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1955 Velcro - De Mestral (Pat# 2717437)

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Filing options
Provisional Applications
Patent Applications
Design Applications
e-Filing vs. Paper filing
Lawyers / Agents
Representation
Patent Claims
Examination Phase
Maintenance Fees
International
Patent Cooperation Treaty
Patent Prosecution Highway
Options & Strategies
 

Filing options

Provisional Applications for US Patent

  • Depending on the intentions of the inventor, i.e., whether they are planning any immanent public disclosures, whether they are still developing their product, or whether they seek to attract investors, usually if a provisional has been written, it should be filed as soon as possible.
     
  • Inventive Solutions will require the full names and nationalities of the inventors for the cover sheet..
     
  • Usually Inventive Solutions will  file the provisional application, and bill the client for the filing fee when it becomes available (need exchange rate).
     
  • If there have been any public disclosures, the inventor has up to one year to file a full patent application referring to their provisional priority date.
     
  • With no public disclosures, an inventor may chose to file a new provisional after the old one expires, but they will not get the old priority date.
     
  • If the inventor neglects to file a proper patent application within a year, and they have made any public disclosures, they will lose the right to ever patent their invention. The patent office has given the inventor an extra year of protection, for which it expects that the inventor will keep their promise, and file a full patent application.
     
  • For the above reasons, the inventor must take all deadlines and disclosure issues seriously. Pay special attention to the possibility that some countries may not allow an inventor to patent in their country if there have been any public disclosures before formal patent application is filed.
     
  • Note that a provisional application is not examined during the year of pendency, but remains on file in anticipation of the formal patent application.
     
  • When a formal application is filed, and assuming the provisional is thorough enough to claim all of the elements that are claimed in the formal application, then the provisional is discarded, and examination phase (see below) of the formal application process is now ready to begin.

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Patent Applications (US & CA)

  • Patent application examinations require that either the inventor represent themselves before the patent examiner, or that they be represented by a patent agent or patent attorney.
     
  • Unless the inventor is conversant with current patent practice and case law, it is often unwise to expect the best outcome by going it alone. The goal of the patent examiner is to restrict the scope of the claims (i.e. the level of protection) of the invention as much as possible.
     
  • While US patent paralegals can prepare & file patent documentation, it is just smarter to employ a lawyer/agent to prepare the patent claims and to represent the inventor before the examiner.
     
  • Inventive Solutions is not legally permitted to represent an inventor before a patent examiner because we are neither certified nor sufficiently experienced to attempt such a task.
     
  • Inventive Solutions can however file incomplete Canadian patent applications, i.e. without claims, which are equivalent to filing a provisional application in the US, but are in no way representing the inventor before an examiner, which a lawyer should do.

Design Applications (US & CA)

  • Note: an applicant may not use a provisional application (US) as the basis of a Design Patent (US), or an incomplete application (CA) as the basis of an Industrial Design application (CA).
     
  • As outlined on the Documents page, design patents are about the form, shape or the appearance of an object, not how that object works or was made.
     
  • For this reason, design patent applications are mostly a set of drawings, with no explanation, claims, or elaborate examination phase. Either a design is new, or it is not, and if the disclosure is complete, and the filing fees are paid, the design registration certificate is issued in due time.
     
  • Inventive Solutions can prepare & file both US Design Patent & CA Industrial Design applications.
     
  • Generally, patents have a term of 20 years, while designs last half that long and cost much less, but both require payment of maintenance fees during their term.

e-Filing vs. Paper filing

  • Mailing applications to the patent office is becoming an obsolete practice for many good reasons, namely delays, extra costs, extra paperwork, unreliability, and risk of losing priority.
     
  • It can take over three months for a receipt of filing (establishes the filing priority date) to be returned to the inventor, and this still requires that they supply a self-addressed & stamped return envelope.
     
  • Electronic filing is accurate, instantaneous, reliable, and filing priority receipts are emailed as soon as the fee payment is confirmed.
     
  • e-Filing does require that all documentation be in a format (PDF) acceptable for filing, but any documentation prepared by Inventive Solutions will meet or exceed those standards.
     
  • e-Filing also allows filing fees to be submitted by Inventive Solutions, for which the client will be invoiced once the exchange rate is determined.

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Lawyers / Agents

Representation

  • As mentioned above, Inventive Solutions is not legally permitted to represent an inventor before a patent examiner.
     
  • Patent Agents or Patent Attorneys are qualified to represent the best interests of the inventor during the examination of their patent application, mainly because they are current in the law and practice of negotiating with the patent examiner. For a brief discussion on choosing a patent attorney click here
     
  • While an inventor has the right to represent themselves before an examiner, and the examiner is obligated to help them draft at least one claim, the examiner is not being paid to look after the best interests of the inventor. The examiner is in a conflict of interest; very risky to the inventor.
     
  • Lawyers and agents can help prepare and prosecute an application with appropriate strategies that can protect an invention to the maximum extent allowable under the law.
     
