FINDER'S FEE

  • Only patent agents or attorneys are qualified & legally allowed to represent an inventor during the examination of the patent application. They are current in the law & practice of negotiating with the patent examiner for the best claims allowable by the rules.

    An inventor may represent themselves before an examiner, who is obligated to help them draft at least one claim, but they are 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.

    > Click here for a brief discussion on choosing a patent attorney.

    Practitioners prepare applications with appropriate strategies that provide maximum infringement protection. We affordably supply comprehensive invention disclosures for the practitioner, improving the quality of their work & the chance of a successful outcome.

  • Patent claims are the precise legal language used to describe the previously disclosed specification & drawings. Practitioners specialize in framing claims broadly so that the maximum scope of the invention is protected & litigation is avoided or mitigated.

    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 & that will not demolish the overall framework of a claims structure.

    No one can ever learn combative arts from a book, especially lawyers. One should pay a lawyer to write claims because they both know the rules & strategies, but also how to break them, because they've been in numerous battles so they know what actually works.

  • Formal application filed, fees paid, but examination will normally be delayed for 2+ years. After 18 months from first filing, the application is published on the patent database, available to all, including competitors. Only PCT filings can stall publication till 30 months.

    Examination is a negotiation between an agent/attorney/inventor, who try to capture the broadest claims as is possible, against the patent examiner, who limits these claims to as narrow a scope as possible in order to prevent excessive infringement lawsuits.

    Examination is a formal legal process, with strict deadlines, specific rules, costs & consequences for failure to respond adequately to an examiner's “office actions“. It should not be attempted by anyone too busy to give the process their fullest attention.

    Expedited examination requires higher fees & to qualify all documentation must fit a prescribed format & specific content. During examination, if it is discovered that the disclosure does not qualify, it is returned to the regular lineup & you lose your fees.

    Patent examination is best prosecuted by those with specific experience both in the field of your invention, and with the process and laws of the countries or patent organizations in which your application is being filed. (i.e. Patent lawyers/agents)

  • You just received your patent, 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 balance is achieved by charging progressively increasing maintenance fees while limiting the patent term to 20 years. When a patent is new, an inventor often has little market share or available capital, so maintenance fees are appropriately inoffensive.

    As profit from an invention hopefully grows, fees are incrementally raised as the expiry of the term approaches. If the inventor does not maintain fee payments, they must relinquish their right to the invention, in order to let someone else improve the field.

  • There is no such thing as an international patent, but the Patent Cooperation Treaty (PCT) is a worldwide system for the simplified multiple filings of patent applications which is facilitated by the World Intellectual Property Organization (WIPO).

    PCT applications are subjected to a novelty search & an optional preliminary examination. Encouraging results can permit multiple simultaneous national filings, standardized applications, fewer fees, delayed publication (>30 months) & reduced costs.

    Important note: Preliminary Applications from some countries, such as Provisional Applications (US) can be used as the foundation of a PCT International Application, so that the invention priority date will be preserved.

    > Click here for some basic facts about PCT filings and procedures.

  • If there is a race to be first to patent, an accelerated examination is needed. 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.

    The PPH allows an applicant whose claims are allowable in the US to have a corresponding application filed in Canada advanced out of turn for examination while at the same time allowing Canada to use the search & examination results of the US filing.

    The patent prosectution highway goes both ways, so that filings in Canada can be accelerated in the US. More broadly, PPH has now been adopted by 25 IPOs in global PPH partnerships & 5 regional IP organizations through bilateral PPH pilot programs.

    For the most current information on the PPH program:

    > Visit the CIPO page

  • PCT filings can delay publication up to 30 months which gives an inventor/company a better opportunity to capture market share by postponing examination costs. Provisionals can start a PCT, but the pendency year is subtracted from the publication term.

    Canadians may be better off filing an incomplete CA patent if they only intend to use the PPH to expedite their US application. If a US provisional is used to expedite a CA application, the PPH route may be used to limit the US patent claims. (not if PCT)

    In PCT filings or PPH strategies, it is highly recommended that you employ a practitioner with direct & current experience in these matters. We can refer you to agents with whom we have worked before & who have the requisite experience & resources.

  • Abandonment
    When the examination of a patent application is halted for failure to file a complete and proper reply as a condition of the application within the time period required.

    Abstract
    A brief summary of an invention. A concise statement of the technical disclosure including that which is new in the art to which the invention pertains.

    Advanced Examination
    A request to a patent office for the early consideration of a patent application.

    Agent (Patent)
    A legal practitioner or individual who is registered to practice before a patent office, or a representative who is not an attorney but who is authorized to act for or in place of the applicant(s) before a patent office.

    Alternate Embodiment
    An explanation in a patent application, of secondary or derivative but still useful practical applications of an invention. Usually, these variations of the invention are included so that an applicant doesn't lose their right to commercialize them in the future.

    Applicant
    The inventor or joint inventors who are applying for a patent on their own invention.

    Application
    An application for a patent, filed at a patent office. For specific kinds of applications that may be filed, see provisional, utility, incomplete, industrial design, and design patent definitions in this glossary.

