P ATENT P ROSECUTION - A N O VERVIEW J ANUARY 2009 C. Michelle Nelles Lawyer, Patent and Trade-mark Agent Toronto

PATENT PROSECUTION - AN OVERVIEW

JANUARY 2009

C. Michelle NellesLawyer, Patent and Trade-mark Agent

Toronto

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Patent Application Process

Overview

1. Deciding Whether/Where To File Application

2. Content Of Application

3. Prosecution Steps

4. Post-Allowance Possibilities

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Whether/Where To File

• Should conduct prior art search

Guidance as to scope of patent potentially available (broad or narrow patent)

Helps to draft application properly (do not want application to read on prior art)

• Wise to retain patent counsel to do search

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Whether/Where To File

• Can search databases on Internet but very difficult skill to properly search

USPTO i.e. www.uspto.gov

CIPO i.e. www.cipo.ic.gc.ca

WIPO i.e. www.wipo.int

EPO i.e. www.epo.org

• Usually about $3,000 for search and opinion on patentability

• Search has limitations – there is 18 month window until publication in most countries

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Whether/Where To File…..

• Costs associated with patent protection and enforcement are very significant and patents are territorial (basically by country)

• Very general estimate: $10K to $15K for one country; well over $100K (even hundreds of thousands) for multi-national filing

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Whether To File?

• Scope of likely patent protection – can you get a broad patent, or only a narrow one?

• What is the commercial life of the invention – will commercial life be less than time to get patent (e.g. computers)? It can be 3 to 5 years until you get a patent.

• Better As Trade Secret? e.g. formula of COKE Need to disclose invention in order to get patent

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Whether To File?

• Will competitors be able to easily design around? Often takes years to get patent Often market lead time is significant

• Do you have money to enforce patent? Litigation is prohibitively expensive (often $1M for very

simple patent in Canada; more in U.S.)

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Whether To File?

• Is idea far enough along to file a patent?

• Financing/Licensing? A patent may be necessary to attract $

• Defensive reasons – will it scare others away?

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Filing Strategies

Picking where to file:• Your market

• Your competitor’s market

• Your competitor’s manufacturing facilities

• Enforcement potential

• Prosecution charges (budget)

Deciding how to first file:• Desire for speedy issuance

• Indication of patentability

• Getting filing date to reserve place in line or due to impending public disclosure

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Parts

• Background

• Summary

• Brief description of the drawing

• Detailed description

• Claims

• Abstract

• Figures

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• In Canada an applicant can file - could be inventor or someone who obtained title to the invention from inventor

• In U.S. inventor must apply – can be assigned to a company

• Patent agent usually used – must be appointed if applicant is not an inventor

• Can have joint inventors

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Timing - Filing An Application

You are too late to apply for a patent in Canada if:• You waited more than a year to apply after you and your

disclosees made the invention available to the public in Canada or elsewhere; or

• Someone else made it public before your claim date. “Claim date” means the date of a claim in an application for a patent in Canada, as determined in accordance with section 28.1 [Patent Act, s.2] (generally, it is first filing date for the claim anywhere); or

• Someone else filed for same invention before your claim date/filing date

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Timing - Filing An Application

• Most countries require absolute novelty must have first application on file before public

disclosure – in other words no grace period like Canada and U.S.

• Therefore should first have application on file before first public disclosure (if possible)

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Where To File/Types Of Applications

• Options include:

Full patent application Ballpark cost ~ $6,000 - $15,000

“Short form” patent application – called “provisional” in U.S. or “informal” in Canada/U.K.

Has to be completed within one year of filing with full filing Cannot add new matter Can file without claims Do not save money in long run – more expensive as you still have

to file a full application Ballpark cost ~ $3,000 to $8,000 Good if there is imminent public disclosure

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Where To File?

The Patent Cooperation Treaty (PCT)

PCT often called the International Application Administered by the International Bureau at WIPO Deemed filing in almost every country in the world

BUT: each filing is not crystallized until national phase entry (i.e. filing in individual country) is requested within 30 months

Really only a 30 month delay in exchange for $ (~ $6,000 for delay)

National phase filings very expensive – translation may be required, etc.

In certain countries (like Canada) you can delay entry into national phase by up to 42 months from first filing

Why delay? Evaluate market and patentability, raise money, license invention, keep options open, etc.

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Where To File?

