University of Saskatchewan

August 28, 2014   

How long does it take to get a patent?

The length of time that it takes to get a patent is highly variable, depending on the nature of the application and the country in which patent protection is being sought. However, the process is generally quite slow.

Currently, the average time from filing an application to receiving a granted patent in the United States is approximately 5-6 years .

The average time in the European Patent Office is approximately 3.5-4 years.

The average time to receive a patent on Canada is even longer because the Canadian Intellectual Property Office allows applicants to postpone the examination of their patent application for up to five years. Once examination has been requested, it takes an average of approximately 4-6 years to receive a patent.

What does it cost to get a patent?

The cost of pursuing patent protection varies widely, depending on the nature of the patent application and the number of countries in which patent protection is sought. However, it is not uncommon for the patenting process to cost $100,000 or more if patent protection is sought in more than one or two countries.

How does the patent application process work?

Step 1: Drafting a patent application

If the University of Saskatchewan decides to pursue patent protection for your technology, you will be asked to provide the data in manuscript form (or provide a draft of a paper/thesis manuscript if you have one ready). This manuscript will then be forwarded to an external patent agent who will use the information to draft a patent application. You will likely be asked to speak with the patent agent so that they can ask questions that allow them to fully understand the nature and scope of the application. The draft of the application will be provided to you for review before the application is filed.

There are three main sections in a patent application.

(1) Description – The description must describe your invention in sufficient detail so as to allow a person skilled in the art to successfully carry out your invention (e.g. make your product or carry out your process/method) using only the information provided in your application and common general knowledge of the field. This section will also include a description of any variations on your invention that you would reasonably expect to work. For example, if you carried out a reaction at a particular temperature, but expect that a range of temperatures would work, then this range will be included in the description.

(2) Drawings – If the understanding of your invention can be aided through the use of drawings/figures then these must be included in the application. These figures describe the invention and/or provide data showing that the invention works.

(3) Claims – The claims are a set of numbered sentences that provide the legal definition of your invention. In a granted patent, the claims define the legal extent of your monopoly rights. Since the claims have legal weight, it is very important that they be carefully worded to encompass the full scope of your invention. Generally, the patent application will include both broad and narrow claims, where the broad claims extend beyond what you actually did to include variations on the invention that would be expected to work.

It is important to note that you are not allowed to make any changes that add new matter to a patent application once it has been filed. This includes adding new data, expanding the scope of the subject matter, and making corrections (beyond the correction of obvious typographical errors). It is very important that inventors take the time to review the patent application before it is filed to ensure that all of the necessary information needed to work the invention is included and that everything in the application is correct.

Step 2: Filing the patent application

As part of the application process, we will ask all inventors to sign documents that assign ownership of the patent to the University of Saskatchewan, that declare that they are the inventors, and that give the University of Saskatchewan (and its patent agents) the right to act on their behalf. Please ensure that your address is current and correct on these forms.

There are a number of strategies that can be used when filing patent applications and the best strategy will be determined based on the specific details of your application.

Common filing strategies are as follows:

(1) Three step process:

  • File a provisional patent application in the United States.
  • File an international patent application (PCT) using the United States provisional application as a priority document (within 1 year of filing the provisional application).
  • Enter the national phase of the PCT in each country where patent protection is desired (within 30-31 months of filing the provisional application).

(2) Two step process:

  • File a provisional patent application in the United States.
  • File national patent applications in each country where patent protection is desired, using the United States provisional application as a priority document (within 1 year of filing the provisional application).

3) One step process:

  • File national patent applications in each country where we wish to seek patent protection.

Note: patent applications are public documents and they are automatically published 18 months after the earliest priority or filing date unless the application is withdrawn before then. It is not possible to request that a patent application be kept confidential after the first 18 months.

Step 3: Examination

If we have filed a PCT application, then an international search authority (likely the Canadian Intellectual Property Office) will carry out a prior art search to see if any aspect(s) of the invention, as defined in the claims, were known or could have been considered obvious prior to the filing of the patent application. The search authority will provide a search report and a written opinion on the patentability of the application on these and other grounds. Neither the search report nor the written opinion is legally binding, but they do give a good indication as to whether the patent application is likely to be successful during the national phase (i.e. when the patent application is examined in individual countries).

If we have filed national patent applications, or have entered the national phase of a PCT application, then each national patent office will examine the patent application and either allow the application or provide a written report detailing the legal defects within the application. This report is often referred to as an office action. It is important to note that there usually is an office action issued by the patent office. This does not necessarily mean that your invention is unpatentable. It is also important to note that patent laws vary between countries so the results of examination may differ by country.

