Episode 28: How to apply for a patent in the U.S. and other countries

Lisa Desjardins (Lisa): You're listening to Canadian I.P. 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 and 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.

Many Canadian innovators start their patent journey in the U.S. and file for protection with the U.S. Patent and Trademark Office. To do this, it's very common they take the help of a Canadian patent agent who is trained and authorized to represent the applicants in the US. But why do many inventors first seek protection in the U.S. and not Canada? How is the U.S. patent system different to ours? What other systems are used to apply for patent protection in additional countries?

To find out more, we meet with Dominique Lambert, an associate and patent agent at Bereskin and Parr. Dominique has over 15 years of experience from working closely with Canadian organizations and international partners to help them protect their intellectual property in Canada and abroad. She also offers expertise in analysis and opinion on freedom to operate, validity and patentability.

Lisa: Dominique, it's a real pleasure to have you in our podcast, welcome.

Dominique: Thank you, Lisa. It's a pleasure to be here.

Lisa: We have a very interesting conversation ahead of us, and it's very pertinent to Canadians because they actually often start their I.P. journey in the United States. But before we go ahead, I was wondering if you could tell me a little bit about yourself and the kind of training and qualification that is needed to become a patent agent.

Dominique: Okay, so to become a patent agent, you need a technical background. Mine is a B.S.C. in chemistry and an M.S.C. in organic chemistry. And after that you can prepare for the patent agent exams. And I've been a registered patent agent in Canada and the U.S. for over 10 years now, so you need to actually qualify by writing the exam. So basically my work is assisting, as you said, assisting Canadian companies in obtaining worldwide protection for their technology and we also assist foreign companies to obtain protection in Canada. And as a Canadian agent, I'm also allowed to represent the Canadian companies in the U.S. as a U.S. patent agent. And so this is done through drafting patent application and prosecution with the patent offices up to issuance of their patents.

Lisa: Now many small to medium enterprises think that getting a patent is expensive, but they probably have less information about when and how these expenses will occur. So I was wondering if you could take us through the typical journey and the typical expenses along the process of getting IP protection or patent protection and when these typically occur.

Dominique: For sure, for sure. So the cost will be spread over many years. The initial stage is an optional patentability search to assess if your technology is patentable. Is it new? And the biggest part of the budget will be directed to the drafting of the patent application. But that's only once at the beginning, right? But it's a crucial step to your future protection. The quality of your patent application will greatly impact the scope of the protection you may get. So according to money and time invested at this initial stage, is crucial. Trying to cut corners at that stage is not recommended because it may be detrimental down the road to your protection. The next stage will be the filing fees, so the actual government fee to file a patent application. In Canada and U.S. it's not excessive, it's quite reasonable. And these fees may be postponed by taking the P.C.T. route, which is the Patent Cooperation Treaty. We can expand on that a bit later if you want.

Lisa: Perhaps I can add a little question here. Cutting corners in the early stages when you're drafting the claims and when you're kind of putting the fence around your invention, it's… you don't want to cut corners. So practically, how do you work with an inventor there; is this a series of meetings?

Dominique: Yeah, exactly. So basically an initial meeting with the inventors we'll discuss the technology and the advantages, the unexpected features of their technology, how they feel, they are better than when is known. Okay? And then the drafting goes like back and forth with many iterations between the inventors and the agent up until we come to a satisfactory patent application, and then we are ready to file. But trying to cut corners may be detrimental because if you're failing to really describe what you have, or if you're lacking any supporting data, maybe down the road your claims will be not well supported, so you'll end up with a very, very narrow protection, and this is not what you want. So it's important to take the time at the initial stage to draft a strong patent application and this will serve you down the line for sure.

Lisa: You kind of alluded to filing somewhere else and I thought, given their big market, it's quite common for Canadians to file for patent protection in the U.S. first versus Canada, which is a relatively small market. But there's another reason also why they do that. And so I was wondering if you could explain the typical route when people apply for patent protection, starting say with the U.S.

