Take the rework out of your paperwork

Although it can appear daunting, the patenting process is relatively simple.

Essentially, you or your company registers your technology with a government, and in return you will receive protection for up to 20 years. This is intended as a mechanism to give you a time-limited chance to capitalize on the technology before it is preserved in the public domain.

Oftentimes the first step is to file a provisional patent application in the U.S. This type of application is relatively low-cost (about $65 to $3,000 USD) and depends on how much work you can do yourself.

Some factors related to income help to determine your entity status, which also affects the price. A great, free tool to help answer these questions can be found at http://microentitycalculator.com.

Gain Patent Pending Status

A provisional application will lock the filing date and allow you to use the “Patent Pending” status in your documentation. A patent pending status can provide some safety when you are publically discussing your technology without fear of having your exact idea stolen for a period of exactly one year from the date of acceptance by the patent office.

It often is convenient to write both the Scientific Research and Experimental Development (SR&ED) claim and provisional patent application at the same time because a provisional patent essentially consists of nine parts, of which two are optional and the other seven have already been started through your documentation and SR&ED claim application (if done first).

The Nine Parts

Part 1: Title. You are allowed 500 characters to describe the technology or invention. This needs to be as short and specific as possible. The same title also can be used for your SR&ED claim.

Part 2: Inventors’ names and residence. Here you must list the specific people who were involved in developing the invention. This does not imply ownership of the intellectual property, which is assigned elsewhere. This information can be used in line 260 of your SR&ED claim.

Part 3: Background of the invention. The background of the invention should have two parts: the field of the invention and the story describing the problem and solution.

The field of the invention is a short statement such as, “The present invention relates to the field of metalworking with electrical discharge.” The story is where you define the limitations of currently available technology including some references/citations if you can. Finally, finish with a strong statement of why your invention is needed. Some of this section can be gathered from (or used in) line 242 of your SR&ED claim and when identifying the field of science.

Part 4: Brief summary of the invention. These one or two paragraphs provide a brief overview of your invention and describe how it works at a high level.  The main detailed description of the invention will follow in Part 6. Some of this writing can be used when describing your final hypothesis and conclusion of your SR&ED claim.

Part 5: Drawings and descriptions of drawings. You should include as many drawings and figures as possible that can strengthen and illustrate the technology in a specific and detail-oriented manner. These can be flow charts, decision trees, or CAD drawings, each with one or two sentences that summarize what is being shown.

Drawings are not required for an SR&ED submission but can be incredibly useful in the case of a technical review. Your contemporaneous documentation associated with your SR&ED claim should contain some useful figures and sketches.

Part 6: Detailed description of the invention. This is the most difficult and longest section to write.

The description of the invention should be as specific and concise as possible, while still adequately and accurately describing it. Every element, term, and meaning should be described and explained with examples to support how it could look, function, and be made.

This is where you reference the drawings and figures that you previously described to improve the context. You need to be extremely specific so that a person skilled in the trade could replicate the invention based solely on reading this text, without needing to do any experimental development.

Parts of this section can be used in lines 244 and 246 of your SR&ED claim where you describe the work that you completed and what was learned. However, for a SR&ED claim, you must focus on the scientific or technological uncertainties that were encountered during this work.

Part 7: References.  This portion of a provisional application is optional, however. If you know of any specific patents or publications that list a detailed process or pieces of your invention and you did not feel like rewriting those pieces into your own application, you can list them here as references.  This can be used as part of your SR&ED claim where you define the existing technology base and benchmarking.

Part 8: Claims. Claims are not required for a provisional application but they can be added if you are certain of your filing strategy. Filing strategy can change as you receive market feedback during limited disclosure of your patent pending idea. I strongly recommend that any and all claims be drafted by a professional skilled in patent composition. In some cases, claims can be reworked and used in line 246 of your SR&ED claim.

Part 9: Abstract of the disclosure. The purpose of the abstract is to allow readers to quickly determine what your invention is, what it does, and how it works. Abstracts must be less than 150 words, so you need to be concise and include only the most pertinent information. In some cases, this information can be used in line 246 of your SR&ED claim.

Now that your provisional patent has been filed, you have one year from the date of submission to convert it to a nonprovisional, legally complete patent.

Before this can happen, your invention must withstand the scrutiny of a formal investigation by experts at the patent office to ensure that the invention is not obvious or infringing on another patent. Typically, converting to a nonprovisional patent will require at least one rewrite and refocus after you have tested the markets to see what parts of your idea are truly desired and worth protecting.

Not all ideas and inventions should be or can be patented, such as when the invention is obvious or not new, is related to an unpatentable subject (like a new sales strategy), or you want to keep the idea highly confidential and away from the public eye. Some people do not know that all patent applications are published on the Internet and are then in the public domain.

The SR&ED program and other government funding opportunities may be mutually exclusive with the patent process. You or your company might be eligible for one but not the other due to differences in the rules.

Taking advantage of the new Pre-Claim Consultation service offered by the CRA SR&ED office will help limit your risk if you are uncertain or would like a written decision and confirmation about whether the work will qualify for SR&ED credits. It is always best to consider each project or invention on its own merits and not expect what has worked in one situation to be applicable in another.