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Most Canadians file their first patent application in the United States. This application is often (but not always) a United States provisional patent application. Then, they replace this before ‘month 12′ with a non-provisional utility patent application either in a few countries (eg. the US and Canada), or with a PCT (‘patent cooperation treaty’) application filed first in Canada. If they file a PCT application, at month 30 they then file the patent application in a series of countries (or regions) around the world including the US, Canada, Europe, China, India, Brazil & Russia.
Here is a summary of the patent process from Provisional to PCT.
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Patents for Canadians: A Practical Guide
Most of our clients start the patent process by filing US provisional patent which we draft and file on their behalf (we are licensed to practice directly before the USPTO on behalf of Canadians). A provisional patent does not have any claims and as a result costs signficantly less time and money to prepare (the prices for provisional patent applications, including our fees and the government costs are found on our Costs For Patents page). However, the disclosure in the provisional patent application must be enabling: it must permit a person of ordinary skill in the art to work the invention without the need to conduct undue research or experimentation. Accordingly, a good provisional patent application is not ‘quick and dirty’. A badly drafted provisional patent creates significant risk – it may be invalid, and thus all of your subsequent patent applications which claim priority to the provisional may be invalid (especially if you disclose the invention to the public after you file the provisional but before you file the utility application). We strongly recommend that you get professional advice for drafting your provisional patent application and do not recommend that you ‘do it yourself’. The requirements for a valid and effective provisional patent (ie. the enablement requirement) vary from invention to invention, and as a result there is no ‘template’ or ‘sample’ that we can provide that will show you how to draft a proper application. That said, however, you can dramatically reduce the cost and improve the quality of your provisional patent application by compiling and preparing as much information as possible in advance on i) the problem that your invenstion solves, ii) the ‘prior art’ and previous attempts to solve this problem, and iii) a detailed description of your invention as you understand it.
Most of our clients subsequently file a full utitlity patent application, which includes claims. It is usually filed by the earlier of 12 months from first public disclosure of the invention and the filing date of the US provisional. If you only want to file a patent application in a few select countries (eg. the US and Canada) then we file directly into those countries at this stage. If you think that you will want broader coverage around the world, then at month 12 we file a PCT (Patent Cooperation Treaty) application in Canada. Then, at month 30 we file the ‘national entry’ applications in the countries (or region in the case of Europe and others) that you want to pursue patent protection in. National entries can be expensive, as you will require a local agent and often translation. We can assist you to develop the best possible strategy for where to file. For more information, start with our ‘where to file your patent’ page.
‘Patent pending’ is not a term of art defined in the Patent Act or caselaw. Presumably, therefore, as long as you have a pending patent application then you may claim ‘patent pending’ with respect to your invention. Of course, once your patent is allowed, you should drop the ‘patent pending’ language and note that your invention is ‘patented’. Equally, if you allow your patent application to lapse, then you should cease to use the ‘patent pending’ language. Law suits against patentees with expired patents who continued to mark their products as ‘patented’ (known as ‘false marking suits’) were very common until the recent amendments to the US Patent Act, knowns as the ‘American Invents Act’, and caused much joy for plaintiffs and misery for defendants. Accordingly, it is imporant to make sure that you only claim what you have, and remove outdated patent claims from your products and literature.
The prior art is literally everything disclosed anywhere before the date of your patent application that impacts on the claims in your patent. It includes, but is not limited to, patent applications and research papers published anywhere in the world. The more you know about the prior art, and the sooner you know it, the better. Understanding the prior art will help avoid wasting money on patent applications with no reasonable prospect of success, and will help sharpen both the disclosure and claims of patents worth pursuing. As a result, we strongly recommend having a professional prior art search conducted as soon as possible (ideally before provisional patent is filed, and if not, then immediately thereafter), and updating this search before the utility application is filed.
The world’s patent databases contain a wealth of information that is openly accessible and that can be enormously helpful for drafting patent applications (see above re prior art) but it also can be very useful for your R&D program: first, because it helps avoid ‘re-inventing the wheel’, second because inventions are not fully exploited in Canada and are therefore either available for licensing (if patented in Canada) or not patented in Canada and thus are freely available for use in Cnada without license or royalty, and third because it provides valuable competive intelligence about who else is active in your field and the focus of their research.