Patenting: what's involved?


Best practices in IP protection

A step-by-step guide

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Patent law is a very complicated field and the legal requirements for patentability and for assessing freedom-to-operate vary from country to country. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.

This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.

You've decided to patent your invention...

Now what?

These are the key steps by which to patent by the most common route.
Click on any one for details, or

This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.

You've decided to patent your invention...

Now what?

Patent law is a very complicated field and the filing strategy used to protect your invention depends on a variety of factors, including whether or not you have already disclosed aspects of the invention and those countries in which you ultimately seek patent protection. Accordingly, the contents of this site should not be taken as legal advice. A patent lawyer or qualified patent agent should be consulted to review your particular matter and provide advice based on the facts at hand.

This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.

STEP 1 (time zero):

File a U.S. provisional patent application

Provisional filing

Engage a patent agent to help you prepare a patent application – a document that describes your invention in detail, usually with figures and drawings, and that defines in precise legal terms the scope of what you want protected.

This low-cost first filing allows you to “get your foot in the door” without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement.

Why file a US provisional patent application?

It automatically expires after one year and never publishes, so if you decide after one year that you don’t want to get a patent after all, your invention is kept secret (i.e., treated like it was never filed).

Send the provisional patent application to the US Patent Office – this submission process is called “filing.”

Note: This, the earliest filing date of your initial application, is known as the "priority date" (the date from which you claim priority).

If you have already determined that you should patent your invention, and undertaken a Freedom to Operate analysis, then:

STEP 2 (12 months):

File a "full" & a PCT patent application

PCT filing

Engage a patent agent to help you prepare a "full" (nonprovisional) patent application – a document that describes your invention in detail, usually with figures and drawings, and that defines in precise legal terms the scope of what you want protected.

Send the "full" patent application to the US Patent Office before the provisional application explires one year from its filing date.

NOTE: The “full” application claims priority from the provisional—effectively, it receives the “date stamp” of the provisional.

LEGAL TIP: At the one-year point from your initial, provisional filing, you can add more information—such as additional data you have collected—to the full application; after full filing, it is difficult to make significant changes to your patent application.

STEP 2 (12 months):

File a PCT application

PCT filing

File a Patent Cooperation Treaty (PCT) application—a world-wide patent application covering most industrialized countries of the world—before your US provisional application expires one year from its filing date.

The PCT application never becomes an issued patent, but is subject to a central search and examination process by an authority designated by the World Intellectual Property Office (WIPO) in Geneva.

A PCT application, which establishes a filing date in all contracting states, must be followed up with the step of entering into national or regional phases in individual countries to proceed towards the granting of one or more patents.

Note: Your PCT application will claim priority from the provisional—effectively, it receives the “date stamp” of the provisional filing, which you can let lapse.

Legal tip 2: Filing a PCT application allows national phase entry costs to be deferred up to 30 months, compared to filing separate patent applications in each country at time zero or the 1-year mark.

Legal tip 1: When submitting your PCT application, you can add information—such as additional data you have collected—not included in the provisional filing; after filing, it is difficult to make significant changes to your PCT application.

STEP 3 (ca. 16 months):

Search Report/Written Opinion

Search report

At around 16 months (4 months after filing with PCT), the International Search Authority will send you a Search Report and Written Opinion.

The Search Report provides a list of prior art that is relevant to your invention and a brief report summarizing whether or not your invention is patentable according to a PCT patent examiner.

The Search Report/Written Opinion is non-binding to contracting states, but can help you assess the patentability of your invention (in addition to your earlier research ).

You can respond to the Search Report/Written Opinion by amending the claims of the patent application within 2 months from the date of mailing of the Search Report/Written Opinion, or up to 16 months after the priority date (i.e., the earliest filing date of your initial application; in this timeline, the date you filed a US provisional patent), whichever is later.

Note: Only the claims of your application, and no other parts, can be amended by this process. Amending other parts is only possible through filing a Demand.

