Patent Prosecution 1: When Will My Application Be Reviewed?

The first part of a three-part series delves into the prosecution process of patent applications, focusing on timelines and procedural steps that arise before a patent is either granted or rejected. This introductory article sets the stage for understanding the various pathways available for patent filing, particularly for businesses rich in intellectual property like software or AI. After exploring the appropriate resources, such as prior articles on intellectual property and patentability, an applicant may decide to pursue patent protection, often with the assistance of a licensed patent professional.

When filing for a patent, there are several pathways one can take, predominantly including the US Provisional Patent Application, regular filings, and the Patent Cooperation Treaty (PCT). A key strategy for many applicants is the US Provisional Patent. This application allows inventors to secure an early priority date—the pivotal cutoff for determining an invention's novelty—without needing to meet the formalities of a regular patent application. However, it must be followed up with a full application within 12 months to maintain that priority date. This provisional patent is not examined, making it a cost-effective way to postpone the more expensive aspects of patenting while a business progresses in development.

The regular filing is the most straightforward type of patent application, directly submitted to a patent office for examination. On the other hand, the PCT route enables applicants to safeguard their filing date across 158 jurisdictions and allows an additional 30 months from the priority date to decide on specific countries for protection. The PCT process includes an international search report and offers optional examination phases, providing insights into the patentability of the invention prior to entering the national phase.

Each pathway, while unique in their timelines, leads to the regular filing: the interaction between the applicant and the patent examiner through Examination Reports and Responses. The provisional patent application must contain a descriptive account of the technology at stake, but notably, it does not require legally enforceable claims typical of standard applications. It’s essential to understand that only through a timely subsequent regular application can patent rights be fully secured.

Once a regular patent application is filed, it can be published—typically within 18 months post-filing. In Canada, the applicant must actively request and pay for examination; this can be done at the time of filing or within four years of the filing date. Quick action results in the first examination report being dispatched to the applicant within about 14 months. The applicant is then required to respond to the examiner's feedback within a prescribed timeframe, often three months, addressing any rejections or concerns highlighted in the report.

The examination process is iterative, involving repeated exchanges until the application is accepted, abandoned, or met with a final rejection that can be appealed to the Patent Appeal Board, followed possibly by escalations to higher courts. Importantly, the PCT application streamlines multi-jurisdictional filings and defers critical decisions regarding specific country filings for up to 30 months when linked with a prior US provisional application.

The next article in this series will focus on how patent applications undergo examination and the nature of interactions between applicants and patent offices, emphasizing the importance of examination reports and applicant responses for moving toward the approval of claims.