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This is the second part of a 3-part series that covers the action after filing a patent, commonly dubbed prosecution within the patent industry. The first article covered the rough timelines that an applicant faces for a patent to be examined and issued. The second article here discusses the Examination Report - Response cycle discussed in the first article. The third article will cover finding all this information in 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.
Examination
Once filed, a patent examiner will review your application. Remember; in Canada, you first need to request examination. The examination centers around the claims, which are the legally enforceable and thus most relevant part of a patent. The examiner can either allow the claims, or reject them based on the relevant patent statutes of the jurisdiction and the Examiner’s Office’s published interpretation; for example, in Canada the Manual of Patent Office Practice (MOPOP) interprets the Patent Act and Patent Rules. Similarly, the USPTO has their Manual of Patent Examining Procedure and their patent laws.
The examiner will communicate any rejection, request for more information, or other issues with the application in an examiner's report (also referred to as an Office Action).
Responding to office actions
A response to the Office Action has to be submitted within a prescribed period and typically consists of counter-arguments (attempt to overcome Examiner’s arguments), amendments (modify the claims to overcome Examiner’s arguments) or some combination of Amendment and Counter-argument for each of the grounds of rejection cited in the Examiner Report. This back and forth process can be repeated multiple times. If you have hired an agent to represent you and the patent is highly contentious, this back-and-forth can get expensive; however, the resulting patent will likely be broader in scope (cover more potential infringing activity) if the patent agent has leeway to compromise less in their arguments with the Examiner.
Common grounds of rejection and common arguments in response
- Non-patentable Subject Matter(USC 101; s.2 in Canada)
- What it means
- Various categories of potential inventions are deemed unpatentable by law. Canadian examples of excluded subject matter include scientific principles and abstract theorems, such as formulae, natural phenomena and laws of nature. This can and often is interpreted to include algorithms, which causes problems for many software inventions. Another category of unpatentable inventions involve “professional skill”, a category of inventions that involves a step in a claimed method which is carried out by a human and which relies on the intelligence and reasoning of the human to make a judgment.
- Possible counter-argument
- Arguing that the invention fulfills the requirements for some form of exception carved out in the law, for example a software invention “being integrated into a practical application” (US) or “providing a discernible physical effect or change” (Canada). It is highly recommended that inventors have an experienced patent agent navigate patentable subject matter issues, as they tend to be complicated and unintuitive.
- What it means
- Anticipation (Lack of Novelty) (USC 102; s.28.2 in Canada)
- What it means
- Anticipation arises when a previous public disclosure falls within the scope of the claims. An example of anticipation arises when the inventor has rendered the patent non-novel by publishing a publicly accessible description of their invention prior to patenting - a common concern for research articles. Inventions can also be anticipated by commercial sales prior to applying for the patent.
- Possible counter-argument
- One way to overcome this objection is by arguing that the prior disclosure does not cover all the features of the claimed invention. Another possibility is to claim a more specific invention that includes features not present in the cited source (narrow the scope of the claims).
- What it means
- Obviousness (USC 103; s.28.3 in Canada)
- What it means
- Obviousness challenges the inventiveness of the claims by combining two or more different sources or prior art (as opposed to just a single source for anticipation). When prior art (existing publications such as patents, articles) discloses some elements that are claimed, the examiner can argue that the invention is obvious by simply combining the prior art.
- Possible counter argument
- One way to overcome this objection is to change the claims to include features of the invention that are not present in any of the sources cited by the examiner. Another way to overcome this objection is to contest the rejection without modifying the claims but instead pointing to the differences between what is claimed and what the prior art describes.
- What it means
- Lack of Utility
- What it means
- For an invention to be useful (have utility) it must be capable of functioning as described.
- Possible counter argument
- The bar for utility is low - a simple, single use is sufficient.
- What it means
- Double patenting
- What it means
- You cannot patent the same invention more than once.
- Possible counter argument
- In the US, this can be overcome with a terminal disclaimer (agreeing to have both patents expire on the same date). Canada does not have such a mechanism and issues with double patenting may lead to abandoning one of the patents.
- What it means
- Unity of Invention/ Restriction Requirement
- What it means
- One cannot claim multiple inventions in the same patent.
- Possible counter argument
- An applicant with multiple inventions in one application usually chooses one of the inventions to pursue, leaving the other for a potential divisional. A divisional application is applying for a separate patent with the same description of the invention - i.e. only the claims are changed.
- What it means
- Indefiniteness
- What it means
- Claims must clearly define the scope of the claimed invention. Examples of claim language that might bring about an indefiniteness rejection include: introducing new terminology not defined in the specification or well-known in the field, relative terminology (such as “about”, “essentially”, “similar”, “substantially”, “type”), open ended numerical ranges, exemplary language (“for example” or “such as”), and use of words whose meaning is unclear - for example, a claim which refers to “said aluminum lever,” but recites only “a lever” earlier in the claim
- Possible counter argument
- The Examiner can provide suggestions to amend the claims to be definite if the issues are relatively minor. Alternatively, arguments can be made that the terms objected to are clearly defined in the specification or well-known among those in the field (known in the art or understood by a person skilled in the art).
- What it means
- Informalities
- What it means
- Informalities include spelling errors and inconsistent terminology that does not render the claims indefinite.
- Possible counter argument
- The Examiner usually provides corrections for any identified issues.
- What it means
The next article in this series is Patent Prosecution 3: What is publicly available from the examination? As with many legal proceedings, patent prosecution occurs on the public record. The next article will explore ways of finding publicly-available patent prosecution history - such as from the USPTO Global Dossier.
About the Author:
Greg Hong came to ventureLAB as a part of Osgoode Hall Law School’s IP Intensive program. At Osgoode, Greg focused his studies on intellectual property, receiving the Gowling WLG Best Blog in IP Law and Technology Prize and competing in the 2024 USPTO National Patent Drafting Competition. Greg looks forward to articling at Rowand LLP upon completion of his law degree.