STEP 4 (18 months):

Publication

Publication

At 18 months after your initial filing (priority date)—thus, 6 months after your PCT filing—your PCT patent application will be published on the WIPO website.

Legal tip: You should file new patent applications directed to any improvements (if applicable) before publication to prevent your own PCT application from being “prior art” against your improvement patent applications.

STEP 5 (22 months):

File a Demand (optional)

File a Demand

Any time up to 22 months from the priority date (or three months after the Search Report/Written Opinion is mailed to you, whichever is later), you can file a Demand for international preliminary examination.

For example, after filing a Demand, you can present detailed written arguments concerning patentability and the Examiner must respond. If you convince the Examiner that the invention is patentable, the Examiner will write up a positive International Preliminary Report on Patentability (IPRP).

Filing a Demand allows you to amend any part of your PCT patent application and initiates dialog with an Examiner that otherwise would not be permitted.

Legal tip: Even if a positive IPRP is written up, national patent offices are not bound to this opinion and so most applicants do not file a Demand.

INTERNATIONAL PHASE:

Overview

International phase

This presentation describes the key steps involved in patenting by the most common route, divided into two phases: an international phase (which starts 12 months after your provisional filing and takes 18 months to complete) and a national phase (which takes an additional 1.5 to 4.5 years).

The international phase entails:

Note: Deadlines during international phase are measured from an initial filing (here, a provisional US patent), the timing of which establishes your "priority date"—the date from which the clock starts ticking and subsequent steps are timed.

An international filing (PCT) by one year after your initial, provisional filing. The international (PCT) filing is followed by: feedback from PCT examiners; opportunities to amend your PCT application; its publication; and issuance by PCT examiners of an International Preliminary Report on Patentability (IPRP) regarding your application.

STEP 6 (28 months):

IPRP issued

IPRP

At 28 months from the priority date (16 months from filing with PCT), an International Preliminary Report on Patentability (IPRP) will be prepared and issued by a PCT examiner.

This IPRP will mirror the Written Opinion/Search Report if you did not file a Demand to amend your PCT application. If you filed a Demand, the IPRP simply mirrors the outcome of the resulting international preliminary examination.

NATIONAL PHASE :

Overview

National phase

The national phase entails:

This presentation describes the key steps involved in patenting by the most common route, divided into two phases: an international phase (which takes 30 months to complete) and a national phase (which takes an additional 1.5 to 4.5 years to complete).

Filing in countries where you wish to protect your invention: filing separate patent applications in the Patent Offices of each country.

Separate interactions with each national Patent Office potentially involving: your requesting an examination; one or more rejections by an Examiner; your responses, prepared by a patent agent, to these rejections; and ideally an eventual notification of allowance and then issuance of a patent.

STEP 8 (ca. 3 - 4.5 years):

Office action

Approximately 6 months to 2 years after you file a national application (thus, about 3 to 4.5 years from the priority date), the patent office of the country to which you have applied will issue an Office Action: a report from the Examiner in that country providing a legal opinion as whether or not your invention can be patented.

Usually the Office Action rejects the claims and sets a time period for the Applicant to respond.

Note 1: In some countries, to initiate the process, a request for examination must be submitted in addition to the filing (China and Canada are examples).

Note 2: Six (6) months to receive a first office action would be quite fast and happens rarely. Typical is 1 year to 18 months. Fifteen (15) months is the average for the US Patent Office.

Legal tip: Expect a first rejection and keep in mind that the examination process is legal in nature and vastly different from a review of a manuscript for publication. Even two to three rejections are quite normal, and these rejections are often not reflective of the legal or technical merit of your invention.

STEP 9 (ca. 3 – 4.5 years years):

Response

Engage a patent agent to prepare a response to the Office Action issued by the national patent office to which you submitted an application. The patent agent will advocate for you and apply their legal knowledge to argue your case, but will require your technical expertise to inform the response.

After 2-3 iterations, typically with narrowing claim amendments (and extending this process for as long as 6 years), the application will often be given a Notice of Allowance.

