How Long Does It Take to Get a Patent?
These are averages however and how long a patent application takes is heavily influenced by the decisions you make with your application in the filing and prosecution stages of the patent application process. It is possible however to design a strategy to expedite the patent application process to get a granted patent in Canada and other countries in under a year. It is also possible to proceed slowly and spread out patenting costs over time in which case it will take three or more years to obtain a patent.
There are different options available for filing patent applications as well as a series of steps in the patent application process after a patent application is filed. The patent system also has deadlines you need to abide by to successfully execute a patenting strategy in multiple countries around the world.
Start by filing a United States provisional patent application or an incomplete patent application in Canada (optional)
A provisional patent application refers to initial informal patent application that is filed in the United States Patent Office. A provisional patent application allows an applicant to place an application on file to obtain a filing date applicable to the subject matter described therein.
Strictly speaking, there is no equivalent to a US provisional patent application in Canada. To approximate a provisional patent in Canada, an applicant may secure a filing date in Canada by filing an incomplete patent application.
The initial filing date obtained through either process can be used for a priority claim in a subsequently filed non-provisional or regular patent application to gain the benefit of the earlier filing date for the subject matter described in the earlier informal application.
Starting with a provisional patent application makes sense in many circumstances, such as when the idea for an invention is not completely developed or initial cash flow is tight, but it will typically increase the time from the initially-filed patent application to the issuance of a patent.
This is because a provisional patent application does not get examined by the patent office. It only serves as a priority document giving you a priority date you can use when you later file a regular patent application.
Or... start by filing a regular patent application
A subsequently filed regular patent application, called a non-provisional patent application in the United States, must be filed within 12 months of filing the provisional patent application in order to claim priority over the provisional patent application. If there has been a public disclosure of the invention, this deadline may be earlier, that is, within 12 months of the earlier public disclosure.
In Canada, a regular patent application must be filed within 12 months of filing the incomplete patent application in order to claim internal priority to the earlier incomplete patent application.
Also note that filing a provisional patent application in the United States or an incomplete patent application in Canada is entirely optional. It will, however, a secure an initial filing date for a proposed invention that may not be completely developed, and may be filed at lower cost than a fully completed regular patent application.
If neither of these types of patent applications are filed, a regular patent application will be the first patent application filed and the date of this filing would be the effective filing date of the patent application.
The benefit of claiming priority is to take advantage of the filing date of the initial patent application and consequently receive protection for the subject matter in the initial patent application. Further, having patent rights pending is a commercially advantageous position to be in.
The initial filing date will only apply to a subsequently filed patent application to the extent that the subsequently filed patent application describes the same subject matter. Only subject matter contained in the initial patent application will benefit from the earlier initial filing date. New subject matter may be added to a subsequently filed patent application but will be treated as filed on the new and later filing date.
If obtaining a patent in both Canada and the United States is desirable, a provisional patent application may be filed in the United States only and both a completed Canadian patent application and a US non-provisional patent application can be filed within 12 months (assuming there has been no public disclosure of the proposed invention) to claim priority to the United States provisional patent application.
This means an applicant does not need to also file an incomplete patent application in Canada at the time a United States provisional patent application is filed in order to benefit from the earlier initial filing date in a later regular Canadian patent application.
Consider an international patent application (PCT patent application)
If you ultimately want to obtain a patent in five or more countries, you should consider filing a Patent Cooperation Treaty (PCT) application as the regular patent application discussed above. Filing a PCT application preserves the right for an applicant to seek patent protection for an invention in countries that are members of the treaty for greater than the 12-month priority period under the Paris Convention referred to above.
It is important to note that an international patent does not result from a PCT patent application. Rather, a PCT application enables an applicant to file a single regular patent application and have that application flow through as an initial patent application in any member country through either a national phase or regional phase entry filing made at a later date after the applicant has decided where to apply for a patent. This means that the initial filing date can be used as the effective filing date in all countries where the applicant wishes to have its invention protected.
Generally speaking, within 30 months of filing a PCT application, an applicant must enter into the member countries patent offices or the regional patent offices in which it would like to proceed with filing a national or regional phase entry patent application. Some patent offices have slightly later deadlines. For example, the European Patent Office employs a 31-month deadline.
