Filing a patent application: the devil is in the details

Canadian IP Voices is a podcast where we talk intellectual property (IP) with a range of professionals and stakeholders across Canada and abroad.

In episode 9, Marie-Claude Gagnon, patent examiner at the Canadian Intellectual Property Office (CIPO), provides hints from her experience with the examination process. If you’re curious to understand patents and the examination process, why you need to include so much information in your application (and how to make sure you do), and why you should file for a patent before you disclose your invention to anyone else—read on!

Patents provide the owner the right to exclude others from making, using or selling his or her invention. It’s a legal agreement between the applicant and the government that provides the owner of the patent with a monopoly. In exchange, inventors have to provide enough information for others to be able to use the invention after the monopoly expires. This usually happens 20 years after the day the patent application was filed.

CIPO receives over 26,000 patent applications every year and has approximately 375 patent examiners who read and examine applications. They specialize in various areas like biotechnology, chemistry and engineering. They analyze inventions described in patent applications to determine whether a patent can be granted.

The typical path to getting a patent goes as follows:

  1. Inventors and applicants work with a licensed patent agent to prepare and file the application Exactly what is claimed to be the invention is described in the claims section of the application.
  2. Applicants, or their patent agent, request examination (this isn’t automatic).
  3. The examiner starts to examine the application.
  4. The examiner determines if the invention is new by searching prior art such as other patent applications, journals, online or talks at conferences.
  5. The examiner looks for other possible defects or issues in the application and may send a report to the applicant if there are any.
  6. The applicant files a correction or response to that report. If there are still defects, the examiner can issue another report. This back-and-forth dialogue goes on until the application is allowable.

So how do you get off to a good start with a patent application?

Mrs. Gagnon emphasizes that a complete and detailed application goes a long way. To determine what the inventor has the right to protect, the patent examiner has to understand what was invented. The application needs to clearly explain what the patent covers. These kinds of details are available in the patent’s claims. These enable an examiner unfamiliar with the invention itself to fully understand it.

Often though, applications from inventors who file the patent applications themselves don’t include all the necessary information. That could be a problem.

"Applications from unrepresented inventors often don’t include all the necessary information. It all has to be there at initial filing as it’s not allowed to add it later."

Elements like what the invention is, what it does, how it works, what can or cannot be changed for it to work have to be in the application. And although it is possible to modify a patent application after filing, applicants cannot add new information. The applicant must include all these details in the initial application. The process will not allow the applicant to add these details later, which ultimately results in the inventor meeting a dead end.

"Inventors that are not represented go for the easy way to file their patent application, but then it’s so restrictive that it’s not very useful."

How does one ensure the application has the right amount of information?

Mrs. Gagnon points to a successful strategy: applicants and inventors should consider hiring a patent agent and/or IP lawyer to help them. Patent agents are professionals who have the experience and training to include the right amount of information. They typically help inventors write their patent application. They ensure it is complete and covers all the required information. That way the application outlines everything the patent aims to protect, and the applicant doesn’t get “stuck” wanting to add more content to their application later but isn’t allowed to. On behalf of the inventor, patent agents also manage the back-and-forth dialogue with the examiner about corrections required. This continues until both sides agree on the content of the patent application.

"Patent agents are professionals who represent the inventor or the applicant. They help them to write their patent applications, to ensure it is complete."

The patent agent is also probably one of the very few if not the only person you should discuss your invention with before the patent is filed. In the podcast interview, Mrs. Gagnon addresses the topic of disclosure—making your invention known. This can be a major concern to inventors, particularly if they attend conferences to talk about their inventions. Hint: look at step 4 in the examination process above. Mrs. Gagnon also explains that in Canada and the United States, the inventor has a year from the first disclosure to file a patent application. But very few countries have this so-called grace period. So, it is always best to file a patent application first before disclosing it. It is also best to not discuss the invention beyond IP professionals like a patent agent or a lawyer until after the application is filed.

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