Episode 9: Behind the scenes: Experiences (and hints) from a patent examiner

Lisa Desjardins (LD): You’re listening to Canadian IP Voices, a podcast where we talk intellectual property with a range of professionals and stakeholders across Canada and abroad. Whether you are an entrepreneur, artist, inventor or just curious, you will learn about some of the real problems and get real solutions for how trademarks, patents, copyrights, industrial designs and trade secrets work in real life.I’m Lisa Desjardins and I’m your host.

The views and opinions expressed in this podcast are those of the individual podcasters and do not necessarily reflect the official policy or position of the Canadian Intellectual Property Office.

Patents are a key driver of economic growth. Through a patent, the government gives the inventor the right to stop others from making, using or selling an invention from the day the patent is granted to a maximum of 20 years after the day on which you filed your patent application.

In 2019, the Canadian Intellectual Property Office received over 36,000 patent filings. That’s almost 100 patent applications per day, every day of the year. And if you ever wondered, patterns are often quite long and complex documents. So who’s reading and examining these applications? Well, the Canadian Intellectual Property Office has over 350 patent examiners specializing in biotechnology, chemistry and engineering. These patent examiners are the ones who read and analyze the inventions described in patent applications. They’re the ones who examine the application and communicate with the applicant whatever defects need to be corrected before a patent is allowed or issued.

And today we’re meeting with Marie-Claude Gagnon, a patent examiner at CIPO to talk about what this job is about and maybe ask if she has any stories or tricks to share to anyone who’s curious about patent examination. Marie-Claude, welcome to the podcast!

Marie-Claude Gagnon (MCG): Thank you.

LD: Can you tell me a little bit about yourself and the kind of work you do as a patent examiner?

MCG: Well, I studied in mechanical engineering. I have a bachelor’s in mechanical engineering and a master’s in aerospace engineering. I’m a patent examiner in the mechanical division at CIPO. So, what I do is I, as you said, examine patent applications. I determine if a patent can be granted and, if there’s defects, I write a report on a defect to be corrected to the applicant. And this process continues until the patent is in order to be granted.

LD: You have an interesting background. You were actually a patent agent before, that’s someone who typically helps inventors to write their patent applications. Can you tell me about the career change from a patent agent to a patent examiner?

MCG: Yes, well, I like patents. I’ve been a patent agent for about 15 years, but I felt I needed a change of pace. I wanted to do something else related to patents, so that’s how I came into the role of examiner. The patent agent is the person who represents the inventor, or the applicant, with the patent office. They’re the one who is, if we can say, “arguing” with the examiner until both agree on the contents of a patent. So you could say I switch sides.

How do you become a patent examiner? It’s something that you learn on the job. It’s actually similar to how you become a patent agent. Both are not something you can learn at school. It’s something you learn while doing it. For examiners, there’s classroom training that’s given by CIPO and then training with a trainer to do the actual work more and more independently until the examiner in training can do it on their own. Ad even during COVID, we had trainees who started to work and did virtual classes to learn the basics of how to examine.

LD: You mentioned the work of an agent, them being the one kind of arguing with the examiner. I know that’s a very important dialogue and, I think, with so many patents coming per day, how do you organize all these applications?

MCG: Applications are, well, there’s a classification system, so classes that are associated with each patent application based on the area of technology. It’s a bit similar to classification of books by subject in a library. And then this allows the applications to be divided into larger and smaller categories. For example, examiners are divided into several divisions, so mechanical, organic and general chemistry, biotechnology, electrical. And within these divisions, there’s groups or pools of subject matter that include several examiners that share the applications based on their classification. So, for example, for me, I examine agriculture, hand tools, some elements of civil engineering and applications related to manufacturing processes that use plastics and composites. So, examiners can ask to examine particular areas of technologies or leave these areas for others if they want. And what’s interesting is that, because the patents usually follow the trends in technologies, while examiners naturally are kept up to date as to what’s happening in their different areas because they’re examining the applications that deal with the new inventions of these areas.

LD: Let’s take a few steps in the shoes of an inventor. Let’s imagine that I have invented the next big thing. And, of course, I want to keep this a secret until I have a patent. Can you walk me through the typical process of how the application is typically created and what happens after CIPO receives it?

