This is the first part of a 3-part series that covers prosecution; examination, appeals, and other procedural steps before a patent is granted or rejected. The first article here covers the rough timelines that an applicant faces for a patent to be examined and issued. The second article will discuss examination and responses to the examiner and the third article will cover what of this process is on the public record.
Patent Filing:
So you, an IP-rich company, have read our 5-part series Intellectual Property 101: Protecting the Right Intellectual Property, if your innovation is software or AI-based you’ve looked at Intellectual Property Deep Dive: A Beginner's Guide to Patenting Software and AI, and finally you’ve considered Patentability search and Freedom to Operate search. You have looked at IP success stories such as McGuire Aero Propulsion Solutions and Solaire and been convinced that filing a patent is right for you, perhaps through a licensed patent professional.
Pathway from patent application to regular filing
There are different pathways filing for a Patent in Canada and Beyond.
- US Provisional patent application: this is a common filing strategy used to get an early priority date (the cutoff date for the examiner to determine whether your invention is new or known, and starts the clock on the patent’s term). This type of application does not have the formal requirements of a regular patent, but must be followed by a full application within 12 months to maintain priority. If you first file the provisional application in the US you can still use it to claim priority on US, Canadian, European and PCT (“international”) applications. The provisional patent is never examined and costs very little to file, so it is a good way to defer the expensive patenting process for a year while developing the company’s business and/or technology.
- Regular filing: A regular patent filing is the simplest type of patent application, where the applicant files for a patent directly with a patent office.
- Patent Cooperation Treaty (PCT): This application allows you to file in up to 158 jurisdictions, securing your filing date while providing additional time (up to 30 months from the priority date) to decide in exactly which countries you will seek patent protection. The process includes an international search report and optional examination phases, offering valuable insights into your invention's patentability before entering the national phase when your application is examined in your chosen countries.
Each pathway has different timelines but all lead to a regular filing and prosecution: the interaction between the applicant and the examiner through Examination Reports and Responses.
Pathway from patent application to regular filing:
There are different pathways filing for a Patent in Canada and Beyond.
- US Provisional patent application: this is a common filing strategy used to get an early priority date (the cutoff date for the examiner to determine whether your invention is new or known, and starts the clock on the patent’s term). This type of application does not have the formal requirements of a regular patent, but must be followed by a full application within 12 months to maintain priority. If you first file the provisional application in the US you can still use it to claim priority on US, Canadian, European and PCT (“international”) applications. The provisional patent is never examined and costs very little to file, so it is a good way to defer the expensive patenting process for a year while developing the company’s business and/or technology.
- Regular filing: A regular patent filing is the simplest type of patent application, where the applicant files for a patent directly with a patent office.
- Patent Cooperation Treaty (PCT): This application allows you to file in up to 158 jurisdictions, securing your filing date while providing additional time (up to 30 months from the priority date) to decide in exactly which countries you will seek patent protection. The process includes an international search report and optional examination phases, offering valuable insights into your invention's patentability before entering the national phase when your application is examined in your chosen countries.
Each pathway has different timelines but all lead to a regular filing and prosecution: the interaction between the applicant and the examiner through Examination Reports and Responses.
US Provisional:
The provisional patent should contain a detailed description of the technology, as the disclosed invention must be the same as the subsequent regular patent application, but does not require claims, which are the legally enforceable part of a patent and the main grounds of examination. Note that the US provisional is only relevant to priority date and no patent will come of it without a formal regular application, as shown on the chart.
Regular filing; the application that will be examined:
Publication: In most countries, the patent application will be published 18 months) after the filing or other claimed priority date.
Examination: In Canada, the applicant must request and pay for examination before the examiner queues the file for examination. You can request examination when you file your application. Otherwise, for most applications, you have up to 4 years from your filing date to make a request for examination.
Examination report(s): If the request for examination is done quickly, the first examination report can be sent to the applicant or agent acting on their behalf within 14 months; at the latest, the request must be made within four years or else the application is deemed abandoned.
Responding to the report(s): The response to an examiner’s report typically also has a prescribed due date - in Canada this is within 3 months. In this response, the applicant or agent amends the application to address any rejections and/or argues that the examiner’s reasons are flawed.
The examination process of examination reports and responses repeats as needed until the
- examiner accepts the application,
- the application is abandoned, or
- the examiner’s “final rejection” is appealed. The appeal goes to the Patent Appeal Board and can then be further appealed to the regular Federal Court and beyond, an often costly and time-consuming process.
Patent Cooperation Treaty (PCT):
A PCT application is a process designed to facilitate patent applications in multiple jurisdictions worldwide, reserving your filing date in all participating countries. The PCT application provides an additional 18 months before you have to decide what countries you would like to file in. If you filed a US provisional application (which gave you a priority date 12 months prior to the PCT application) this gives a total of 30 months until you need to enter the “national phase” in each individual country.
The next article in this series is Patent Prosecution 2: How is my application examined? In this article you will learn about the correspondence between the patent office examiner and the applicant. You'll also learn about the examination report and how responses work. These are important steps towards allowing the set of claims for the invention.