  • Our services allow the inventor to affordably supply a comprehensive invention disclosure to a practitioner for review, claims, and representation during the examination phase. Each party is able to apply their skills where they will do the most good, which can only benefit the inventor.

Patent claims

  • Patent claims are the final section of a patent;  the arcane legal language used to describe all previous disclosures in the specification and drawings.
     
  • Patent agents or lawyers specialize in being very good at framing claims broadly so that the maximum scope of the invention is protected, and litigation is avoided or mitigated.
     
  • It is said that no one can learn combative arts from a book, and that includes lawyering.
     
  • The art of claims writing is to never allow the loss of one battle to affect the outcome of the war. Well constructed claims permit  the removal of just about any particular claim by an examiner, and that will not demolish the overall framework of the claims structure.
     
  • The reason one should pay an agent or lawyer to write claims is that they not only know the rules and the strategies, they know how to break the rules because they've been in numerous battles so they know what actually works.

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Examination Phase

  • Once a formal application is filed and the appropriate fees are paid, the examination process will begin. Unfortunately, patent offices are usually understaffed, and examiners are overworked, so examination is often delayed for a year, or two, or more.  During this time, the application may be published on the patent database, available to all, including competitors.
     
  • Examination is a negotiation between an agent, attorney, or inventor, who try to capture the broadest claims for the invention as is possible, contrasted with the patent examiner, who attempts to limit these claims to as narrow a scope as possible, in order to prevent excessive infringement lawsuits.
     
  • Examination is a formal process, with deadlines, rules, costs, and consequences, and should not be attempted by anyone too busy to give the process their fullest attention.
     
  • Expedited examination is possible, for additional fees, but to qualify requires that all the documentation fit a prescribed format and content, and if during the examination it is discovered that the disclosure does not qualify, it will be returned to the regular lineup, and you will lose your fee.
     
  • Examination is best handled by those with experience in the field of your invention, and with the process and laws of the country in which your application is being made. (i.e. lawyers/agents)

Maintenance Fees

  • Hooray! You just received your patent registration certificate! Be sure to display a copy in a prominent place in your business or office. But what next? Yes, you guessed it, more fees.
     
  • The patent system balances the right of an inventor to benefit from their imaginative work with that of other inventors who hope to improve on that work with their own inventions.
     
  • This is achieved by limiting the term of a patent (20 years), and charging progressive (the costly interpretation) maintenance fees for the term of the patent.
     
  • When the inventor first receives their patent, it is assumed that they have little market share or capital, so maintenance fees are appropriately inoffensive.
     
  • As the profit from an invention hopefully grows, maintenance fees are gradually raised as the expiry of the term approaches. If the inventor does not maintain their fee payments, they are forced to relinquish their right to the invention, in order to let someone else carry that torch.

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international

Patent Cooperation Treaty (PCT)

  • There is no such thing as an international patent, but there is an international patent application system that subjects an application to a novelty search & an optional preliminary examination.
     
  • Encouraging results of an international examination can permit multiple simultaneous national filings, standardized applications, fewer fees, delayed public disclosure and reduced costs.
     
  • The Patent Cooperation Treaty is a worldwide system for the simplified multiple filings of patent applications, which is facilitated by the World Intellectual Property Organization (WIPO).
     
  • For some basic facts about PCT filings and procedures click here.
     
  • Note: Provisional Applications (US) and Incomplete Applications (CA) can be used as the foundation of a PCT International Application, and the invention priority date will be preserved.

Patent Prosecution Highway

  • A recent development in CA-US procedures is the Patent Prosecution Highway (PPH), which is a pilot project that attempts to expedite patent applications filed in both countries.
     
  • The PPH enables an applicant whose claims are determined to be allowable in the US to have the corresponding application filed in Canada advanced out of turn for examination while at the same time allowing Canada to exploit the search and examination results of the US filing.
     
  • More generally, if claims of an application have been found to be acceptable by a first intellectual property office (IPO), an accelerated examination can be requested at a second IPO.
     
  • This means that the highway goes both ways so that filings in Canada can be accelerated in the US.
     
  • Other countries currently participating in the PPH pilot project are the intellectual property offices (IPO's) of Japan, the United Kingdom, and Korea.
     
  •  For current information on the PPH program, go to the CIPO page here.
     

Options & Strategies

  • PCT filings can be used to delay public disclosures up to 30 months which can allow an inventor or inventive company a better chance to capture market share and postpone examination costs.
     
  • PCT filings can refer to the priority dates of provisional applications, but this pendency period is subtracted from the total period of pre-disclosure pendency. (up to 12 months)
     
  • In the current implimentation of the PPH, Canadians are better off filing an incomplete CA patent if they only intend to use the PPH to expedite their US application. There are risks that if a US provisional is used to expedite a CA application, the PPH route may be used to limit claims in the US patent. (Not if a provisional is used as the basis of a PCT filing however.)
     
  • In PCT filings or PPH strategies, it is highly recommended that you employ a patent lawyer or agent with direct and current experience in these matters.
     
  • Inventive Solutions can refer you to PCT or PPH patent practitioners with whom they have worked before, and who have the requisite experience and resources.

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