First-Time Patent Applications
Essential Questions And Answers
INTRODUCTION
This article follows a recent article we wrote on preparing and filing patent applications.
That article dealt with what to expect in preparing a first-time patent application.
This is a behind-the-scene expose of what happens to a patent application after filing.
INTELLECTUAL PROPERTY TYPES
As a recap, we’re largely dealing with utility patent applications.
We are dealing with patent applications directed toward protecting function.
The process for dealing with industrial designs / design patents differs.
Design is directed to shape, ornamentation, and configuration.
In contrast function is directed towards solutions.
OFFICIAL FILING RECEIPT
There’s been a lot of changes over the past twenty years.
The process that follows filing a patent application has reflected these changes.
Twenty years ago North America was on the cusp of widespread Internet access.
At that time, patent applications were filed by paper.
Not only were filings done on paper, but the paper itself was required to be very specific.
Incorrect paper size, margins, and so forth could easily derail you.
Also, once that paper patent application was filed, it would take time.
It could easily take up to six weeks or more before an Official Filing Receipt would issue.
What is an Official Filing Receipt?
Normally we think of any receipt as a confirmation.
However, the Official Filing Receipt is different.
The Official Filing Receipt provides a sense of substantiation.
This is a fine distinction.
Just filing a patent application and paying the Government fee gets you a receipt.
That receipt proves payment and filing the papers per se.
That is a basic receipt only
However, the Official Filing Receipt substantiates your filing.
To an extent, the Official Filing Receipt attests to compliance with the Patent Act.
There is value in exchange for that compliance.
The Official Filing Receipt provides an official serial number and filing date.
That data – the serial number and filing date – are valuable.
That data can of course be used to facilitate other or even foreign filings.
Those other filings may rely on or claiming priority from your Canadian filing.
Priority claims from your patent application are possible once you have that data.
The filing date and serial number are key pieces of information.
Remember that the Patent Office was originally built on a paper-based system.
As such, the six-week (or more) waiting period was perfectly normal.
Over the past twenty years though there has been upgrades.
Today the Patent Office is high-tech – leading computer infrastructure and technology.
Many processes in the Patent Office have been significantly accelerated.
In as little as two weeks applicants can receive an electronic Official Filing Receipt.
Some may criticize this time difference (as compared to instant receipt generation).
However, applicants must remember that an Official Filing Receipt has meaning.
Again, an Official Filing Receipt signifies, to an extent, compliance with the Patent Act.
To obtain an Official Filing Receipt, a patent application must satisfy certain obligations.
What are those obligations?
An applicant must provide the Patent Office with information regarding the inventor.
The applicant must also provide a document disclosing an invention that seeks a patent.
There are other requirements.
What is important is that the Official Filing Receipt signifies minimal compliance.
THE WAITING GAME
After an applicant receives their Official Filing Receipt, what happens next?
The waiting game commences.
What is the waiting game?
In this instance waiting refers to prosecution time.
What is “prosecution time”?
This is the time taken for the patent application to be prosecuted through to acceptance.
How does a patent application eventually wind up at acceptance?
It helps to understand the main aspects.
MAINTENANCE FEES
The first thing is that a patent application reflects a possible twenty-year instrument.
Maintenance fees are due and payable on both patent applications and grants.
These fees are payable starting the anniversary of the second year from the filing date.
Maintenance fees are payable annually from years two through to twenty.
Sometimes called annuities, these maintenance fees differ in other countries.
For example, in the United States, maintenance fees are payable only after patent grant.
Even then, in the United States, those fees are payable only at three intervals.
The United States does not charge yearly maintenance fees.
The United States also does not charge maintenance fees on a patent application.
Only patent grants in the United States pay maintenance fees.
Whereas in Canada these fees are a yearly exercise.
In terms of time frame, that means this issue is visited once a year nearly ever year.
PATENT APPLICATION EXAMINATION
Another factor at play is what is referred to as patent application examination.
Every patent, prior to grant, must be examined for patentability.
This is also referred to as being part of patent application prosecution.
A patent application is prosecuted.
Prosecution entails different aspects.
A patent application is examined, possibly modified, and scrutinized for patentability.
These steps are part of the prosecution process.
Not every patent application becomes a patent grant.
A patent application is examined for patentability based on a prior art search.
The patent application is also examined for formality and clarity requirements.
During examination, a patent examiner will conduct a prior art search.
The patent examiner then has an opportunity to issue an Office Action.
What is an Office Action?
The Office Action is an opportunity to object to the patent application.
The examiner states why the patent application does not comply with the Patent Act.
The examiner is obligated to reasonably construct arguments based on the prior art.
The prior art search may not be a perfect fit, but the argument must be made.
The examiner must cite the most relevant art found.
This does not mean the examiner’s word is final.
There is a reason for the attempt to apply relevant prior art in this fashion.
Patent grants must be issued conservatively.
If patent grants are not issued conservatively then they will be meaningless.
Weak patents lack enforceability and real-dollar value.
Examining a patent application, ensures a conservative view of patent grants.
In turn, this makes Canadian patent grants usually credible and enforceable.
Therefore, it is easy to understand that thorough examination takes time.
Patent prosecution (amendments, arguments, etc.) also takes time.
The period for patent prosecution may last quite a while.
This can be anywhere between a few months and possibly longer than one year.
An Office action is not likely to be received before eighteen months.
That time is measured from the patent application filing date.
Add on possibly a year for patent prosecution.
This already brings the timeline to a possible two- and one-half years.
However, this also omits another key factor.
Examination itself does not commence until a patent applicant requests examination.
When is examination requested?
A patent applicant has their choice on timeline.
Twenty years ago, the timeline was longer.
The applicant had up to five years from the filing date to request examination.
Today, an applicant has only four years from the filing date to request examination.
One may ask – why would examination not be requested early?
Why would examination not be requested automatically on filing?
There are many reasons why applicants choose to defer requesting examination.
For example, smaller inventor and applicants may have budgetary constraints.
More sophisticated applicants may be delaying examination as a business strategy.
Yet other applicants may simply be happy to draw the process out as long as required.
There can be many reasons.
What is important to remember is that patents can last up to twenty years.
Twenty years is a long time.
COMMUNICATION GAPS
Looking just at the above, it is clear – a lot can happen over twenty years.
As such, daily communication does not occur with your patent agent.
Instead, communication tends to be on a six-month to perhaps yearly basis.
But that does not mean there cannot be frequent communication with your patent agent.
Where applicants file multiple patent applications, communication can be very frequent.
One patent application has a lifespan of up to twenty years.
That one patent application generates infrequent communication.
Many patent applications result in overlapping lifespans and frequent communication.
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References are as they existed at the time of writing.
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Pnc IP Group bears no responsibility for updates and changes.
This includes changes to legislation, regulations, practice notices, and practice manuals.
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Variables include time, statutory / regulatory amendment, case law, and practice.
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