Wilson Lue LLP Patent & Trademark Agents, Intellectual Property Counsel

Overview of the patent process

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The patent process is a series of steps, starting with a prior art search and evaluation, and ending with enforcement.

Before you begin the process, it is important to understand that many countries will not permit you to patent an invention that was made public before your patent application is filed, and that once you file a patent application, with few exceptions your application will be published, whether or not you ultimately receive a patent.

Many countries have an “absolute novelty” bar to patenting, meaning that if the invention is considered to have been made publicly available, it cannot be patented because it lacks novelty—in other words, the invention has to be secret until you obtain a patent filing date. Other countries, including the United States and Canada, permit “grace period” disclosures: the invention can be made public, as long as a patent application is filed within 12 months of the earliest public disclosure. Therefore, to maximize worldwide protection, at least a first patent application should be filed before your invention is publicly disclosed; other patent applications can be filed within twelve months (see our other guide on Patent Filing Strategies).

If you must reveal the invention to others before filing a patent application, make sure this is done under an adequate non-disclosure or confidentiality agreement to protect your right to file worldwide. But if you have shown or told others about the invention outside a confidential relationship, consult with us to determine whether it is actually a novelty-destroying disclosure that prevents you from seeking patent protection.

All patent applications are published by patent offices 18 months after the earliest effective filing date of the patent application, unless the application is withdrawn before the patent office starts preparing the application for publication, or the patent office offers a non-publication option. What this means for you is that you must be certain you want to commit to the patenting process, which takes time and money. Depending on the nature of your invention and your commercialization plans, it may be to your advantage to keep the invention as a trade secret instead. We can advise you on the best strategy.

1. Prior art search and evaluation

The patent process can require commitment of a significant amount of time and resources, especially when seeking patent protection in several countries. In addition, your patent application will be published 18 months after its earliest effective filing date, meaning that knowledge of your invention will be available to others to study and improve on—even if you ultimately do not obtain a patent.

A prior art search and patentability evaluation is optional, but it will help you make decisions about whether to file a patent application, or, if appropriate, to
seek other forms of protection or protect your innovation as a trade secret. If you choose to proceed with patenting, the information about the prior art gained from the search can help in the drafting the application and potentially reduce the time and resources needed during the examination stage.

2. Drafting

The patent application is prepared, preferably by a trained professional. A complete patent application includes a techno-legal description of the invention, drawings where necessary, an abstract, and claims defining the legal monopoly you wish to obtain for your patent.

The application needs to conform to the regulations of the jurisdiction(s) in which it will be filed. The substantive content of the application must be sufficiently
complete and clear so as to meet the legal requirements for patentability and validity in each jurisdiction. While amendments are possible during the examination process, no new content can be added to the application after it is filed.

The patent application is not a marketing document. You must provide sufficient information for others skilled in the field to be able to make the same successful use of your invention as you describe. You cannot conceal vital information or mislead the reader concerning the benefits of your invention; doing this can result in your patent being invalidated.

3. Filing

Applications are filed in the patent office of each jurisdiction where protection is sought. There are strategies that permit you to spread out the cost and effort to file patent applications in each country of interest; please see our guide on Patent Filing Strategies for more information. Regardless, a first patent application
should be filed before the invention is publicly disclosed. Only certain countries have a limited “grace period” for disclosure of the invention before any application is filed.

4. Publication

Patent applications are published 18 months after your earliest effective filing date. This permits the public to learn from your invention whether you obtain a patent or not. It also gives others the opportunity to file protests or prior art against your patent application before it issues to patent.

Some countries provide patentees with the ability to recover compensation for acts by third parties during the period that your patent application was published, if
those acts would have infringed your patent claims. This compensation will only be available if the patent issues.

5. Examination

Each patent office has an examiner carry out a prior art search and examine the application for compliance with local laws and regulations, including the legal
requirements for novelty, non-obviousness (inventiveness), and utility.

The examination process, commonly referred to as “prosecution”, usually involves one or more rounds of correspondence with the examiner to address any issues that the examiner identifies. Most issues are concerned with the claims, and whether they adequately capture novel and inventive features in view of the examiner’s search and opinion of the prior art. Some issues may be addressable by argument alone; others may require amendment (usually to the claims), which is permissible as long as the amendments are supported by the originally filed application. Prosecution can last from a few months to years, depending on the issues raised and the practice of the particular patent office.

Once the application is found to be in compliance with applicable laws and regulations, it is allowed. If, at the end of prosecution, the examiner still does not
think the application is allowable, then the application is finally rejected. At that stage there are procedures within the patent office to permit you to either restart the examination process or appeal the examiner’s rejection. Unsuccessful appeals may be reviewable by a court.

6. Allowance and grant

Once the patent application is allowed, you must then complete any outstanding formalities and pay fees to have the patent granted.

Some countries have “working” requirements. If you do not exploit your invention in that country, your patent may forfeited or third parties may be able to apply for
compulsory licenses to use your invention. There are no such working requirements in the United States or Canada, although if you are not making use of your invention it may impact the quantum of damages you are able to collect from infringers.

7. Maintenance

Once granted, periodic fees are required to keep the patent in force. Many patent offices, including the Canadian patent office, also require maintenance fees to be
paid throughout the pendency of the application.

8. After-grant amendments

While you have opportunities to amend your patent application during pendency, the content of your patent is fixed once granted. Corrections or changes can only
be made in limited circumstances, most of which require that you establish that the error or omission in your patent was due to mistake or inadvertence. These types
of changes cannot be used to recapture claim scope that you had given up during examination. If you discover new pertinent prior art, you can choose to have your
patent re-examined in order to amend your claims or confirm their patentability.

9. Enforcement and third-party challenges

Once granted, your patent can be asserted against infringers. It is up to you, with the assistance of legal counsel, to police and enforce your rights. Infringement
generally occurs when a third party makes, uses, sells, or offers for sale your claimed invention. The infringer must take all of the essential elements of a patent
claim; there is no infringement if the infringing act omits an essential claimed element. Identifying and defining the essential elements of your claims is generally
a legal task, informed by the knowledge of the person of ordinary skill in the art in the relevant technology.

There are also mechanisms within the patent office and the courts to permit third parties to challenge the validity of a patent.