Patents

6. Prosecution of Applications

In most countries, the patent application is examined by experienced Examiners in the respective Patent Offices to determine if it is the proper form and is directed to patentable subject matter. In both Canada and the United States an Examiner will conduct his own search and examination of the relevant prior publications available to him or her, so as to assess the patentability of the subject matter being claimed in the patent application. If the Examiner has any objections to the application either as to form or substance, he will issue a written report that is referred to as an "Office Action" and will set a deadline for responding to the Office Action. In some countries such as the United States, extensions of the deadline may be obtained by payment of an extension fee. Failure to respond within the deadline, or such extensions of it as may be available, will result in abandonment of the patent application. It will therefore be necessary for your patent agent to prepare a response to the Office Action that overcomes the objections of the Examiner. You will appreciate that the nature and extent of objections can vary considerably from one application to the next.

Examination of U.S. patent applications follows automatically upon filing of the application, the fees for examination having been included in the initial filing fee. In many countries, including Canada, filing does not ensure examination of the application. This is called "deferred examination". Under deferred examination, the applicant (or his agent) must specifically request that the application be examined and pay the additional extra government fee for such examination. Thus, filing of the application in deferred examination countries only results in applicant obtaining a filing date and serial number, thereby to secure his relative position in the line-up for a patent. If examination is not requested within a period set by law, the application will go abandoned. The time limit set for requesting examination and paying the examination fee in Canada is seven years from the Canadian filing date, although the request can be filed concurrently with the filing of the application in order to expedite examination.

With respect to some applications, the Examiner has no objections, and the application is allowed by issuance of a "Notice of Allowance." Such cases are the exception rather than the rule. More commonly a Notice of Allowance will issue only after one or more Office Actions and responses filed by the appointed agent. It is therefore, difficult, if not impossible, for a patent agent to estimate beforehand how much work will be involved in the prosecution of an application to its allowance. Each invention and application are unique, and therefore prosecutions are "tailored" to the specific application rather than "off the rack".

The charges quoted for preparing and filing a patent application do not normally cover the prosecution charges that may arise because of objections made by the Examiner. Rather, charges are made for docketing and reporting each Office Action to the inventor, and for preparing and filing a written response thereto. In some cases, more than one Office Action may be issued, it being necessary to respond to each of these actions substantially as described above. If it is not possible to overcome an Examiner's objections, an appeal is possible. If the objections are not ultimately overcome and the application is abandoned, there is no refund of the costs incurred to date in connection with that application.