Patents

4. Preparation of the First Patent Application

It is highly recommended that you employ the services of a registered patent agent to prepare a patent application for your invention. After all, a patent application is undoubtedly one of the most complex legal documents known. Some inventors prepare and file their own applications to save money. Such an approach is "penny wise and pound foolish," as the services of a patent agent are inevitably required to fix the application so as to have it issue, if, indeed, it is capable of so fixing. Frequently, the application must be completely rewritten and refiled by the agent, often at significantly more cost to the inventor than if the original application had been properly prepared and filed by a registered patent agent in the first instance. Moreover, if new subject matter must be added to the re-written application to give it validity, priority for at least the new material added will likely have been lost which, in a "first to file" country such as Canada, may jeopardize the patent protection sought if an application to a similar invention is filed by a third party in the intervening time before the re-written application is added.

Assuming the preliminary patentability search results are favourable (and only about 50% of manual searches are), your patent agent can then proceed with the preparation of the first patent application, which, depending on the scope of your commercial interests, might normally be filed in either Canada or the United States. In any case, for the patent application to be prepared, your invention must be sufficiently complete to enable the agent to describe a working embodiment. You must provide your agent with a description of the best mode then known to you of making your invention and it is also recommended that you indicate any significant alternate constructions or embodiments that come to mind. It will be necessary for the agent not only to describe your invention in detail in the application, but also to prepare claims that set out the scope and extent of the monopoly of the invention to which you and your agent feel you are entitled. The claims normally appear at the end of the application and are set out as numbered paragraphs. The results of the patent search are particularly useful to the agent in the preparation of the patent claims.

It is normal practice for the agent to send an initial draft of the application to the inventor after it has been prepared for review and approval. This will give the inventor an opportunity to confirm the technical content of the initial draft, including the drawings, and to add any additional information to the application that the inventor feels is necessary or appropriate. Upon receipt of the inventor's corrections or suggestions, the patent agent can then prepare the final draft of the application. At this time, a petition (so called in Canada, or referred to as a declaration in the United States) is also prepared for filing with the application. A petition can be executed by the agent on your behalf, while a declaration must be executed by the inventor(s).