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Patent process

Light Bulbs 3D RenderingPatenting is a process.  We strongly recommend that you familiarize yourself with the concepts in these handouts:

Here is a summary of the The Patent Process from invention to maintence in PDF.  Please review.

Here is summary of the steps in the first phase Provisonal to PCT in PDF.  The text (without graphics) follows below.

Provisional Patent to PCT

Provisional Patent Applications.  Generally, a provisional application should be filed as soon as possible.  Delay creates risk – risk of disclosure, other inventors, and competing applications.  File before any disclosure; do not wait 12 months from the time you first disclose the invention to file – while you may still be able to apply for a patent in Canada and the United  States, disclosure is fatal to patent rights in the majority of countries of the world.

A provisional patent application is precisely that.  It is provisional.  It will expire in 12 months.  It is never examined and never published. You must replace it with a full patent application within a year or lose your priority date.

A good provisional patent application is  not a ‘quick and dirty’ application, or an invitation to amateurs to try their hand at patenting.  It is a foundational application.  Ultimately, your claim to priority and the validity of your patent claims will depend upon the disclosure in the provisional application. If the provisional is weak or poorly done, you will suffer.  Just as a house stands on a foundation, your subsequent patent claims may stand upon a provisional patent application, and if the foundation is weak or poorly done, the house will always be weak and at risk of falling down.

Search.

We strongly recommend carrying out good prior art searches as soon as practicable.  The best practice is to conduct searches as early as possible, prior to drafting the provisional.  However, we can accommodate your needs if you need to defer the searches and proceed immediately to the filing of the provisional patent application.  The results of the search will teach you many things including :

a)      The scope of your possible claims and whether they must be narrowed to avoid prior art and/or broadened to deal with a wider range of embodiments.

b)      The potential strength of your patent and its ability to block others.

c)      Efforts of others to solve the same or similar problems, potential competitors, licensor and acquirers of your technology.

Improve.

With the results of your search in hand, and increased knowledge of the precise nature and scope of the invention and its marketability, you may choose to:

a)      Retain the provisional patent as is;

b)      File a supplemental provisional application that describes the invention in greater detail, broadens its scope, or otherwise navigates better around existing prior art; or,

c)      Use your new knowledge to improve the drafting of the non-provisional application, especially the claims in it.

Abandon.

You may choose to abandon your provisional patent application.  If you do, you need to decide if you wish to:

a)      Keep the invention secret either permanently (as a trade secret) or temporarily in order to file a subsequent patent application (trade secrets are not suitable for inventions that can be reverse engineered); or,

b)      Disclose the invention.  If you do, you should consider disclosing the invention as thoroughly as required to preclude anyone else filing a patent application that might prevent you from using , making or selling the invention.

Patent.

As this stage you must replace your provisional patent application with a full patent application that contains a fulsome disclosure and claims. The full application can be filed under the Patent Cooperation Treaty (“PCT”) in order to maintain your right to file in most countries throughout the world; or it can be directed immediately to just a few specific countries (e.g. U.S, Canada).    There are substantial fees to enter the PCT system; entering is usually only cost-effective if you ultimately plan to apply for a patent in more than two or three countries although entry to the PCT system provides substantial opportunity for deferral which can also have substantial value.

PCT National Entry.

If you make use of the Patent Co-operation Treaty for filings in many counties, you must complete the national entry phase for most countries at month 30.  You should anticipate substantial costs for local representation, translation and government fees at this stage.