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A patent grants an exclusive right to make, use or sell an invention for a certain period of time. In exchange for this exclusive right, the patent holder must disclose to the public what the invention is, and how it is used. The general philosophy is that innovation in society will be stimulated by having inventors share their ideas with the public, and to encourage this, the government gives the inventor the exclusive right to exploit that invention during the life of the patent. Once a patent expires, the technology described by that patent is free to be used by the public.

Generally, the first step in obtaining a patent is to perform a search of the prior art. This is not required, but is often a good idea for two reasons:

  • The search results help to make an initial determination of whether the invention is new and includes an “inventive step” over what has been done previously.
  • The search results help to identify the issues that need more explanation to distinguish over the prior art. It is much better to have this done at the drafting stage instead of during prosecution when options are more limited.

At this step is it also important to consider whether you have made your invention public. In North America, there is a 12-month deadline to file a patent application after an inventor has disclosed an invention to the public. In most of the rest of the world, any public disclosure will result in a loss of patent rights in that invention.

Once the decision has been made to proceed with a patent application, it must be drafted. There are three main parts to a patent application: the description, the drawings, and the claims:

  • The description must fully describe the invention, including the best way to make and use an invention. Any variations or warnings related to the invention should also be included.
  • The drawings are used to support the description and claims to give the reader a better understanding of what is being described.
  • The claims set out the limits of the exclusive right that is being sought. When drafting claims, the essential features necessary for the invention to work are identified, as well as the features that set it apart from what has been done before. Claims drafting is some of the most complicated legal drafting there is, and care should be taken to ensure they are drafted properly.

Since new information cannot be added after an application has been filed, it is important to include all important, or potentially important, features and variations.

The next stage is to file the patent application. The application must be filed in each country in which protection is sought. There are two main ways this can be done:

  • The Paris Convention allows an applicant to file in foreign countries up to 12 months after the initial filing date, and claim priority back to that date.
  • The Patent Cooperation Treaty (PCT) allows an applicant to file one application, and have access to patent rights in various foreign countries. In simplified terms, the PCT gives an applicant an extension of time of up to 30 months to file in individual countries.

It should be noted that, while most countries that are of interest are accessible through these agreements, there are some who are not and early consideration should be given as to where an application is to be filed to ensure that rights are not lost in any countries of interest.

Once the application has been filed, it enters the prosecution stage. In the United States, an examination fee is paid at the time of filing. In Canada, examination must be requested within 5 years of filing before the application will be looked at. Once examination has been requested, it generally takes two to three years to receive a report from an Examiner. Prosecution of a patent application will often involve amendments and arguments to overcome any objections raised by an Examiner. In most countries, during the prosecution stage and after a patent is issued, maintenance fees are required to keep the application in good standing. In the United States, these fees are not required until after a patent has issued.

After the Examiner is satisfied and allows the application, a patent is issued. The patent will generally be in force for 20 years from the filing date of the application.

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