Sometimes an application is subject to a “final rejection.” In the U.S., a final rejection is similar to a regular office action and can be addressed by a response, but in other countries, an appeal to a special board must be requested if you still wish to pursue patenting your invention.

Note: Examination can be a long and complicated process; the skill of your patent agent to advocate on your behalf will largely determine whether or not you achieve a positive outcome.

STEP 10 (4 - 8.5 years):

Notice of allowance

After the Examiner in any given national Patent Office is convinced that your invention is patentable, that Office will issue a Notice of Allowance—allowing for the issuance of your patent.

How the Office notifies the applicant varies by country.

The Notice typically will detail any issuance and/or publication fee payment deadlines that must be met to avoid abandonment of the application.

Note: When the Notice of Allowance is issued—how long after the priority date—will depend upon how long it took Office Action to be taken, and how many iterations of Office Action and Response were required to convince the Examiner of your invention's patentability.

STEP 11 (4 - 8.5 years):

Issuance and re-publication

After a Notice of Allowance is issued and the required fee(s) are paid, your patent application will proceed through to issuance and be re-published as an issued patent on the website of the corresponding national Patent Office.

After the patent issues, you can bring legal action against any infringer within the jurisdiction of that patent.

Note: Patent maintenance fees vary by country. In the US, maintenance fees are due at 3.5, 7.5 and 11.5 years from issuance. In other countries or regions, maintenance fees are due yearly during pendency and after issuance (e.g., Canada and Europe), or only upon issuance and yearly thereafter (e.g., China).

Legal tip: While the timeline given here—where a patent is issued at 4-7 years from initial filing (priority date)—is typical, it is possible to accelerate this significantly by implementing different filing strategies. A patent can be issued as early as 6 months after initial filing; however, the strategies involved are often costly and are only advisable if a strong business case can be made for swift issuance.

STEP 7 (30 months):

National filing

At the end of the PCT international phase (30 months from the priority date), you must file separate patent applications in the Patent Offices of each country in which you wish to protect your invention.

National phase entry is the most expensive step, especially if translations are required (e.g., translations are required in Japan, China and Brazil, among other countries, and these translations should be prepared in advance).

Legal tip 2: You can file a European patent application at this stage—this application covers most industrialized European countries (including the UK) and is subject to a central examination and grants as a European patent. After being granted a European patent, you must still validate the patent in each European country where protection is sought.

Legal tip 1: Filing a PCT application allows national phase entry costs to be deferred up to 30 months, compared to filing separate patent applications in each country at time zero or the 1-year mark.

Legal tip 3: You should decide in which countries you want to file before the 27-month mark to avoid rush translation fees.

STEP 12 (20 - 21 years):

Expiry

Expiry

Often a patent expires at 20 years from its international (PCT) filing date, although this varies depending on the country and whether term extensions are available.

Given national differences and other variables, it is best to consult a patent agent to calculate the expiry date of your patent.

Legal tip 1: An additional term may be awarded if the Patent Office was slow to take action or due to delays in regulatory approval.

Note: If a provisional application is first filed, followed by a PCT application at the one-year mark (as per the scenario in this presentation), the expiry is measured 20 years from the PCT filing date; thus, the patent would expire 21 years from the provisional filing date (priority date). If an applicant pursues an alternative filing strategy and forgoes filing a provisional application, the expiry may be 20 years from initial filing (priority date).

This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.

Patenting: what's involved?
TIMELINE

                    INTERNATIONAL PHASE

x
x

                    NATIONAL PHASE

x
x

INVENTION

0.......................................12........................................16................................................18.............................................22..........................................28.........................30

Months from priority date

2.5...................................................................3-4.5...............................................................................................................4-8.5............................................................20-21

Years from priority date

Are you ready to patent?

US provisional filing

PCT process

International (PCT) filing

RESOURCES

This tool was designed in collaboration with Wendy Lamson, Patent Agent: wlamson@perlaw.ca.

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