Performing a Prior Art Search and Patentability Analysis
In order for an invention to be patentable, it must be at least novel, inventive, and useful. With that in mind, the first step typically undertaken in the patent process is the performance of a “prior art” search. This is a search of the existing patent literature and other publicly available literature. The purpose of a prior art search is to uncover any document (“prior art”) that may pose a problem to the novelty, inventiveness, or utility of your invention. A patent agent or a patent searcher typically performs a prior art search.
If prior art documents are located, a patent agent will typically be engaged to analyze the relevance of these documents to the invention. If a prior art document fully discloses your invention, then the invention cannot be considered new and therefore would not patentable. If two or more prior art documents can be combined to arrive at your invention, then the invention is not inventive and therefore not patentable. This search isn’t just about documents published by others, but is also about documents that you may have published yourself.
No prior art search is 100% comprehensive. For example, patent applications generally enjoy an eighteen (18) month confidentiality period from the date of filing. That means a prior art search of the existing patent literature will not capture patent applications that were filed within the past 18 months. Also, any public disclosure around the world may be used to challenge the patentability of an invention, and this includes documents that are published in other languages or other jurisdictions. However, a properly completed prior art search will still give you a good idea of the state-of-the-art in your particular industry and the likelihood that your invention is patentable. A prior art search is therefore an invaluable investment regardless of its findings or outcome.
Drafting a Patent Application
Assuming you are satisfied following the prior art search, you will then have to draft a patent application. A patent agent is typically engaged for this exercise.
As succinctly stated by the Supreme Court of Canada, “[t]he patent system is based on a ‘bargain’, or quid pro quo: the inventor is granted exclusive rights in a new and useful invention for a limited period in exchange for disclosure of the invention so that society can benefit from this knowledge”. The “disclosure of the invention” crucially important in the patent application itself. Put in another way, a patent application may be thought of as an instruction manual for your invention.
A patent application is typically broken down into the following sections:
(ii) technical field;
(iv) summary of the invention;
(v) brief description of drawings;
(v) the detailed description;
(vi) the claims; and
While each section has a unique role in a patent application, particular emphasis is often placed on the “detailed description” and “claims” sections of a patent application.
The “detailed description” section of a patent application is, as the name suggests, a detailed disclosure of your invention. In other words, a comprehensive description of: (i) what your invention is; and (ii) how it works. The “claims” section defines the boundaries of the patent protection scope that you are seeking. The “detailed description” and “claims” sections go hand-in-hand, and the subject matter forming the claims must be supported by the description of the invention set out in the patent application. It is important to draft both of these sections correctly. The value of your patent application primary resides in these two sections.
While conceptually simple, the actual mechanics of drafting a proper patent application are not straightforward. Care and diligence in drafting a patent application are required in order to ensure that an invention is properly disclosed and that the legal requirements governing patents are followed. This is again where the value of an experienced patent agent cannot be understated.
However, you can greatly assist your patent agent in the drafting process by providing him or her with easy to understand details regarding your invention. Diagrams and other drawings are always helpful. In order for your patent agent to draft a proper patent application, he/she must understand the invention, as well as the inventor, does.
Filing your Patent Application
So, your patent application has been drafted. Now it’s time to file it with a patent office and secure a filing date.
The patent system works on a “first to file” basis. In other words, the first party to file a patent application for an invention gets first rights to prevent others from using that invention.
While many applicants will often submit the first filing of their patent application in their home jurisdiction, this may not always be the case for various commercial reasons. In addition, there may be other regulatory issues which impact where the first filing may occur, such as:
(i) the nature of the invention;
(ii) who the inventors are;
(iii) where the invention was conceived; or
(iv) who the applicant is.
For example, in applications where there are multiple inventors with different citizenships, where the invention itself was conceived in a foreign jurisdiction or one or more jurisdictions, or where the subject matter is of a sensitive nature, care must be taken to ensure that the first filing is executed in the right jurisdiction. An incorrectly filed patent application may result in loss of patent rights in some jurisdictions or other penalties. Indeed, nothing in the patent system is as straightforward as it seems.
Protecting your Invention in more than one Jurisdiction
Each jurisdiction has its own patent regime, and patent protection in one jurisdiction does not extend into another jurisdiction. In other words, you must submit a patent application to the patent office of each jurisdiction that you want protection in.
Typically, you will have one (1) year from the date of your first filing to decide where else in the world you’d like to seek patent protection for your invention. To seek patent protection in those other jurisdictions, you would simply submit a patent application for your invention to those jurisdictions and inform them of the details of your first filing. If, at the one year mark, you are still undecided as to where you’d like to seek protection for your invention (e.g. you require more time to do market research or to investigate the commercialization potential of your invention), you may push off that decision by an additional 18 months by filing an “international” application with the appropriate receiving office. However, unlike the patent applications discussed above, the “international” application is just a time holder and never becomes a granted patent. At the end of the lifetime of the “international” application (i.e. typically 30 or 31 months from the date of first filing), you must select the jurisdictions that you want to pursue patent protection in and file a patent application in those jurisdictions accordingly.
Choosing the jurisdictions to seek protection for your invention in is very much a business decision. For example, it may not be business savvy to seek patent protection for your invention in a jurisdiction that you won’t ever do business in. On the flip side, it may make sense to seek patent protection for your invention in a jurisdiction that you intend to do the most business in down the road, even if you have no immediate plans. Discuss with your business partners and patent agent as to what may be right for your business. Like any business asset, your patent applications should be pursued in line with your business strategies and goals.
Prosecuting your Patent Application
After a patent application has been submitted to a patent office of a particular jurisdiction, that patent office will review the patent application to ensure that it complies with the applicable laws.
If the patent office discovers one or more defects in your patent application, the patent office will issue an official letter called an Office Action which summarizes those defects. The Office Action will also provide you with a deadline to address those defects (either by argument or by amending the application). You must respond in good faith to all issued Office Actions in order to keep your patent application alive in the jurisdiction.
Assuming that you are able to overcome any and all defects identified by the patent office, your patent application for your invention will be allowed in that jurisdiction.
Bringing your Patent Application to Registration and Subsequent Maintenance
A patent application is brought to registration by paying a government fee by a set deadline. In order to keep your registered patent in good standing, you will typically have to pay a fee by certain prescribed dates (e.g. an annual fee, a fee every 3.5 years post-grant, depending on the jurisdiction). If such fees are not paid on time, then your registered patent may lapse, and your invention may become unprotected in that jurisdiction. If you maintain your registered patent in good standing, then you will enjoy the fruits of your labour and investment for the duration of the patent protection period (i.e. typically 20 years from the deemed filing date of the patent application in that jurisdiction).
If you have any questions regarding the patent process or think you may have a patentable invention, please do not hesitate to contact us. We would be delighted to assist you in realizing your business goals. Please note that this article is intended to be an overview of the patent process, and is not a detailed description of the patent process or a how-to DIY guide.