How Long Does It Take to Get a Patent?

In Canada, it takes an average of 30.8 months from requesting examination (which may be done at filing) to get a patent. In the United States, it takes an average of 29.3 months from the filing of a patent application to get a patent inclusive of Requests for Continued Examination (RCEs).

These are averages however and the period between filing (or, in Canada, requesting examination) and issuance is heavily influenced by the decisions you make in the filing and prosecution stages of the patent application process. It is, however, possible to design a strategy to expedite the patent application process and 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 would take three or more years to obtain a patent. Ultimately, the ideal patent prosecution strategy depends on the patent applicant's priorities, goals, and resources.

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. Consequently, it is prudent to develop a patent strategy early on which involves consideration of the countries in which you want to file and what each country’s patent office expects at each stage of prosecution.

Start by filing a United States provisional patent application or an incomplete patent application in Canada (optional)

A provisional patent application refers to an 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.

Since patent rights are granted to the first entity that files a patent application for an invention (assuming all requirements for the issuance of a patent are met), filing an initial United States provisional patent application can allow an applicant to obtain the earliest possible priority date since a provisional application may be prepared in less time and filed in an informal form.

Being the first applicant for an invention is especially important in highly competitive or rapidly evolving industries since there may be many businesses developing similar technologies at once. If a competitor manages to independently develop a similar invention and is the first one to file for patent protection, that competitor’s application will have priority over any later filed applications, including yours, and if they obtain patent protection, they may be able to use that patent to exclude your product from the market.

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.

If obtaining a patent in both Canada and the United States is desired, 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. 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.

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. For example, the use of “patent pending” in association with an invention indicates that it is innovative enough to warrant applying for legal protection. This communicates commercial value to both investors and prospective purchasers. Furthermore, the use of “patent pending” can help deter competitors from developing products that may infringe upon the pending patent rights.

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. Consequently, it is important to draft any initial patent application, for instance, a US provisional patent application, in a manner that fully describes your invention so that all the subject matter in the regular or non-provisional patent application benefits from the earlier provisional filing date.

Starting with a provisional patent application makes sense in many circumstances, such as when an invention is not completely developed or initial cash flow is tight, but it will inevitably increase the time from filing an application to the issuance of a patent, as a subsequent non-provisional application will need to be filed within one year to initiate the patenting process (a provisional application is never examined and never issues to a patent).

A regular patent application, called a non-provisional patent application in the United States, must be filed within 12 months of filing a provisional patent application in order to claim priority from the provisional patent application. If there has been a public disclosure of the invention, this deadline may be earlier, within 12 months of the first public disclosure.

In Canada, a regular patent application must be filed within 12 months of filing an incomplete patent application in order to claim priority from the earlier incomplete patent application.

Filing a provisional patent application in the United States or an incomplete patent application in Canada is entirely optional. It will, however, serve to secure an initial filing date for a proposed invention that may not be completely developed, and it may be filed at lower cost than a fully completed regular patent application.

Or... start by filing a regular patent application

If neither a US provisional patent application nor an incomplete Canadian patent application 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. If your invention is fully developed, and you have the resources to fund the preparation and filing of this more formal application, skipping the provisional or incomplete application will reduce the time from the beginning of the patent process to the issuance of a patent.

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 of an applicant to seek patent protection for an invention in countries that are members of the treaty for even longer than the 12-month priority period referred to above.

It is important to note that an international patent does not result from a PCT patent application and, in fact, doesn’t exist. Rather, a PCT application enables an applicant to file a single regular patent application and have that application flow through to their chosen countries and regions as a regular patent application through either a national phase or regional phase entry filing made at a later date, once those countries and regions are identified. This means that the filing date of the PCT application can be used as the effective filing date in all countries where the applicant wishes to have the subject invention protected, so long as the applicable national and regional phase entry deadlines are adhered to.

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 earlier 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 the regional or national phase. The PCT application will claim priority from the earliest patent application filed and the applicant will benefit from the filing date of that application in its 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 some of your 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, it will be examined by a patent examiner at the patent office.

In the United States, examination is requested automatically when filing a regular or non-provisional patent application. In Canada, there is a separate step of requesting examination, which must be completed within 4 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 for the patent examiner to issue at least one examiner’s report (Canada) or office action (United States). An examiner’s report or office action is a detailed report that outlines objections to the form of the application or the form or substance 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 20.2 months of filing a regular patent application in the United States or within 17 months of requesting examination in Canada. You or your patent agent can check the estimated time to a first office action in the United States Patent and Trademark Office (USPTO) through the Patent Application Information Retrieval (PAIR) system or by using the First Office Action Estimator. In Canada, you can consult the Canadian Intellectual Property Office’s performance targets.

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 at the time of filing the response. The extension fee increases with each additional month. An extension need not be requested before the response deadline and can be requested at the time the response is filed. If no response is received within 6 months of the mailing date, the application will be abandoned, and may be revivable if it can be said that the delay in responding was unintentional.

In Canada, an applicant must typically respond to an examiner’s report within 4 months of the date of the 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. Similar to the U.S., an abandoned patent application may be eligible for reinstatement in limited circumstances.

Upon receipt of an office action, it is important to review the substance of the examiner’s allegations and respond in a manner that does not result in forfeiting the scope of what is claimed as an invention in the application any more than necessary. If a response presents arguments as to why the examiner’s allegations are without merit, it may also cite relevant patent law or discuss the prior art documents which the examiner cites and explain why the invention claimed by the applicant is patentably distinct. If a response includes amendments, it is important to review how these amendments affect the scope of the exclusive rights claimed in a patent application. It may be that amending the application to remove any parts the examiner objected to permits the application to move forward but comes at the cost of severely limiting the scope of the exclusive rights claimed by the applicant.

Upon reviewing the applicant’s response, if the examiner considers 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 consider 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. In the case of a final office action, a request for continued examination may need to be made and a fee paid 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 some countries will also require that the application be translated into their 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 paid in a timely manner.

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 time.

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 based on 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 sought in the subsequent few months through use of the Patent Prosecution Highway (PPH) and reliance on the allowed Canadian patent claims.

Conclusion

As detailed above, the answer to the question of how long it takes to get a patent can vary from under a year to more than three years from the filing date depending on the patent application filing and prosecution strategies you choose.

If you would like to learn more about how to get a patent in Canada or the United States, contact us now for a complimentary and confidential initial telephone appointment with a member of our team.