Applying for a patent, amending the application, answering questions that come from the patent office, and possibly filing an application in other countries—these steps cost a company time and money. Entrepreneurs need to know the process and timeframe for having a patent issued, how to budget for the process, and when they can expect to assert their ownership over and market the patented piece of intellectual property (IP).
If you wish to patent your invention, you should file a patent application before you make any public disclosure. Be aware that such a disclosure might take the form of a publication, a conference presentation, a trade show for investors or even the sales of your product. In the US and Canada, you must file your patent application within 12 months of your first public disclosure. However, that one-year grace period does not exist in other parts of the world, so for those countries, you must file your patent before disclosing it.
The chart below shows the timeline and budget for a patent application, with “Month 0” being the time the first patent application is filed.
Month 0: File a US provisional or Canadian patent application (priority application=$5K to $20K)
Month 12: File a non-provisional US patent and/or complete Canadian application ($5K to $20K) and PCT* filing ($10K)
Month 18: Publication of patent application by the patent office, and approximate time of first office action [see below] for a US patent (examination occurs automatically in the US)
Month 21: File a response to the first office action
Month 30: Choose individual countries from PCT application (national entries of PCT filing=$2K to $5K per country)
Month 72: Deadline to request examination in Canada ($1K)
Year 20: Patent expiry
*Patent Cooperation Treaty
The first, or “priority application,” can be a US provisional or Canadian patent application, or a regular patent application, and will cost from $5,000 to $20,000.
If the first application is a US provisional patent or Canadian application, then the regular patent application must be filed within 12 months.
The patent application will be published 18 months after the first filing date, so if the patent process is going to be abandoned, it is wise to do so before public disclosure occurs.
After you have filed the application, the patent office will examine it. This happens automatically for US patent applications, but must be requested within five years of the filing date for Canadian patent applications.
After examination, you will probably receive the first office action. The office action is a response from the patent office on what amendments need to be made. For US applications, the average time for the first office action is 18 months. The response to the office action should be provided within three months.
If you plan to file the patent in other countries, it is strategic to file a PCT (Patent Cooperation Treaty) application, which must be done within 12 months of the priority application. A PCT filing provides a way to reserve your option to file patents in any country that belongs to the PCT, which includes virtually all developed countries. Thus, rather than filing in every country where you think you have a market, file a PCT application and leave your options open. A PCT filing costs approximately $10,000.
At 30 months, you continue with your PCT filing by selecting the countries in which you would like to proceed with filing the patent application. At this point, you must decide where your market lies or where you wish to prevent others from reproducing your invention. This step can be costly at $2,500 to $5,000 per jurisdiction, but it does protect your market.
In Canada, the final deadline to request examination of the patent occurs five years after filing. One can request a strategic delay in the examination of a patent application in order to defer costs or to wait to see if the patent will be infringed, but at the five-year point the patent is considered abandoned if examination is not requested.
The timeline for a patent to be issued varies greatly, but on average (from filing to issuance) it takes six months to three years. However, at any time after a priority application is filed, the status of “patent pending” can be used to encourage investors and discourage infringers.
Note: The content in this article is for purposes of general information only. It is not legal advice.