Also other regional patent systems like EPO

Can designate about 18 European countries – EPO conducts examination and grants patent which must be “perfected” in the individual countries you want protection in

Initial filing cost of filing EPO application is ~ $11,000 to $13,000

Very general rule of thumb is that it is more cost effective to enter on country by country basis if < 3 countries

Some countries require translation – can be expensive – ballpark about $100 per page

Perfection in 5 countries through EPO often at least $20,000 - $30,000 (depending on countries chosen, etc.)

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Where To File/Types Of Applications

Foreign filing and the Paris Convention

• Paris Convention gives an applicant 1 year to file one or more corresponding applications and claim a “priority” back to the filing date of the previous application

• This relieves the applicant of filing in every country of interest in the first instance

• Could do U.S. application first, for example, and then do PCT

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Typical Timeline

PARIS CONVENTION

National Filings

and

PCT Filing

3018

Publication

National Entries of PCT Filing

72

Months

Deadline to Request Examination in Canada

(5 Years from Filing)

(5k-20k)

(10k)

(2k-5k per)

(2k-5k per) (1k)

Note: Maintenance fees may be due depending on country

0 12

Priority

Application

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The Examination Process

Publication

• Applications are laid-open for public inspection after 18 months from the priority date

Need to request examination• Requests for examination may be deferred up to 5 years from filing in

Canada• Currently a delay of between 2 – 4 years to start examination once

you request it• Examiner is assigned file – should be technically competent – will do

prior art search• Can request expedited examination if you have a reason (like

infringer on market) and you pay fee• Examination usually faster before USPTO

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What does examiner do?• Examiner reviews application and requisitions compliance

with the Patent Act and Patent Rules

• Will often issue Office Action alleging application is not allowable (e.g. not new, not inventive, claims are unclear…..etc.)

• Applicant responds with arguments and/or amendments

• Back and forth with Patent Office (costs can equal cost of application preparation in a difficult matter)

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• Amendment is limited Cannot introduce new subject matter

• Amendment may broaden or narrow scope of claims

• Patent to issue to a single invention

• May be required to restrict application to single invention and file one or more divisional applications to additional inventions

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Allowance and issuance

• Get Notice of Allowance once approved

• Pay the final fee and get the patent

• Need to pay yearly maintenance fees to keep patent in force

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What happens if application is refused? Patent Appeal Board• When Examiner considers applicant has not traversed a

rejection, may make next rejection on the same grounds final

• Applicant must amend as required by Examiner or argue over on next response or application goes to Patent Appeal Board

• Patent Appeal Board extends opportunity to applicant to be heard

• Commissioner receives Patent Appeal Board’s findings

• Decision may be appealed to Federal Court

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Protests – filing prior art

• Third party may file prior art with a statement

• Third party involvement is limited

• Could actually strengthen a patent

Note: Other jurisdictions (e.g. EPO) have opposition procedures that allow third parties to be quite involved

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Abandonment and reinstatement

• When applicant fails to comply with a requirement by the due date

Abandoned application

• Reinstatement within 12 months + original action + fee

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Post issuance options• Three major provisions available to clean up a patent

Disclaimer To disclaim (narrow) a part of patent

Re-examination Re-opens examination Cannot broaden Based on prior art

Reissue Also re-opens examination Can broaden Test is inadvertence, accident or mistake 4 year time limit

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Practical Example of Claim Drafting

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Practical Example Of Claim Drafting

What is invention?

Only prior art found• One piece rolling pin with projections for making a

decorative pattern in pastry dough

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A massage device comprising a shaft and plurality of rotating collars with projections

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• Problems

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• Problems

a. Utility

i. Elements are not connected

ii. Directionality of the rotation?

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• Problems

a. Utility

i. Elements are not connected

ii. Directionality of the rotation?

b. Too narrow? Are the collars necessary? Handle and shaft separate?

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Claim 1. A massage device comprising:

(a) a shaft having a longitudinal axis;

(b) a handle associated with the shaft;

(c) a plurality of projections mounted on the shaft and extending in a radial direction from the longitudinal axis;

wherein the projections are rotatable about the longitudinal axis

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Claim 2. The massage device of claim 1, wherein the projections are mounted on collars that are rotatably mounted to the shaft about the longitudinal axis

Claim 3. The massage device of any one of claims 1 and 2, wherein the handle is a portion of the shaft

THANK YOU

C. Michelle NellesCameron MacKendrick LLP150 York StreetSuite 410Toronto, OntarioM5H 3S5Tel: (416) 364-1700Fax: (416) [email protected]

Documents

P ATENT P ROSECUTION - A N O VERVIEW J ANUARY 2009 C. Michelle Nelles Lawyer, Patent and Trade-mark Agent Toronto