Dominique: So there's a thing in the U.S. which is the concept of a provisional application which does not exist in Canada. So that's part of the reason why many companies tend to go in the U.S. first to use the provisional route. So basically it has like very low filing fees, no examination fees for U.S. provisional and it will give you a 12-month period to improve on your technology, add any supporting data, improvements, and then after that 12-month period you will need to convert that provisional application into a regular application because this one is just provisional. It allows you to set the date of your priority of your protection, but with allowing you a 12-month period to improve and to decide where you should go for your protection. So at the 12-month you will need to decide on specific countries you want to get protection in, or, use the P.C.T. route as I mentioned. The P.C.T. is an international application filed with the World Intellectual Property Organization. You will still need to later file in each of the countries you want protection, but that decision will be postponed by 30 months, so it allows you again to raise some funds, money, decide on your marketing strategy and this is very useful because you also get a preliminary report on the patentability of your invention, which is great because at that point you may decide based on the results of that opinion to not pursue the invention or to take a different route, it may save you money down the line. Instead of filing 10 different applications, you might decide to refrain from doing it. And so typically we recommend taking the P.C.T. route when you are looking into more than 3 countries for protection. So, basically you would have a first U.S. provisional and then 12 months later you will file a P.C.T., and then after 30 months from the provisional, you will need to decide in what countries you want to pursue protection by entering national phase, so converting your P.C.T. into regional patents. Let's say you select Canada, U.S., Europe and Japan for example. I think right now we are at 157 contracting parties. So, filing a PCT will reserve your right to file in all of those countries by the 30-month deadline. That's a huge door open for you.

Lisa: It really is and it's quite a transparent process as well, because you're getting that preliminary report.

Dominique: Exactly.

Lisa: So I wanted to take a step back again to the provisional in the U.S. because it's kind of a secret. No one sees this. You don't draft the claims, but you get this, well, potentially then if you convert it, you get this line in the sand. The date.

Dominique: Exactly.

Lisa: Because we all know like, it's first to file; that's what matters. But there could be some other pros and cons with this and so I was wondering if you could elaborate a little bit. What can happen when you have a provisional?

Dominique: So the pros are of course, as I mentioned, the cheap government fees. Another thing is that you do not need to have a complete patent application to file a provisional. Like in Canada you absolutely need claims at the end of your patent application. That's not the case with a provisional. The con will be that if you do file an incomplete application, then you might be missing some supporting data for your later converted regular application. We always tend to file complete provisional application as much as we can. With the time that we have, because it can bite you down the road if you file an incomplete, because you won't have support, so you won't get that protection date. Another advantage of a provisional application is that if for some reason you decide not to convert it after the one year into a regular application, this provisional will just disappear. It will never be published. So your information is not going to be open to the public.

Lisa: So you can continue to develop and perhaps file another provisional.

Dominique: Exactly. And follow another one, yeah.

Lisa: So let's say I do file a provisional a couple of times just to make it a little bit more complex, and then I convert my last one into a patent application in the U.S.… and then there could be things that the examiner is telling me, you know, I could have 2 inventions in that one for example. And so I was wondering the patent laws in the U.S. are obviously a little bit different than the ones that we have in Canada. Provisional patent application being one of them. But there are some other differences to keep in mind if I file in the U.S. for example, would you speak to that a little bit? For example, the divisional or continuation, in part, what does that mean?

Dominique: So I would say the divisional practice is somehow similar to Canada in that the examiner will tell you: "I consider that there are 2 inventions in your patent application so please remove one", like "please pursue one of them." And in that case you will have the option to take out the second invention and file a divisional application, and that's that is the same in Canada. So you would get the same filing date as the original patent, but it's now split in 2. That's what a divisional is.

In the U.S., there are also some more possible applications. Continuation is an application based on an originally filed application, whichever it is, but you consider that there are more things that you could have claimed, like you obtain a patent, but you consider that there are more things that you could have get as a protection. And then in the U.S., you are allowed to file a continuation application. So you're not adding any new matter, you're just claiming something different. Okay? And if you have additional matter, you are allowed to file a continuation. And part so based on the original application you add new matter. And in that case when you file it you will get that new filing date, but it's going to be a continuation in part that is very specific to the U.S.

Lisa: So take us through the typical journey of a typical patent application for, say, a chemical invention that I want to have protected in the U.S. and in Canada.

