How to navigate the patent system to save cost
Disclaimer: The information provided in this factsheet is meant as an educational resource only and should not be construed as legal advice.
- Umbrella Patents
- If you are on a bootstrapped budget, it is recommended to combine all related inventions into one patent application, generally called an umbrella patent.
- Take the time to describe fully each invention in the application in the specification. Then you file the application with a claim set that covers one of the inventions – typically the most important you would like to issue first.
- When the first application is allowed (and before it issues), you file a second divisional application with a claim set covering another one of the inventions described in the specification.
- With this approach, you only have to handle one prosecution and one foreign filing at a time.
- Of course, if you close significant funding, the divisional applications can be filed at any time. But what is important is that all the inventions are protected from the same early filing date (priority date) and the patentability will be evaluated from that same priority date.
- Provisional application
- A provisional patent application allows you to file without a formal patent claim, oath or declaration, or any prior art statement- people typically file provisional applications when they have an idea and want to get ahead of any competitors with the same idea
- Filing a provisional application is often thought of as a way to reduce cost.
- Although the filing fee in the US is a few hundred dollars lower it is highly recommended to draft the application with all details available, as you would for a conventional application.
- The drafting fees should not be much lower for a provisional application for that reason.
- For more details, refer to our fact sheet on Considerations with US Provisional Patent applications released in 2022.
- The Patent Prosecution Highway (PPH)
- The PPH is an interesting program that may help to reduce the total cost when filing in several countries.
- Participating countries will accept an allowance from another country without further searching, saving several thousands of dollars in prosecution cost.
- The goal of leveraging the PPH is to get an early allowance within the first year, before the foreign filings are due.
- Using the PPH for foreign filings: Apply for PPH using the early allowance, which will increase the likelihood of getting allowances in the foreign countries without further costly prosecution
Example 1: A start-up has a new product that combines several innovations. Instead of filing 5 separate patents, it files one umbrella application covering all inventions with claims to the most fundamental invention. The application is filed in Canada with the accelerated program on June 1st, 2020. When the application is allowed in Canada on May 15th, 2021, the foreign filings are filed through the PPH program using the Canadian allowance. The foreign filings are then very likely to issue without further prosecution, saving tens of thousands of dollars.
- The Patent Cooperation Treaty (PCT)
- The PCT is another program that can be used to delay cost when there is a need for protection in several foreign countries.
- A PCT filing is a placeholder that allows you to delay filing in other countries for 30 months from the priority date.
- The PCT will do a search and produce a search report that evaluates the patentability of the application.
- The search report can be used to amend the claims before filing in foreign countries, thus achieving a simpler prosecution. A favorable search report can now also be used with a PPH request to potentially get allowances from participating countries without further prosecutions. It is important to note that you never get “a PCT patent”, it is only a place holder and at the end of the process, the cost of the PCT is incremental to the rest of the cost.
Example 2: A start-up has solved a challenging problem with an innovative solution. The start-up is not sure yet of which countries they will want to file in. The application is filed at PCT June 1st 2020. The company now has until December 1st 2022 to decide which countries they will seek patent protection in. During that time period, the company will receive a search report evaluating the patentability of the invention which can be used to decide how much to invest and where to do foreign filings. During the 30 months, there are no other costs involved. If the search report is positive, the company can use the PPH program to file the national entries of the application.
Key considerations for Canadian companies:
- Combining related inventions into one umbrella application is an excellent way to save money and ensure the best possible protection in the long term.
- Companies that want to file their patents in multiple countries may save time and money by leveraging the PPH or the PCT systems.
- “A company on a bootstrapped budget can make the best use of the different programs to cost efficiently protect their important intellectual property,” says Natalie Giroux, President at Stratford Intellectual Property.
Additional information:
- For information about IP protection in the US, please see the Canadian Intellectual Property Office’s publication on Doing business abroad: Protecting your IP in the United States.
- For material relating to the export of goods to the US, please see the Doing Business in the United States webpage.
- For more information on going global with your IP, visit ca/export-ip.
