Step 6: Examination of patent application

Step 6: Examination of patent application

The examination of a patent application is the process in which a patent office reviews the application to assess its compliance with patentability criteria which includes evaluating the invention’s novelty, non-obviousness, utility, and sufficiency of disclosure. The results of the examination are communicated in the office action.

What happens in the Examination of a patent application

  • Filing of patent application: The patent application is submitted to the relevant national or regional patent office. The application includes a description of the invention, claims defining the scope of protection sought, and any necessary drawings or supporting materials. The applicant usually pays filing fees at this stage.
  • Formality Examination: The patent office conducts a formality examination to ensure that the application meets the required formal requirements. This includes verifying that all necessary documents and information have been provided and that the application is filed within the prescribed time limits.
  • Prior Art Search: A patent examiner or a search authority appointed by the patent office performs a search for prior art. The prior art includes existing patents, scientific literature, and other publicly available information that may be relevant to the claimed invention. The search aims to identify prior inventions or technologies that may affect the patentability of the claimed invention.
  • Substantive Examination: The examiner evaluates the patent application’s compliance with patentability criteria, such as novelty, inventive step (non-obviousness), and industrial applicability. The examiner reviews the claims in detail, compares them with the prior art found during the search, and assesses whether the invention meets the necessary requirements for patent protection.
  • Office Actions: If the examiner identifies issues with the patentability of the invention, an Office Action is issued. The Office Action outlines the reasons for rejections, objections, or requests for further clarification or amendment. The applicant is given an opportunity to respond to the examiner’s concerns and make amendments or arguments to support the patentability of the invention.
  • Amendments and Arguments: The applicant can amend the claims, description, or drawings of the patent application based on the examiner’s objections or rejections. The applicant may also provide arguments, evidence, or expert opinions to address the examiner’s concerns and demonstrate the patentability of the invention. This process may involve multiple rounds of Office Actions and responses.
  • Allowance or Final Rejection: If the examiner is convinced that the application meets the patentability requirements, an allowance is issued, indicating that the patent will be granted. However, if the examiner maintains rejections and the applicant’s responses fail to overcome them, a Final Rejection may be issued. The applicant may have the option to appeal the decision or take other legal actions available in that specific country’s patent system.
  • Grant and Publication: If the application is allowed, the applicant typically pays the necessary fees. Once the fees are paid, the patent office grants the patent, and it is published in the official patent register or database.

When a request for examination is received by CIPO, your patent application is examined to check if it meets all the requirements and if it can be granted. the patent application is not automatically examined, we need to make a request for examination either at the time of filing the patent application or within 4 Years from the filing date.

Request for examination Fees for patent in Canada is :

Small entityStandard fees
Request for examination FeesCAD 408.00CAD 816.00

Time required for examination of application: CIPO takes the application for examination (in about 12-36 months). The examination of a patent application is a complicated process and may take more than 2 years. You can get examination done sooner by expediting your patent application.

Examination of Application Responsibilities
Inventorthe patent agent or patent attorney makes a request for examination on your behalf.
A patent agent or attorneyMaking a request for examination
Patent officereceive a request for examination and examiner check the patent application for patentability and other criteria and generates search report (office action)

After the application is filed, the Canadian Intellectual Property Office takes the application up for examination (usually in about 12-36 months). In this stage, patent examiners at CIPO conduct their own search related to your invention (patent application) and issue and office action.

Expedite patent examination

There are 4 options to expedite patent examination in Canada :

Advanced examination for green technologies

Your invention should be related to a ‘green’ technology. You need to request in writing showing how your invention is a green technology and can be considered environmentally friendly. There are provisions for faster patent application processing for technologies that help resolve or mitigate environmental impacts or conserve the natural environment and resources.

Advanced examination under a special order

if you can demonstrate that you need faster grant of patent because there is potential infringer doing infringement activities and you really need to get search, publication, examination done as soon as possible to stop the infringement, then such reason may be accepted for faster (accelerated) processing of patent application. There is faster patent application processing if the regular patent approval process time is likely to prejudice the applicant’s or a third party’s rights.

Accelerated examination under the Patent Prosecution Highway (PPH)

You can go for fast-track the examination process if you already have a corresponding patent application or grant with one of Canada’s PPH partners.

Accelerated examination of patent applications related to COVID-19 relief for small entities

There is a provision for accelerated examination for inventions related to medical products and processes supporting the response to COVID-19 for businesses employing 50 or fewer employees and universities.

Next article : Step 7: Office action- Response to objections 

Prasad Karhad
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