Patents

Patenting First Steps

From Invention to Patent Pending


1) Problem in Need of a Solution

You (the inventor) identify a problem or need that requires an inventive solution.

2) Invention

You use an inventive spark to create an invention to solve the problem and/or address the perceived need. Congratulations! You have come up with an invention you may be able to protect.

3) Maintain Confidentiality

It is best to keep the invention as a secret until a decision on possible patenting has been made.

The patent laws in some countries have an absolute novelty requirement which means that a patent application must be filed before the first non-confidential disclosure of the invention or else the invention is not patentable in that country. Countries like Canada and the United States have a one year grace period for filing a patent application following a non-confidential disclosure that originated from the inventor. Some countries such as Canada have “first to file” patent laws which generally means that the first inventor to file a patent application for that invention in that country is the one eligible for patent protection. All of these are reasons to keep the invention confidential until a decision on patenting has been made.

4) Non-Disclosure Agreement

If you must disclose the invention prior to filing a patent application it is advisable to use a non-disclosure agreement (“NDA”) to protect yourself. This is a contractual agreement you have another person sign before you disclose your invention. The main purpose of the agreement is to alert the other party to your ownership of confidential potentially patentable invention rights and to discourage further disclosure. It prevents that disclosure from being a patent-invalidating public disclosure and it gives you legal recourse if the other party does not keep the invention information confidential.

5) Patent Search

A search to assess the patentability of your invention is an important step in the patent application process. It is best if the patent search be conducted and analyzed by your registered patent agent so that particular attention may be given to the combinations of features that may be claimed in a patent application for your invention.

Patentability searches can be extremely useful but it is important to understand that any search has its limitations. Prior disclosure of your invention anywhere in the world could invalidate your patent application and no patent search can definitively find absolutely everything that could be potentially relevant patents or prior publications (collectively called “prior art” in patent language) to your invention. When searching patents the patent agent attempts to locate the closest relevant documents within certain limitations which include budget, language, time and scope.

A good patent search is extremely valuable. If the search locates the same or substantially similar invention then you may decide to end your patent application process without filing a patent application. While no doubt this will be disappointing, it will save you thousands of dollars and years of time and investment in your patent application(s) and invention.

If the search finds some similar inventions but does not locate patents or publications which describe all of the features of your invention the patent search may assist your patent agent in focusing on the features of your invention which appear to be patentable over the located prior art. The located patents may also provide the inventor with some ideas for refinements or improvements to the invention before a patent application is finalized.

6) Prepare and File First Patent Application

When you and your invention are ready for patenting, it is advisable to have a registered patent agent prepare a first draft of a patent application for your review. New information cannot be added to your patent application after it has been filed so it is very important for you and your patent agent to think of everything that could be applicable to patenting your invention prior to completing and filing your first patent application, including any potential alternatives to various features of the invention.

If you used a good patent agent to conduct and analyze your patent search, there are advantages to using the same patent agent to prepare and file your patent application. The patent agent who completed the search should already understand your invention and have a good understanding of the prior art. More importantly, the patent agent should have conducted the search with a view for what monopoly might be claimed (for you by that patent agent in a subsequent patent application). This would not only give your patent agent a head-start on the application but it would increase the chances that the particular features to be claimed in your patent application could not be found in the searched electronic databases of prior patents and publications.

When your patent application has been filed, your invention is now “patent pending”! It remains pending until either it registers (and becomes “patented”!) or it dies by abandonment or otherwise.

7) File Subsequent Patent Application(s) that Claim Priority from First Application

An international agreement called the Paris Convention permits patent applicants to file subsequent patent applications in most other major countries around the world within one year of filing a first patent application, and benefit from claiming priority from that earlier date. In terms of priority for the ability to obtain a patent for that invention, it is as though the subsequently filed application(s) were filed on the priority filing date.

Another international agreement has given rise to the ability to file an “international application” under the Patent Cooperation Treaty (usually called an originating PCT Application) which can later be filed in individual countries through a process called “entering the national phase of the PCT”. The PCT Application is subject to a search and may be subjected to a preliminary international examination. The originating PCT Application itself will never become a patent, but if additional fees are paid to “enter the national phase” in particular countries then it will become individual national applications in each chosen country.

The PCT process usually becomes cost advantageous only if you plan on filing your application in at least three different countries. The PCT process also may buy some time before you decide which countries to file in as you may enter the national phase in most countries up to 30 months following the filing date of your earliest patent application.

 

Hopkinson Intellectual Property Law would be happy to assist you throughout this process, including advising you through the various steps, preparing an appropriate NDA, conducting a patent search, and/or preparing and filing a patent application, whether in Canada, the USA, or elsewhere and/or via PCT.


Disclaimer: this memorandum is intended as general information only. Always seek professional advice to determine what steps and procedures best apply to your specific situation. Please do not act, or refrain from acting, merely on the basis of information provided in this memorandum.

06/2013