How is a patent granted? Invention Protection 101 explains how

The patent process begins with the preparation and submission of a patent application to the Patent Office. A patent application typically comprises a written component and drawings. The written portion of a patent application is usually further divided into a number of standard sections, among these the summary, detailed description of the invention, and claims.

It is the applicant (or, more commonly, the applicant’s patent agent) who prepares the claims. However, unlike some other forms of intellectual property, a patent application must be examined before a patent is granted, to ensure that the application and its claims comply with a number of formal and substantive requirements.

Unlike some other countries, patent applications are not automatically examined in Canada. Rather, a request for examination must be submitted to the Patent Office within five years of the application’s filing, although the examination request can be submitted along with the application if desired.

Once the request for examination is filed, there may be a delay of up to 2-3 years before the application is actually taken up for examination, due to backlogs at the Patent Office. However, there are mechanisms available to accelerate examination, such as the Patent Prosecution Highway (PPH) program and the expedited examination program for “green technologies,” which can significantly reduce this delay.

The Patent Office employs patent Examiners with technical training (e.g., engineers), who are assigned to examine patent applications based on their area of expertise. Among other things, it is the patent Examiner’s job to assess whether the claims in a patent application define an invention that represents a novel and non-obvious development over the state of the art. To make this determination, Examiners will first conduct of a search of the “prior art,” which may include patent (and patent application) databases, academic publications and Internet searches.

If the Examiner finds relevant prior art that appears to describe what is claimed (whether in a single reference, or in a combination of some references), then the Examiner is obliged to reject the claims. An Office Action may then be issued to the applicant, setting out the reasons why the application cannot be accepted.

All is not lost at this point and in fact this is quite typical. The Office Action will set a time period for the applicant to reply, and a Response can be submitted with amendments to the claims, arguments as to why the Examiner’s reasons are incorrect, or both.

However, if acceptable claims can be agreed upon, the Examiner will issue a Notice of Allowance. All that remains is for the applicant to pay an issue fee. A patent will be issued shortly thereafter, at which point its owner is free to assert it against competitors.

Typically, the entire process from the filing of a patent application to the grant of a patent can take between 3-5 years.

Paul Horbal is an associate lawyer with Bereskin & Parr LLP and a registered Canadian patent agent. He can be reached at (416) 957-1664. This article is intended to provide general information and should not be considered legal advice.
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