MCG: First, you only need to keep your invention secret until you file the application. So once it’s filed, it’s not a problem to disclose the content of what was filed. You don’t have to keep it secret until you get the actual patent. The process first starts with the inventor preparing the application. Usually, they do this with an agent, and they file at CIPO. And then they have to ask for the application to be examined. Once the application has passed a certain number of formality requirements. And, once examination has been requested, then the examiner gets the application, and they search to see what already exists. That’s what we called prior art, and we determine if the invention is new and not obvious in respect of that prior art. And the examiner also checks for other defects that are not related to the prior art. And they send a report if there are some defects.

So, as I said before, the examination is a back-and-forth process. So, the examiner writes a report. The applicant, usually via their agent, files a correction or response to that report, and then another report can be issued if there’s still defects. And this goes on until the application is allowable. And during the process, what the patent actually covers, that’s defined by the claims of the patent. It’s fine-tuned, so it’s a bit like defining a fence around what the inventor actually invented and has the right to protect. So, this is the portion of the patent application that is in evolution during examination and is set once the application is allowed and the patent is granted.

LD: As you started your description, you talked about disclosure. This can be a concern to inventors. What could happen if I talk about my invention at, say, a conference or on the internet or somewhere else before I have filed for a patent application.

MCG: Well, in a lot of countries, you can’t obtain a patent if the invention is disclosed before filing. Your own disclosure becomes prior art against the application. So, your patent would have to be new and not obvious with respect to what you disclose. And if you disclose the actual invention, then you’re in trouble. In Canada and the US, however, the inventor has a year from the first disclosure to file a patent application. It’s kind of a grace period—that disclosure within a year before the filing does not count as prior art. It’s always best to file before disclosing, though, if you’re interested in protection in other parts of the world.

LD: The vast majority of patents are filed with the help of an agent. You receive patent applications written by both agents as well as what we call unrepresented inventors. Can you give some perspectives of the main differences you see between these applications as an examiner?

MCG: Okay, so first, you have to consider that a patent is a bargain between the applicant and the government. So the owner of the patent has a monopoly. But in exchange, they have to provide enough information for others to be able to use the invention after the monopoly expires. And a patent application, it can be modified after filing, but you cannot add new information. It’s important for all that required information—what the invention is, how it works, what can be changed and cannot be changed for it to work and even what the inventor knows would not work—it all has to be in there at initial filing. It cannot be added later. And often applications from unrepresented inventors don’t include all this necessary information, and then the inventor is stuck because, to make their application acceptable, they would need to add new information, but that’s not allowed.

And also, part of the job of the patent agent is to tease this information of the inventor, ask the questions to get this information that the inventor didn’t even know was needed so that the application is complete. That part can be often missing if there’s no agent helping the inventor with their application. And I talked earlier about what the patent covers—this fence that defines what’s protected by the patent. It’s easy to get a patent for a very small fence. But then it’s easy for the competitors to get around the fence, so the patent is not really doing its job. It’s not providing the monopoly that the inventor is allowed to get. And that’s also something we can see with inventors that are not represented because they go for the easy way to get their patent, but then it’s so restrictive that it’s not very useful. The patent agent is there to ensure that this fence has the proper size so that it covers what can be protected, nothing more and nothing less.

LD: If you met with an inventor who thinks that they’ve invented something new, what would you say to them?

MCG: Well, don’t show your invention to others. Don’t discuss it in person or in writing. Don’t publish a video of it. Don’t present it at a conference before you file a first patent application on it. Of course, you can discuss it with professionals like a patent agent or a lawyer, but don’t go beyond that. And if you want to use your patent, if you want it to be worth something, then hire a patent agent. It’s going to cost more than doing it yourself, but in the end, the patent will be worth it.

LD: Marie-Claude, it’s been great to hear some of your work and what it means to be a patent examiner. Thank you so much for being on our podcast.

MCG: Well, you’re welcome.

LD: You’ve listened to Canadian IP Voices, where we talk intellectual property. Today, we met with Marie-Claude Gagnon, who is a patent examiner at CIPO. Marie-Claude explained what the job is all about and also highlighted some of the benefits in working with a registered patent agent to include just the right amount of information as you write a patent application. To find an agent, visit the College of Patent Agents and Trademark Agents at cpata-cabamc.ca. If you’re interested in working for CIPO as an examiner, visit cipo.gc.ca/recruitment to learn more.