What Is Involved in Obtaining a Patent (Part II)
This article is the second part of a two-article series.
What do you, as an innovator, need to know about dealing with a patent agent?
As an innovator, dealing with a patent agent for the first time can be challenging because you may not know what to expect or how to prepare.
This presentation aims to help you to prepare to meet your patent agent for the first time.
The first and most important thing in preparation is for you as the inventor to gather your notes and drawings (if any).
Remember that your notes don’t have to be perfect or patent application ready, but it will very much help both you and your patent agent if you can put together a written description of what your invention is.
What should you include in your description?
In everyday and ordinary words (don’t try to be fancy, there will be plenty of time to be fancy later), start by trying to describe what problem you are attempting to solve.
Part of describing what problem you are solving involves describing whatever other solutions or “prior art” already exist in relation to the problem you are solving.
It’s not that you must conduct your own patentability search or have a professional prior art search prior to meeting your agent, but if you are aware of what the “state of the art” is (even somewhat) in relation to the problem you are solving, it helps to write that information down.
Think about what your “competition” is already doing and try to attack what’s “wrong” with the competition.
Thoroughly describe (to the best of your ability) what the prior art is, and what you think is “wrong” with the prior art.
What’s difficult about the prior art solution?
What problem arises when people use the prior art solution?
It’s helpful to remember that you needn’t be solving the world’s most difficult problems – not every patent grant requires that you cure cancer.
Remember solving a problem in an inventive manner is not necessarily the same thing as solving a problem with a complex solution – your solution need only be inventive, but not necessarily complex.
Problems with the prior art may include (and these are some very simplified and fictional examples) difficulties such as the prior art is bulky, not easily movable, difficult to operate, expensive to produce (for certain reasons), not reliable (for reasons to be explained), etc.
Outlining the problems with the prior art also helps to identify what problems you are solving.
For a patent application to mature to grant, it is necessary for your patent application to satisfy three key (statutory) elements.
First, your invention must be “new”, meaning not previously known to the public.
What this really means is that your invention must not have been publicly disclosed (typically by publication) prior to the filing of your patent application.
Second, your invention must have an inventive step or be “non-obvious” (what is and is not obvious is a matter of debate, and your patent agent can discuss this in detail with you).
Finally, your invention must solve a problem in the manner you claim the invention solves a problem.
So, by describing the prior art and what’s wrong with all of the known solutions, you are also helping to identify what problem(s) you are solving.
The next thing that is useful is for you to prepare whatever drawings you can regarding your invention.
If your invention relates to a method, then it may be helpful to draw out flow charts/flow diagrams.
Your drawings needn’t be perfect, but you should attempt to illustrate to the best of your ability, whatever embodiments of your invention you’ve envisioned or already created.
If you’ve already built a prototype, then it will be useful to bring your prototype to your meeting with your patent agent, or at the very least, bring photographs of the prototype.
Ultimately your agent will arrange for proper “formal black-ink” drawings to be prepared for your patent application.
While you could try to prepare the black-ink drawings yourself, the reality is that unless you are intimately familiar with the Patent Act and Patent Rules, it’s more than likely your drawings will be insufficient or otherwise riddled with errors.
However, if you have, for example, computer-aided design (CAD) drawings, you should feel free to include them with your material because even though they may not be perfect, they will still be extremely useful as a reference point.
When it comes to preparing drawings, ultimately it’s best to let a professional draughtsman/illustrator familiar with patent application requirements prepare your drawings for your patent application.
Once you have your rough drawings prepared, now do your best to label your drawings.
Don’t worry about labelling too much – remember your agent is seeing your invention for the first time.
Label every part you can, and try to label in a manner that is clear and clutter-free.
One useful way to label your drawings includes using reference numerals, and then on a separate sheet create a table/legend where you explain what each reference numeral is – this will help you avoid excessive cluttering text in your drawings.
Once you’ve labelled your rough drawings, go back to your written description and proceed to write out as much detail as you can about your drawing/invention.
Try to identify and thoroughly describe each part in your invention.
Once you’ve described each labelled part on its own, then try to describe how each of the parts work with each other, and ultimately together with other or all of the parts (such that your invention solves the problem you claim it solves).
Don’t worry about including “too much” detail, and don’t worry about writing out or explaining things that you think someone else may already know.
Do not assume your patent agent is smarter than you or knows more about your invention than you do – the reality is that as the inventor, you are the subject matter expert on your invention (and so you probably know more about your invention than anyone else).
Also try to include in your description which parts you think are an absolute must, meaning they cannot be changed no matter how much you try to change your invention.
Likewise, try to describe which parts you think can be changed or interchanged with other parts or modifications, and why they can be changed.
Ultimately, it will be important for your patent agent to determine what parts of your invention are absolutely essential (can’t be changed or modified without affecting the invention) and which parts are non-essential (meaning they can easily be substituted by other parts accomplishing the same function).
For example, if your invention involves screws (going into the wood for joining two pieces of wood together), it may not be essential that you use screws since nails can also fasten wood together, as can glue – and so we would consider (in this fictional example) that a screw is not essential but what may be essential is any type of “fastener” that
fastens or adheres wood (or some other material) together.
Once you have all of the above information, now you are ready to have a very meaningful and fruitful first meeting with your patent agent.
While there will still be more to do and discuss, the above tips will put you in a great position to make sure you don’t waste your time or money in having your first meeting with a patent agent.
Visit our Services page to learn more about Pnc IP Group’s Patent services. If you have questions regarding the above, feel free to contact us.
Any patents, trademarks, or technologies referenced in this article are owned by their respective owners. Questions regarding this article can be directed to Tapas Pain. Pnc IP Group are licensed lawyers and registered patent and trademark agents with a history of serving the greater York Region, greater Toronto area since 2003. Pnc IP Group is
located in Vaughan, Ontario, and offers in-person visits by appointment.
Call us and book your appointment today, or speak with us by telephone anytime. Your calls are always welcome, and never hesitate to ask us your questions. These articles and opinions do not express or constitute legal advice.