Dominique: Yeah, as we previously mentioned, the first stage will be for the agent and the inventors to sit down and really discuss the technology, review every data that the inventor has… and the inventors are the one who know their technology, right? We might be expert in patent law. We might have technical background to understand the technology when it's explained to us, but really it's the inventors who know about their technology. So it's important for them to really talk about it and explain to us what they consider the advantages, the unexpectedness of their technology compared to what is on the market.

And after that, we will always recommend a patentability search. We review the search results and the prior art that came and that will assist us as well in the drafting process because if you know that a prior art is out there, you will not be claiming the same, right? So you will try to go around what exists. So the patentability search is really important. Then we go into the drafting process, which is back and forth between the agent and the inventors. When we have a good application, we usually go and file the U.S. provisional. But some companies might decide: "I'm only interested in the Canadian market, let's file a Canadian" or "I'm only interested in the Canadian and U.S. market, let's go directly with regulars." Because you're allowed to do that, you don't have to go to the provisional route, it just buys you a 12-month period, more so that is our recommendation. But you are allowed to go directly into a regular application. So we will file the application, whichever you choose, and if it is a provisional approaching the 12-month deadline, we will contact the inventors again asking them if they made any improvements additional data. We will make the revisions to the patent application if there is any, and then we'll consider where we should file the regular applications at that point, if you are going to the P.C.T. route or the regular applications. And after filing your regular application then you will enter into the prosecution route, which is the exchanges between the agent and the local examiners.

Lisa: If you're in a rush, there is something called the Patent Prosecution Highway. Can you explain what that means?

Dominique: Yes, for sure. So basically it's an agreement between multiple patent offices, including Canada and the U.S., Europe, most of the major patent offices. And it allows you, if you have a patent allowed or issued in another jurisdiction, you can tell the Patent Office to rely on that analysis to accelerate examination. So it helps examiners by telling them, "see your colleague in Europe or in the U.S. already did all of that work so please base your opinion on that." So it does accelerate its free to accelerate examination in that sense under the P.P.H. So it's a great way to go, quicker to issuance of the patent, for sure.

Lisa: But it builds on a level of trust between the different examiners and the different offices. So I was wondering, I don't know if you can answer this, but has there ever been an advantage to then first apply to a country where you kind of say, "Oh, I think I'm going to get my grant here quicker and then I will go for the Patent Prosecution Highway" to sort of faster, get into the other countries?

Dominique: Well, all the examiners, they are not bound to the position of the foreign offices, so it's a way to accelerate things, but they don't have to follow the same and come to the same conclusions. So even though you have an allowance elsewhere and you want to accelerate in Canada, that's fine. You will receive accelerated examination, but the Canadian examiner, at the end of the day, he doesn't have to come to the same conclusion. It depends on the local laws, and this changes for every country, so it's just a way to accelerate things.

Lisa: Hmm, okay, amazing information. Dominique, it's been really interesting. A last question, which I also don't know if you can answer, do a patent clients need to keep track of the number of patents they apply for every year?

Dominique: [laughter] Probably some do, I don't know about that. What we are really trying to achieve with our clients is to be part of their team, so we discuss very often and we want them to get the broadest protection they can get, and really the most valuable protection for their company. If you're getting protection on A, but really you're going to sell B, then your patent, even though you got it, might not be as valuable as it should. And so we're really trying to get the most useful and valuable protection for our clients, so we don't keep track of the numbers.

Lisa: Thank you, Dominique. It's been really, really interesting to hear the insights directly from a patent agent with so much experience like you have. Thank you so much for being part of this podcast and thanks for helping educating Canadians on how to use IP more effectively.

Dominique: My pleasure. Thank you, Lisa, for inviting me.

Lisa: Thank you.

You've listened to Canadian IP Voices where we talk intellectual property. In this episode we met with Dominique Lambert, who is an associate and patent agent at Bereskin and Parr, one of the bigger IP law firms in Canada. Dominique explained the reasons and procedures for filing a provisional patent application with the U.S. Patent and Trademark Office. The U.S. provisional patent application doesn't offer the same protection as a regular patent as it doesn't have complete claims and will not be examined, but it can be an affordable option to get a priority date for your invention while keeping your invention confidential and giving you up to one year to improve and develop your invention before you file the complete application and decide where else in the world you are going to file for patent protection.

Open the description to this podcast to learn more about the provisional application for patents.