DIY patent applications – what you need to know

ATMAC May 01 2014

You may be wondering if you can write your own patent application.
The answer to this question is yes!
You can DIY your own patent application. The more appropriate question is should you?

The process of obtaining a patent in Canada, like most countries, is pretty complicated. For a beginner’s tutorial start at the Canadian Intellectual Property Office (CIPO), they have a patent application tutorial. You’ll also probably want to peruse the Patent Act, the Patent Rules, and the Manual of Patent Office Practice (MOPOP).

After you’ve read through these, if you’re still interested in a DIY Patent Application, here’s what you need to expect…

DIY Patenting Instructions

Assuming you are a good student and follow the above perfectly, expect to receive a rejection letter from an Examiner in about two years. I’m not saying you will get rejected because it was improperly completed. I’m saying even when done perfectly, rejection letters are quite common.

This is part of the patent process – DIYers and professionals alike. It doesn’t mean the patent will never be allowed. I have written hundreds of applications that have issued as patents and yet I still fully expect to get a rejection letter for each new application I send in. What CIPO’s patent tutorial fails to mention is that the majority of patent applications are rejected as soon as they are picked up by an Examiner. Maybe you will get lucky (we do occasionally) but odds are good that your first feedback from a (hopefully) well-intentioned Examiner will be a big fat rejection letter.

Getting Rejected

Real inventions couldn’t possibly get rejected, right?

It’s not surprising you received an initial rejection. Day after day the Examiners at the patent Office slog through the immense backlog of applications making rapid decisions on patentability.

For each new application in electrical and computer fields (our specialty), they are allotted five to six hours of processing time. They quickly skim your written description, claims and figures; form a mental picture of what they think you have invented; and then search their extensive databases to see if they can find something similar.

Typically they find hundreds to thousands of matches based on keywords and technology classifications. Since they don’t have time to read everything and ponder it carefully over a cup of tea, (and because they certainly don’t want to allow a bad patent right off the bat) they make the safer assumption that your invention is not patentable.

From there, they pick one (or multiple) of the references they find and write you a brief explanation of why they think your independent claims compete with what’s disclosed and suggested in those documents. You might get some kind of explanation for your dependent claims too, but more likely than not you will get a curt ‘form-paragraph’ objection along the lines of “these claims do not seem to add anything of inventive significance.” Yes, that’s an actual quote – not something we made up.

The rejection letter will also specify your deadline to respond. Typically CIPO gives you six months unless you requested accelerated examination and then it will be three months. If you don’t reply by the deadline your application will be considered abandoned and your invention will become your unwitting gift to the public.

Dealing with Rejection – don’t panic

If you are new to the patent game (the second sport of kings), you will most likely feel your ego take a huge hit when you are rejected. You will get angry at the examiner, write obscenities in a letter, complain to your MP or possibly go on national television to criticize the government for holding back entrepreneurs. What you need to do is stay calm. If there is ever a guide book written for patent applicants getting rejected at the patent Office, the words DON’T PANIC should definitely be written in large friendly letters on its cover.

Find your inner peace and then go through the rejection letter again from an objective viewpoint. Remind yourself that the Examiner is not out to get you personally, she (or he) is just an overworked human who took the first pass through your application.

One tactic which works well is to make a numbered list of the separate problems identified in the Examiner’s letter. Here’s a good example:

Formalities are not proper in the description
The figures are not acceptable
The independent claims are anticipated by D1
The dependent claims are obvious in view of D1 and D2

If the Examiner makes other requisitions (requests) add those to your list too; for example, the Examiner may want you to provide a list of all prior art cited to you in any foreign country patent Offices.

Once you’ve got your list, you’ll need to draft a clear and concise letter back to the Examiner and address each and every item. For most problems pointed out to you by the Examiner, you will either amend the text/figures of your application to fix the problem or write a persuasive argument as to why the Examiner is mistaken (i.e., argue that there is no problem).

Make sure you answer every point raised by the Examiner. If you don’t know the answer to a specific question or don’t have certain information that is requested then state that in your letter. Failing to address every issue can be deemed to be the same as not replying at all.

If you have answered all of the objections sufficiently, the examiner will deem your invention patentable and ready for approval. At this point you’ll have the opportunity to file post-allowance follow-on applications which can expand on the scope of current patent. These each follow the above process and with the aforementioned road blocks.

Lastly, you’ll need to pay the issue fees. These are required for your patent to be granted and become enforceable. Congratulations! If you’ve made it this far, you’ve certainly earned it.

Over the coming years you’ll also have maintenance fees – these keep your patent alive. So long as you stay on top of these you’ll have a government issued monopoly on your new idea!

Do I need professional help?

I cannot speak to other aspects of your life, but with your patent applications, you probably do.

If your ultimate purpose of getting a patent is just for fun, pride or for something to hang on your wall then doing it yourself may well be a viable approach. However if your purpose is for monetary gain, I recommend you seek out a patent agent to help you prepare the initial application and deal with any rejections it may face at the patent office.

A qualified patent agent should understand your situation and make suggestions for filing strategies in addition to drafting the initial application with enough detail to support claims that will actually benefit you. You may be thinking of your invention in a very limited way, but your patent agent will be thinking of how your invention can be refined (or possibly expanded) in ways that you have not addressed.

If you need help, we’re happy to take you through these steps.

Andrew MacMillan

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