Once we receive the office action, we will have a specified amount of time, usually 3-6 months, to respond by amending the application to correct the defects, by making a well-founded argument in defense of the application, or by abandoning the application. This is done through discussion between the inventor(s), the Industry Liaison Office, and the patent agent. If the decision is made to continue with the application, the patent agent will prepare a document summarizing the arguments and amendments and send that document to the patent office for further examination.

This process can go back and forth several times before the application is either allowed or rejected.

Step 4: Allowance, Abandonment, or Rejection

If the patent office determines that the patent application is allowable, then it will issue a notice to that effect and invite us to pay a fee. Once this fee has been paid, the patent office will issue the patent.

If the patent office identifies defects that we feel cannot be overcome by amendment or argument, then we may choose to abandon the application. Any such decision will be made in consultation with the inventors.

If the patent office rejects the application, we can either choose to accept the rejection or we can appeal the rejection if we feel that the examiner was in error and have solid grounds on which to argue that the application should be allowed.

What fraction of patent applications become granted patents?

This varies by country but in Canada, the United States, and the European Patent Office, approximately 40-45% of patent applications become granted patents.

What qualifies as public disclosure and why is it important?

In order for an invention to be patentable, it must not have been publically disclosed prior to filing the patent application. There are some countries that provide a one year grace period after self-disclosure (i.e. public disclosure by one or more of the inventors listed on the application), which allows a patent application to be filed within one year of the self-disclosure, but most countries will not grant a patent if the invention has been previously disclosed in sufficient detail to allow a person of skill in the art to carry out, make, or use the invention (including making the invention through reverse engineering).

It is strongly recommended that no public disclosure of the invention be made before the patent application is filed.

Some examples of public disclosures:

- published papers, books, newspapers, magazine articles, pamphlets, etc.
- published patents/patent applications
- grant proposals that are not made confidential
- a thesis that has been submitted to the library
- posters, abstracts, and talks at a conference/meeting
- private correspondence (e.g. letters and e-mail) and conversations that are not clearly indicated or understood by both parties to be confidential
- thesis defenses, departmental seminars, committee meetings
- web pages
- public use or sale of a product
- giving a product to someone on a non-confidential basis

Who qualifies as an inventor?

In relation to patents, the term “inventor” has a specific legal meaning and it is important to determine inventorship when preparing a patent application. Including someone as an inventor who does not fit the legal definition, or excluding a legitimate inventor, can invalidate a patent.

Inventorship for patent purposes is different than authorship for publication purposes. If there is any doubt as to who should/should not be considered an inventor, it is important to discuss this with the Industry Liaison Office so that it can provide advice and/or seek a professional opinion if necessary.

An inventor is someone who has come up with the idea behind, or contributed intellectually to, one or more aspects of the invention as defined in the claims. The inventor does not have to be the person who put the idea into practice. For example, suppose Dr. X came up with an idea for a ray gun. If Dr. X conceived of the ray gun, drew up plans, and asked Technician Y to make the ray gun following those plans; and technician Y did so without making any modifications to the plans, then Dr. X would be the sole inventor of the ray gun. However, if Technician Y found that s/he had to make some modification(s) for the ray gun to work, and came up with the idea for the modification(s) his/herself, then Dr. X and technician Y would be co-inventors of the modified working ray gun.

Conversely, if a graduate student, postdoctoral fellow, technician, etc. independently came up with an idea and put it into practice without any intellectual or creative input from their supervisor or colleagues, s/he would be considered the sole inventor. Providing resources and funding does not bestow inventorship. To be an inventor you must have made a creative or intellectual contribution to the conception of the invention.

Please note that a person should also not be considered an inventor if their only contribution(s) to the claimed invention were already known in the prior art (i.e. the body of literature in the field). For example, people who are co-inventors on an earlier patent application are not automatically considered to be co-inventors on all future patent applications that build on the earlier application. If only a subset of the previous inventors was involved in conceiving the improvements or advancements that are the subject of the new patent application, then only that subset should be listed as inventors on the new application.

Finally, it is important to note that financial matters and inventorship can be handled separately. It is possible to distribute revenues to people who are not listed as inventors on the patent application, provided the interested parties have come to an agreement as to how the revenues should be divided. This type of agreement should be made early in the commercialization process, ideally before any patent application is filed.

(Last Updated on March 18, 2011)