Before proceeding with the drafting of a patent application based on your new invention, we recommend that you allow us to conduct a patentability search to uncover relevant prior art relating to the invention.  Reviewing such prior art will permit the drafting of a patent application that describes and claims the invention in a manner that avoids the prior art while claiming the invention in as broad a scope as possible.  Avoiding the prior art at this stage may also reduce the prosecution time of the application since the claims will likely be in better condition for allowance at a relatively earlier stage compared to the situation in which no search had initially been conducted.

Based on the information that you provide and any uncovered prior art, we can prepare and file a provisional patent application or regular patent application.  A provisional patent application is generally the first application that is filed to protect a new invention.

The filing of a provisional patent application sets a non-extendible one year deadline for filing a regular application, such as a regular national application or an international PCT application.

The period of one year between the filing of the provisional and regular patent applications provides an Applicant with the time to refine the invention and, if necessary, conduct a review of any new prior art uncovered in subsequent searches.  During this year, the original text of the specification of the priority application may be revised to include improvements in the invention and claims defining the invention, which avoid any previously known prior art and any new prior art uncovered during this period.

At the one year deadline, a new regular patent application is filed based on the upgraded specification, which claims priority to the provisional application and expires twenty years from its date of filing. The new application may be a regular national patent application, for example, a regular U.S. or Canadian patent application, or an international PCT application. The PCT application will not itself issue to patent. Rather, the filing of the PCT application provides a delay mechanism for filing one or more national or regional applications at a later date.

We can directly file your patent application in Canada and coordinate the filing of your application in foreign jurisdictions through one or more of our foreign associate agents.

After a regular national or regional application is filed, the application is eventually taken up for examination by an Examiner who will assess the patentability of the claimed invention in view of cited prior art.  If the application is not considered by the Examiner to be patentable, either due to formal or substantive reasons, then the Examiner will issue one or more Reports setting forth objections.   We can attend to the review of the Examiner’s objections and of any prior art cited in the Examiner’s Reports and prepare and file Responses to the Reports, in which arguments and/or claim amendments are submitted to address the objections raised by the Examiner. Once the Examiner ultimately considers the application to be patentable, the application will be allowed.  An issue fee will then need to be paid within a particular deadline set by the jurisdiction in which the application has been filed so that the application can issue to patent.

Most jurisdictions require that a maintenance fee for a patent application be paid at regular intervals during prosecution of the application, and after the application has issued to patent.  We can readily attend to the docketing for and payment of the maintenance fees for your domestic and foreign patent cases.