Learning the Game – A Patent Process and Timeline
By David Lotimer, March 7th, 2017
Applying for and obtaining a Canadian patent is somewhat like learning how to play hockey - it can be a complicated process. Just as it takes years to understand the mechanics of the ice, it may take months to construct a patent draft that properly captures the inventive aspects of your invention. The extensive rules of hockey must be learned, just as there are several procedural formalities that must be followed during the patent filing stage. Finally choosing the right stick may be likened to the practical considerations necessary for an inventor, such as public disclosures, patent search reports, and jurisdictional differences.
Don’t let these complications overwhelm you - many people have learned how to play hockey, and you can learn how to file a patent.
There are three basic steps to filing a patent in Canada: (i) Drafting; (ii) Filing; and (iii) Prosecution.
(i) Drafting (4 – 16 weeks to complete) –
Drafting a patent may take days, months, or even years to complete. This timeline is highly dependent upon the complexity of the technology and the scope of the protection sought. It is usually an iterative process between the inventor and a patent agent during which several drafts and materials related to the invention are exchanged.
At the end of the process you will be left with a document containing a Background (address the current state of technology and problems to be solved); a Description (a full enabling disclosure, outlining the “best mode” of the invention); Claims (set the bounds of the legal monopoly, essentially outline the fence of what others are restricted from doing); Figures (drawings or graphs or visual aids to help explain the invention); and an Abstract (brief technical description of the invention).
(ii) Filing (1 day - 1 week) –
After the patent has been drafted, the document must be filed with the Canadian Intellectual Property Office (CIPO). This will involve the submission of administrative information about the inventor or agent (details such as name, address, etc.). Certain government fees must also be paid to CIPO at the time of filing.
Once the application has been submitted, CIPO will process the application and send confirmation of receipt. Upon an examination request, CIPO will commence an extensive examination of the patent to determine if the patent should be granted.
(iii) Prosecution (12-16 months) –
During the prosecution step, an examiner will decide if your patent application meets the patent requirements under law. For example, he or she will judge if your invention is new, useful and inventive, and whether or not your patent is similar to other patents and technical documents.
The examiner will write and issue a report about their findings, which will include any changes they want you to make within the patent. The report will also contain a response timeframe. Only once you obtain a final approval from the examiner at CIPO will a patent be issued.
As an inventor there are other practical considerations that should be at the forefront of your mind. First of all do NOT publically disclose any inventive concepts related to your invention without safeguards in place. Public disclosure may significantly alter the patent rights you are able to obtain. Non-disclosure agreements can be a good tool to avoid such a disclosure.
Also, you may want to undertake a prior art search to make sure that your inventive idea does not already exist. There are public resources available for searching such as the CIPO Patent Database and Google Patents.
Finally, patent protection is territorial; therefore, an issued patent is only valid throughout the country in which it is issued. If you wish to patent an invention in another country, you may apply separately in each country or through certain regional convention offices, established under international treaties or conventions.
For more information please contact:
T: 613.801.1063
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