    Art (Patent)
    All that is known about a particular classification or field of invention, e.g., the state of the art. An expression or phrase that has a defined meaning when used in a particular context or knowledge environment (such as the patenting process, pharmaceuticals, computers, etc.)

    Assignment
    Transfer of ownership of a patent application or patent from one entity to another, often from the inventor(s) to the company that employs them or funds their inventive work.

    Attorney (Patent)
    Any lawyer who is a member in good standing of the bar in a specific region, who is also registered to practice before the patent office in that region.

    Broad (claims)
    When the scope of the claims are broad, they capture or include as many variations of an invention as are allowed under the law, and serve to protect said invention from "working around a patent" by finding a loophole in the claims that allow a competing product to be legally sold without infringing.

    CIPO
    Canadian Intellectual Property Office, the Canadian government department which examines patent applications and issues patent registrations.

    Claims
    That part of a patent that defines the boundaries of patent protection. Explicit descriptions that define an invention, derived from and supported by the specification, comprising those aspects which are legally enforceable. Well written claims are critical to surviving the examination process and preventing any potential infringement litigation.

    Classification (or Class)
    Patents are classified (organized) by a system of numeric codes (cf. Dewey decimal) used to describe every similar grouping of patent art. A single invention may be described by multiple classification codes.

    Copyright
    The exclusive right to reproduce a creative work granted by a country to the creator of that work. Examples of copyrightable properties include software, books, music, scripts, artwork, etc. Protection is automatic as long as the date of the work's creation is verifiable as well as the identity of its creator, and lasts their lifetime plus 50 years.

    Design Patent (US)
    An exclusive right granted to anyone who invents a new, original, and ornamental design for an article of manufacture.

    Disclosure
    In order to apply for a patent, the inventor provides a complete description (disclosure) of the invention for which exclusive protection is sought. Disclosure can also describe the circumstance where an inventor has allowed information about his invention to enter the public domain, potentially limiting his patent rights.

    Disclosure Document
    The USPTO eliminated its Disclosure Document Program on February 1, 2007. See Provisional below.

    Drawings
    Patent drawings must show every feature of the invention as specified in the claims. Omission of relevant drawings may cause an application to be considered incomplete, but only if drawings are needed to understand the subject matter for which the inventor is seeking the patent.

  • Element
    A discretely claimed component of a patent claim or drawing figure.

    Embodiment
    Any manner in which an invention can be made, used, practiced or expressed. (see Preferred, Alternate)

    Enabling Disclosure
    A patent application must disclose a claimed invention in sufficient detail for any person skilled in the relevant art to be able to carry out (reproduce) that claimed invention. In the US, the patent specification must be complete enough so that a person of "ordinary skill in the art" of the invention can make and use the invention without �undue experimentation".

    Enforceability
    The right of the patent owner to bring an infringement lawsuit against a party who, without permission, makes, uses or sells the claimed invention. The period of enforceability of a patent is the length of the term of the patent plus the six years under the statute of limitations for bringing an infringement action. (US)

    Examiner (Patent)
    An official with technical expertise charged with the task of classifying a patent or an application, or of determining whether a patent application fulfils the requirements for a grant of patent.

    Examination
    The process by which a patent office determines whether an application warrants the granting of a patent.

    Expedited Examination
    See Advanced Examination.

    Filing
    The act of delivering a patent application to a patent office, and usually paying the appropriate filing fee, which then generates a filing date or a priority date when officially received.

    Filing Date
    The date of receipt in the office of an application which includes (1) a specification containing a description and, if the application is a non-provisional application, at least one claim, and (2) any required drawings

    Incomplete Application (CA)
    Filing a Canadian patent application which is missing some critical element, such as claims or drawings, and which is classified as incomplete by the patent office. Current rules allow up to one year to file the missing elements, which effectively provides an equivalent to the US provisional application process.

    Industrial Design (CA)
    The features of shape, configuration, pattern or ornament (or combination thereof) applied to a finished article of manufacture. A model or pattern from which an item is reproduced more than fifty times is classified as an industrial design. Industrial design patents are usually more straight forward to produce compared to utility patents, but the designer is granted only ten years exclusive protection.

    Infringement
    The use, manufacture, sale, or reproduction of intellectual property by any party not its legal owner, or without their explicit permission (i.e., by licensing agreement).

    Intellectual Property (IP)
    Creations of the mind - creative works or ideas embodied in a form that can be shared or can enable others to recreate, emulate, or manufacture them. Patents, copyrights, trademarks, integrated circuit designs, industrial designs & business methods [US only]. IP is now considered a business asset, and is often crucial in assessing the true value of a company.

    Invention
    Any art or process (way of doing or making things), machine, manufacture, design, or composition of matter, or any new and useful improvement thereof, or any variety of plant patentable by a country.

    Invention Report (IR)
    A preliminary IP document describing an invention in detail and often used as the foundation for a patent application or a technology feasibility paper. An IR is written by a patent paralegal and can include drawings, search reports, prior art comparisons and a glossary of terms.

    Licensing
    An agreement whereby an inventor grants a manufacturer the right to produce and sell their invention in exchange for a royalty payment or a lump sum.