If a PCT patent application claims priority to an initial patent application filing, such as a United States provisional patent application, the filing date of the earliest priority application is used to calculate the 30 or 31-month deadline for entering regional or national phase. The PCT application will claim priority to the initial patent application and the applicant will benefit from the initial filing date in its PCT regional and national phase applications.
For instance, if a PCT patent application claimed priority to a United States provisional patent application filed exactly one year prior, the patent applicant will have 18 months (or 19 months before the European Patent Office) remaining from the filing of the PCT application to enter the countries or regions in which it would like to proceed with filing a national or regional phase entry patent application.
Using the PCT application process may be advantageous for deferring substantial patenting expenses if a number of countries are to ultimately be pursued. It is also useful for gaining an additional 18 or 19 months for making decisions about which countries and regions to pursue patent protection in.
Examination of your patent application
Sometime after filing a patent application, the patent application will be examined by an examiner the patent office.
In United States, examination is requested automatically as of filing of a regular or non-provisional patent application. In Canada, there is a separate step of requesting examination which must be done within 5 years of the filing date of the application in Canada that starts the examination process.
Once the application is examined by patent examiner, it is typical that the patent examiner will issue at least one examination report or office action. An office action is a detailed report that outlines objections to the form of the application or the form or substantive of the patent claims. It usually includes citations of prior art, often prior patents and published patent applications, that the examiner alleges to be relevant to the patentability of what’s claimed in the subject patent application.
An office action is usually received by the applicant within 24 months of filing a regular patent application in the United States or within 24 months of requesting examination in Canada.
In the United States, an applicant must respond to an office action within 3 months of its mailing date. This deadline is extendable by one, two or three months upon payment of the applicable extension fee which rises which each additional month.
In Canada, an applicant must typically respond to an office action within 6 months of the date of the examiner's report. The response may include arguments against the objections made or amendments to the patent application with remarks as to why the amended application complies with the applicable requirements. If a good faith response to an office action is not filed within the prescribed timeframe, the patent application will be abandoned.
Upon reviewing the applicant’s response, if the examiner accepts that the amendments and/or arguments overcome the outlined objections and no further objections are made, then the patent application will proceed to the allowance phase.
If the examiner does not accept that the amendments and/or arguments overcome the objections, the examiner will issue a further office action. In this second office action, the examiner may raise new objections in addition to repeating previous objections if they are still applicable. The patent applicant then has a further opportunity to respond with amendments and/or arguments.
In the United States, this second office action is typically designated a final office action. For a final office action, a request for continued examination with a fee may need to be made to continue with the examination process if an acceptable amendment and response cannot be made which does not require the patent examiner to carry out a further search of prior art documents.
Allowance of a patent application
Upon successful completion of the examination phase, a patent application is said to be allowed, and a patent will be granted following payment of the issue fee (in the United States) or the final fee (in Canada).
For an application in the European Patent Office, once a patent is allowed, an applicant must select the countries in which it would like its patent to be issued. Each of those countries will have its own fee for issuance and, for some countries, also require that the application be translated into its official language.
Once you get a patent, you may wonder how long a patent is good for. In most jurisdictions, patents will be in force for the balance of the twenty years from the filing date assuming any required maintenance fees are timely paid.
Expediting a patent application
In most countries, it is also possible to expedite the patent application process so that a patent may issue in a much shorter timeline.
In Canada, this option is readily available as advanced examination requests are typically granted upon payment of an additional fee if the Commissioner determines that failure to advance the application is likely to prejudice that person's rights. In practice, requests for advanced examination are routinely granted on the basis of a statement from the applicant without any formal evidence such as an affidavit or declaration being required.
A patent applicant in Canada ought to consider this option should it desire to obtain a granted patent in Canada in under a year. Then allowances in other jurisdictions may be obtained in the subsequent few months through use of the Patent Prosecution Highway (PPH) and reliance on the allowed Canadian patent claims.
As detailed above, the answer to the question of how long does it take to get a patent, or how long does a patent application take, can vary from under a year to more than three years from the initial filing date depending on the patent application filing and prosecution strategies you use.
If you would like to learn more about how to get a patent in Canada or the United States, please do not hesitate to contact us for a complimentary and confidential telephone appointment.