”, and may take anywhere from 2 – 10 responses and Office Actions before the Patent Office will issue a Notice of Allowance. Quite often, patent applications are abandoned during the prosecution process.

4.  After the patent is allowed, regular maintenance fees are required to keep the patent in good standing.

-        In Canada, maintenance fees are required annually,

-        In the USA, maintenance fees are required every 4 yrs.

What kind of inventions can be patented?

We can patent anything that is new, un-obvious, and useful. The categories generally are:

-  Devices, apparatus, equipment, and machines.

-  Systems for doing or providing something wherein a number of different devices and/or apparatus and/or equipment are required.

-  Compositions of matter, e.g., formulations that contain mixtures of things, active ingredients and carriers, and the like.

-  Methods of manufacturing or producing something.

-  Processes for executing commands (e.g., software for controlling systems)

What information needs to be provided in a patent application?

A patent application has to include the following parts:

1. A title,

2. A short description of the prior art (or what’s currently available) and the problems with the prior art,

3. A summary section (that summarizes the claims section),

4. A description of the drawings presented with the application,

5. A detailed description of the of the invention,

6. A set of claims, and

7. An abstract (which is a 1-paragraph short summary of the claimed invention).

Can anyone prepare a patent application or is it best to hire a professional?

Anyone can prepare and file a patent application, but in the long run, it is better to hire a registered patent agent to prepare and file the patent application.

The reason is that a registered patent agent is experienced in drafting the application and has a deep knowledge of the format required and detailed information required for each part of the patent application. Applications prepared and filed by registered patent agents have a much higher probability of quicker prosecution with and allowance by the Patent Offices.

How long does a patent last?

The lifetime of a patent is 20 years from the filing date of the first application.

Is it recommended that a patent be filed in different countries and why?

Patent applications should only be filed in those countries where there is: (i) a market potential for sales of the products or services, and/or (ii) a likelihood that a competitor may manufacture and ship infringing products (or provide infringing services) to other countries.

My rule of thumb is that there should be a revenue potential of at least $10 million/yr in a country to justify incurring patent protection costs in that country.

What is the approximate cost to file a patent?

The cost to file and protect a patent: (i) depends on how simple or complex the invention is, and (ii) is typically spread-out over 3 – 5 yrs depending on how quickly or slowly the prosecution process takes place.

The all-inclusive cost to protect an invention in Canada during the drafting, filing, prosecution, and issue process will likely be in the range of about $10,000 - $15,000 over a 1-2 yr period for less complicated mechanical inventions to anywhere from $25,000 - $50,000 over a 3-5 yr period for more complex inventions involving multiple components and element.

Similar costs are typical for each additional country filed in.

If you wanted to explore the patent process, you can reach Dan by phone at 403-298-1950 or by email at dan.polonenko@gowlingwlg.com

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