 |
NEXT STEPS
- Depending on the intentions of the inventor, i.e., whether
they are planning any immanent public disclosures, whether they are
still developing their product, or whether they seek to attract
investors, usually if a provisional has been written, it should be
filed as soon as possible.
- Inventive Solutions will require the full names and
nationalities of the inventors for the cover sheet..
- Usually Inventive Solutions will file the provisional
application, and bill the client for the filing fee when it
becomes available (need exchange rate).
- If there have been any public disclosures, the inventor has up to one
year to file a full patent application referring to their
provisional priority date.
- With no public disclosures, an inventor may chose to file a
new provisional after the old one expires, but they will not get
the old priority date.
- If the inventor neglects to file a proper patent application
within a year, and they have made any public disclosures, they
will lose the right to ever patent their invention. The patent
office has given the inventor an extra year of protection, for
which it expects that the inventor will keep their promise, and
file a full patent application.
- For the above reasons, the inventor must take all deadlines
and disclosure issues seriously. Pay special attention to the
possibility that some
countries may not allow an inventor to patent in their country if there have been
any public disclosures before formal patent application is filed.
- Note that a provisional application is not examined during the year of
pendency, but remains on file in anticipation of the formal patent
application.
- When a formal application is filed, and assuming the provisional is
thorough enough to claim all of the elements that are claimed in
the formal application, then the provisional is discarded, and examination
phase (see below) of the formal application process is now ready
to begin.
Top
of the page
- Patent application examinations require that either the
inventor represent themselves before the patent examiner, or that
they be represented by a patent agent or patent attorney.
- Unless the inventor is conversant with current patent practice
and case law, it is often unwise to expect the best outcome by
going it alone. The goal of the patent examiner is to
restrict the scope of the claims (i.e. the level of protection) of
the invention as much as
possible.
- While US patent paralegals can prepare & file patent
documentation, it is just smarter to employ a lawyer/agent to
prepare the patent claims and to represent the inventor before the
examiner.
- Inventive Solutions is not legally permitted to represent an
inventor before a patent examiner because we are neither certified
nor sufficiently experienced to attempt such a task.
- Inventive Solutions can however file incomplete Canadian patent
applications, i.e. without claims, which are equivalent to filing a
provisional application in the US, but are in no way representing
the inventor before an examiner, which a lawyer should do.
- Note: an applicant may not use a provisional application
(US) as the basis of a Design Patent (US), or an incomplete
application (CA) as the basis of an Industrial Design application
(CA).
- As outlined on the
Documents page, design patents are about
the form, shape or the appearance of an object, not how that
object works or was made.
- For this reason, design patent applications are mostly a
set of drawings, with no explanation, claims, or elaborate
examination phase. Either a design is new, or it is not, and if
the disclosure is complete, and the filing fees are paid, the design registration certificate is
issued in due time.
- Inventive Solutions can prepare & file both US Design Patent
& CA Industrial Design applications.
- Generally, patents have a term of 20 years, while designs
last half that long and cost much less, but both require payment
of maintenance fees during their term.
- Mailing applications to the patent office is becoming an
obsolete practice for many good reasons, namely delays, extra
costs, extra paperwork, unreliability, and risk of losing
priority.
- It can take over three months for a receipt of filing
(establishes the filing priority date) to be returned to the
inventor, and this still requires that they supply a self-addressed & stamped
return envelope.
- Electronic filing is accurate, instantaneous, reliable, and
filing priority receipts are emailed as soon as the fee payment is
confirmed.
- e-Filing does require that all documentation be in a format
(PDF) acceptable for filing, but any documentation prepared by
Inventive Solutions will meet or exceed those standards.
- e-Filing also allows filing fees to be submitted by
Inventive Solutions, for which the client will be invoiced once
the exchange rate is determined.
Top
of the page
- As mentioned above, Inventive Solutions is not legally
permitted to represent an inventor before a patent examiner.
- Patent Agents or Patent Attorneys are qualified to represent
the best interests of the inventor during the examination of their
patent application, mainly because they are current in the law and
practice of negotiating with the patent examiner. For a brief
discussion on choosing a patent attorney click
here
- While an inventor has the right to represent themselves
before an examiner, and the examiner is obligated to help them
draft at least one claim, the examiner is not being paid to look
after the best interests of the inventor. The examiner is in a
conflict of interest; very risky to the inventor.
- Lawyers and agents can help prepare and prosecute an
application with appropriate strategies that can protect an
invention to the maximum extent allowable under the law.
- Our services allow the inventor to affordably supply a
comprehensive invention disclosure to
a practitioner for review, claims, and representation during the
examination phase. Each party is able to apply their skills
where they will do the most good, which can only benefit the inventor.
- Patent claims are the final section of a patent;
the arcane legal language used to describe all previous
disclosures in the specification and drawings.
