What Is Involved in Obtaining a Patent (Part I)
This is the first part of a two-article series.
Many people and businesses new to the world of intellectual property often wonder what’s involved in obtaining a patent.
While there’s a lot of information to digest, this article focuses on what people can expect in terms of dealing with a Government patent and trademark office, and in this specific case, the Canadian Intellectual Property Office (CIPO).
The first and most important thing to understand is that in the world of patents, just because you “apply” doesn’t mean you “get”. In other words, filing an application is only the beginning step to obtaining a patent grant.
So what happens after your patent application is filed?
Upon receipt, CIPO reviews your application to ensure a number of formality requirements are met (consistent with the Canadian Patent Act and Patent Rules).
In particular, your application needs to have a title, a description appearing to describe an invention, and ultimately a set of claims (wording describing the invention to which you claim an exclusive set of rights).
Where CIPO is satisfied that a number of basic formalities are met, CIPO will issue an official serial number (in a document referred to as a Filing Certificate).
The Filing Certificate sets out basic information such as the name(s) of the Applicant(s), name(s) of the Inventor(s), the title of the Invention, the date the certificate is issued, an official serial number for the application, a file reference number (if applicable), the official filing date (the date on which CIPO considers all basic formality requirements were met), and the expected date upon which the application will be laid open for public inspection (ie will be published so as to be accessible by the general public on the CIPO patent database).
The Filing Certificate will also explain that in order to maintain the application in effect, it will be necessary to pay maintenance fees to CIPO commencing on the second anniversary of the official filing date, and annually thereafter up to a maximum of the twentieth anniversary (the maximum lifespan of a patent grant).
At some time between when the application is filed, and up to a maximum of four years after the official filing date, it will also be necessary to request Examination.
Requesting Examination means that an Applicant is asking (and paying the relevant fees for) CIPO to examine and review the filed application to make a determination of patentability.
If Examination is not requested within that four-year period as described above, the application may become abandoned (there is a reinstatement mechanism but with recent changes in rules and legislation, reinstatement has become much more difficult than prior to 2019).
Once CIPO receives a request for Examination and the Examination fee, the subject patent application is then entered into a queue for examination and examined in turn (as compared to all other received applications).
During Examination, CIPO will search not only the Canadian patent database but various patent databases from around the world as well as publicly available trade and technical publications.
The search conducted by CIPO is an attempt to find out if there is previously published information, sufficient in detail such that there is an enabling disclosure prior to the official filing date of the subject application.
In other words, CIPO wants to find out if the application that was filed contains “new” inventive subject matter (patentable), or merely repeats subject matter previously disclosed to the public (not patentable).
Apart from trying to determine whether the application contains “new” subject matter, CIPO will also try to determine whether the application discloses an “inventive step”.
An application that discloses an inventive step is patentable, whereas an application that fails to disclose an inventive step (or is otherwise considered “obvious”) is not patentable.
When the search and review is complete, CIPO will issue to the Applicant(s) or the Applicant(s) agent correspondence referred to as an “Office Action”.
The Office Action outlines CIPO’s position on whether the subject application is patentable or not.
In the vast majority of cases, CIPO takes a position that applications are not, as filed, patentable, and in so doing, lay out a case for their position.
CIPO will cite all of the relevant prior art they’ve uncovered, describe what’s in the prior art, and then attempt to link what’s in the prior art to what is disclosed in the application.
Why does CIPO try to take a position that the application is not patentable?
As a policy, the Patent and Trademark Office are required to be conservative as to what is eligible for patent protection (essentially a twenty-year monopoly).
By heavily scrutinizing each application, CIPO ensures that if a patent does ultimately issue, the patentee thereby receives an instrument reasonably broad and clear in terms of the scope of protection they are entitled to, as opposed to granting patents for pretty much anything which in turn would render patents worthless in terms of scope of protection.
Upon receipt of the Office Action, the Applicant(s) or the Applicant(s) agents receive up to four months to formulate arguments against the Examiner’s position – in other words, argue why the Examiner is “wrong” and why the subject application is in fact patentable.
The job of the patent agent is to essentially argue with the Examiner by forming and submitting a coherent set of written arguments to clearly identify one or more patentable aspects not disclosed in the prior art or otherwise described by the Examiner.
Unlike the United States and certain other countries, one benefit of filing an application in Canada is that an Applicant or their agent can have more than one attempt at trying to convince an Examiner of patentability.
Ultimately, if the Examiner is persuaded that the subject application contains patentable claims, then the Examiner will eventually issue an allowance notice – typically titled Commissioner’s Notice – Application Found Allowable.
The Commissioner’s Notice will contain information such as the date of the notice, the application serial number, the agent’s corresponding file number, a due date and a description of any final fees due.
The Commissioner’s Notice will also reference the application’s filing date, the name of the Applicant(s), the name of the Inventor(s), the application title, the number of claims, and the latest date the application was examined.
The Commissioner’s Notice will also lay out instructions for payment of final fees in order for the application to proceed to grant, as well as the consequences of the failure to pay those fees.
Once the final fees are paid and the application is granted as a patent, all that remains to maintain a patent in force is to continually pay the annual maintenance fees until the patent term expires.
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.
