Before discussing strategies and guidelines for working effectively with your patent agent, a brief overview of patent applications is in order. A patent application itself is a document prepared according to a prescribed format which provides a detailed description of an invention, and the proposed legal scope of a patent. There are strict rules regarding the format and content of patent applications. The application must include a petition, a description of the invention, an abstract, claims, drawings and the filing fee. Although your patent agent is well aware of the requirements, your application will benefit from comprehensive disclosure, quality information, and prompt correspondence.

The specification consists of a complete description of the invention as well as your claim(s). In order to write a thorough description, which provides you with greater protection, your agent will need to understand the invention. Take the time to properly describe the invention: explain the background behind it and features that make the invention unique and innovative.

Prior to filing a patent application, the principle step taken is the preparation of the patent application. However, it is usually advisable to conduct a novelty search (often called a “patentability search”) to assess the potential patentability of the proposed invention prior to actual preparation of an application.

In order to conduct a novelty search and/or prepare a patent application, your patent agent will need as much information as possible concerning the features of the invention. While every invention is different, typically, the information required to prepare an application can be furnished by answering the following questions:

  1. What is (are) the problem(s) to be solved by the proposed invention?
  2. What are the features of the proposed invention?
  3. How does the proposed invention solve or address the problem(s) to be solved?
  4. How is the proposed invention different from other solutions to the same (or closely similar) problems? and
  5. Who made creative (inventive) contributions to the solution of the proposed invention?

It is helpful to complete an invention disclosure form. A good example is the one used by the University of New Brunswick in Schedule A.

Prompt and proactive correspondence and disclosure to your patent agent is essential for successful management of your intellectual property. You should be forthcoming with information about the invention.

In general, a patent application should be filed as early as practical in the development process. Typically, the decision of whether or not to file an application will be based on an estimate of the value of the invention. This value estimate would include consideration of its potential use.

The decision to file a patent application should be made as early as possible so that the application can be prepared and filed prior to any disclosure of the invention to external parties. In any event, the filing of a patent application in Canada or the US cannot be deferred more than 1 year after the subject matter of the patent is made available to the public. For many foreign jurisdictions, a patent application must be filed in a convention country before the invention is made available to the public. Further details regarding filing deadlines are provided in Schedule B.

To ensure patent applications are filed promptly and where appropriate, you should take advantage of the expertise of your patent agent. Involve your patent agent in the evaluation of inventions and disclosure reviews. Treat your patent agent as your confidante. Unless he or she knows about an invention and the surrounding details early in the process, your agent will be unable to advise you at that stage.

The wording and preparation of the claims is also a crucial step. You should devote time to reviewing the claims your agent has drafted, making sure they properly describe the information you have relayed. Do not hesitate to question your patent agent where you believe some misconception exists or language may be clarified.

You should also ensure that your patent agent is aware of the best version of the invention, information pertaining to failed versions of the invention, and any prior disclosure of the invention. Your patent agent can better act on your behalf when he or she is provided with full intelligence.

Ultimately, a strong relationship comprising prompt and comprehensive disclosure, mutual understanding, and active participation will help you fully exploit the services provided by your patent agent to successfully harvest your intellectual property.

To see Schedule A and Schedule B click here.