- Patent agents or lawyers specialize in being very good at
framing claims broadly so that the maximum scope of the invention
is protected, and litigation is avoided or mitigated.
- It is said that no one can learn combative arts from a
book, and that includes lawyering.
- The art of claims writing is to never allow the loss of one
battle to affect the outcome of the war. Well constructed
claims permit the removal of just about any particular claim by an
examiner, and that will not demolish the overall framework of the
claims structure.
- The reason one should pay an agent or lawyer to write
claims is that they not only know the rules and the strategies,
they know how to break the rules because they've been in numerous
battles so they know what actually works.
Top
of the page
- Once a formal application is filed and the appropriate fees
are paid, the examination process will begin. Unfortunately,
patent offices are usually understaffed, and examiners are overworked, so
examination is often delayed for a year, or two, or more. During
this time, the application may be published on the patent
database, available to all, including competitors.
- Examination is a negotiation between an agent, attorney, or
inventor, who try to capture the broadest claims for the
invention as is possible, contrasted with the patent examiner, who
attempts to limit these claims to as narrow a scope as possible,
in order to prevent excessive infringement lawsuits.
- Examination is a formal process, with deadlines, rules,
costs, and consequences, and should not be attempted by anyone too
busy to give the process their fullest attention.
- Expedited examination is possible, for additional fees, but
to qualify requires that all the documentation fit a prescribed format and
content, and if during the examination it is discovered that the
disclosure does not qualify, it will be returned to the regular lineup, and you
will lose your fee.
- Examination is best handled by those with experience in the
field of your invention, and with the process and laws of the
country in which your application is being made. (i.e.
lawyers/agents)
- Hooray! You just received your patent registration
certificate! Be sure to display a copy in a prominent place in your
business or office. But what next? Yes, you guessed it, more
fees.
- The patent system balances the right of an inventor to benefit
from their imaginative work with that of other inventors
who hope to improve on that work with their own inventions.
- This is achieved by limiting the term of a patent (20
years), and charging progressive (the costly interpretation) maintenance fees
for the term of the patent.
- When the inventor first receives their patent, it is assumed
that they have little market share or capital, so maintenance fees
are appropriately inoffensive.
- As the profit from an invention hopefully grows,
maintenance fees are gradually raised as the expiry of the term
approaches. If the inventor does not maintain their fee payments,
they are forced to relinquish their right to the invention,
in order to let someone else
carry that torch.
Top
of the page
- There is no such thing as an international patent, but
there is an international patent application system that subjects an
application to a novelty search & an optional preliminary examination.
- Encouraging results of an international examination can permit multiple
simultaneous national filings, standardized applications, fewer
fees, delayed public disclosure and reduced costs.
- The Patent Cooperation Treaty is a worldwide system for the
simplified multiple filings of patent applications, which is
facilitated by the World Intellectual Property Organization (WIPO).
- For some basic facts about PCT filings and procedures click
here.
- Note: Provisional Applications (US) and Incomplete
Applications (CA) can be used as the foundation of a PCT
International Application, and the invention priority date will be preserved.
- A recent development in CA-US procedures is the Patent
Prosecution Highway (PPH), which is a pilot project that attempts
to expedite patent applications filed in both
countries.
- The PPH enables an applicant whose claims are determined to be
allowable in the US to have the corresponding application filed in
Canada advanced out of turn for examination while at the same time
allowing Canada to exploit the search and examination results of
the US filing.
- More generally, if claims of an application have been found
to be acceptable by a first intellectual property office (IPO), an
accelerated examination can be requested at a second IPO.
- This means that the highway goes both ways so that filings in
Canada can be accelerated in the US.
- Other countries currently participating in the PPH pilot
project are the intellectual property offices (IPO's) of Japan, the
United Kingdom, and Korea.
- For current information on the PPH program, go to the
CIPO page
here.
- PCT filings can be used to delay public disclosures up to
30 months which can allow an inventor or inventive company a
better chance to capture market share and postpone examination
costs.
- PCT filings can refer to the priority dates of provisional
applications, but this pendency period is subtracted from the
total period of pre-disclosure pendency. (up to 12 months)
- In the current implimentation of the PPH, Canadians are
better off filing an incomplete CA patent if they only intend to
use the PPH to expedite their US application. There are risks that
if a US provisional is used to expedite a CA application, the PPH
route may be used to limit claims in the US patent. (Not if a
provisional is used as the basis of a PCT filing however.)
- In PCT filings or PPH strategies, it is highly recommended
that you employ a patent lawyer or agent with direct and current
experience in these matters.
- Inventive Solutions can refer you to PCT or PPH patent
practitioners with whom they have worked before, and who have the
requisite experience and resources.
Top
of the page
|
|