    Maintenance Fees
    Fees required after the granting of a patent, which must be paid to the patent office or the patent becomes abandoned. Fees are "progressive", which means they go up the longer the patent is active.

    Narrow (Claims)
    Often when an inventor writes their own patent, they are fixated only on the current version of their invention, and do not see what else it can become. In this case, narrow claims restrict the protection afforded by a patent, and open the door to a competitor filing a similar patent which exploits these loopholes, which can allow them to legally make a similar product that wasn't claimed by the original inventors patent.

    Non-Disclosure Agreement (NDA)
    A contract legally protecting the inventor from unauthorized disclosure of their invention to third parties. Inventive Solutions requires that all inventors sign an NDA before disclosing their ideas during a consultation.

  • Paralegal (Patent)
    Patent paralegals often work for lawyers or agents, helping to administer the preparation, prosecution, and maintenance of patents. Experienced patent paralegals also perform patent searches, prepare patent drawings, and assist in editing, proofing and drafting patent specifications.

    Partial Patent Application
    See Incomplete Application (CA)

    Patent
    An intellectual property right granted by a specific country to an inventor which excludes others from making, using, offering for sale, or selling the invention throughout said country, or importing the invention into said country for a limited time, in exchange for public disclosure of the invention when the patent is granted.

    Patent Application (PA)
    A patent application includes (1) a specification containing a description of the invention and, if the application is a non-provisional application, at least one claim, and (2) any required drawings.

    Patent Pending
    A phrase that often appears on manufactured items denoting that someone has applied for a patent on an invention that is contained in the manufactured item. It serves as a warning that a patent may issue that would cover the item and that copiers should be careful because they might infringe if the patent issues. Applying patent pending to an item when no patent application has been made can result in a fine.

    Patent Search
    A review of existing patents. Patent searches are conducted to determine whether an applicant can claim rights to an invention, or whether a patent has already been issued to someone else on the same or a similar invention. Patent infringement searches are made to ascertain whether a product or process can be produced without having to get permission or pay a royalty. Patent searches are also used as a form of research to gain information on existing technology.

    Patent Search Report (PSR)
    A document describing in detail the results a of a patent search for any relevant prior art concerning a proposed invention, for the jurisdictions in which the proposed patent applications will be filed.

    Practitioner
    A person who stands for or acts on behalf of another. A patent attorney or patent agent may represent the inventors named in a patent application. (Also known as a representative)

    Preferred Embodiment
    An explanation in a patent application, of the most appropriate and useful practical applications of an invention. Usually, this version of the invention is the one expected to be commercialized.

    Prior Art
    The listing and description of all previous patents which a new invention may infringe upon. The body of existing patents or patent applications or any other publications or public disclosures throughout the world, relevant to an application or a patent.

    Priority
    The date upon which a new idea is provably conceived by the inventor (as recognized by US patent law), or the date when an application is filed with the patent office (most of the rest of the world).

    Project Agreement
    A contract between Inventive Solutions and their client which describes the project, defines the terms & services provided, and outlines performance. It is only valid when signed & dated by both parties.

    Prosecution
    All the steps involved in following through on a patent application, whereby an inventor or their representative negotiates with a patent examiner for the ultimate issuance of a patent registration.

    Provisional Patent Application (PPA)
    In the US patent system, the submission of preliminary documentation to the patent office, which affords the inventor up to one year patent pending protection, as long as they submit a full application by year end. Documentation does not have to be as rigorous as it does with a full patent application.

    Public Disclosure
    Any instance of releasing enabling information about an invention prior to any filings which might harm or limit or overturn the issue of a patent. Disclosures include, but are not limited to publications, tradeshows, youtube, websites, lectures, interviews, television shows, white papers, grant proposals, non-confidential meetings or discussions, public use or sale. Most, but not all countries have a one year grace period.

    Scope
    What is included - as in the scope of a claim. The scope may include only those elements that pertain to the current prototype of the invention, so the claims could therefore be called narrow. Or the scope could be as broad as possible, including as many variations and alternatives as are conceivable in order to claim the maximum property rights for an invention, as long as supported by the rest of the specification.

    Small Entity
    Small entities are companies having 50 or fewer employees, and universities, but do not include any entity controlled directly or indirectly by any entity, other than a university, that employs more than 50 employees.

    Specification
    A part of the patent application which includes a detailed description of the invention, the manner and process of making and using the same, claims specifying the aspects of the invention for which protection is sought, and the extent of the protection being sought.

    Trade Secret
    Clearly identified proprietary business information for which reasonable efforts of confidentiality have been maintained. Some methods used to preserve a trade secret include non-disclosure agreements, notices of confidentiality, effective computer security, and preventing public disclosures of proprietary information.

    Trademark
    The exclusive right to use, reproduce, or sell a word, combination of words, symbol or graphical design granted to its owner/designer by a country.

    USPTO
    US Patent and Trademark Office, the US government department which examines patent applications and issues patent registrations.

    Utility Patent
    An exclusive right granted to anyone who invents or discovers any new, useful, and non-obvious process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.