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

2 Patent Application Process Overview 1.Deciding Whether/Where To File Application 2.Content Of Application 3.Prosecution Steps 4.Post-Allowance Possibilities

3 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

4 Whether/Where To File Can search databases on Internet but very difficult skill to properly search  USPTO i.e.  CIPO i.e.  WIPO i.e.  EPO i.e. Usually about $3,000 for search and opinion on patentability Search has limitations – there is 18 month window until publication in most countries

5 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

6 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

7 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.)

8 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?

9 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

10 Patent Application Process Parts Background Summary Brief description of the drawing Detailed description Claims Abstract Figures

11 Patent Application Process 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

12 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

13 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)

14 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

15 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.

16 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.)

17 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

18 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) (1k) Note: Maintenance fees may be due depending on country 012 Priority Application

19 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

20 The Examination Process 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)

21 The Examination Process 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

22 Patent Application Process 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

23 Patent Application Process 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

24 Patent Application Process 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

25 Patent Application Process Abandonment and reinstatement When applicant fails to comply with a requirement by the due date  Abandoned application Reinstatement within 12 months + original action + fee

26 Patent Application Process 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

27 Practical Example of Claim Drafting

28 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

29 Practical Example Of Claim Drafting A massage device comprising a shaft and plurality of rotating collars with projections

30 Practical Example Of Claim Drafting A massage device comprising a shaft and plurality of rotating collars with projections Problems

31 Practical Example Of Claim Drafting A massage device comprising a shaft and plurality of rotating collars with projections Problems a.Utility i.Elements are not connected ii.Directionality of the rotation?

32 Practical Example Of Claim Drafting A massage device comprising a shaft and plurality of rotating collars with projections Problems a.Utility i.Elements are not connected ii.Directionality of the rotation? b.Too narrow? Are the collars necessary? Handle and shaft separate?

33 Practical Example of Claim Drafting 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

34 Practical Example of Claim Drafting 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 Nelles Cameron MacKendrick LLP 150 York Street Suite 410 Toronto, Ontario M5H 3S5 Tel:(416) Fax:(416)