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Filing Strategies
The expense of preparing and filing any patent application is highly variable and comprises three principal task categories as follows: (i) searching and evaluating the invention relative to the prior technology (prior art); (ii) preparing the specification, claims, abstract and drawings; and (iii) preparing the formal filing documents, arranging their execution, attending to filing the application, and paying the official fees and other disbursements. Note that once tasks (i) and (ii) have been completed for a first patent application filing in one country, these tasks normally do not have to be repeated for subsequent counterpart patent applications filed in some other country, if the character and perception of the invention have not changed when the time comes to file the subsequent patent application. Where, however, between the time of the first filing and the one-year Convention priority deadline for arranging subsequent filings of counterpart applications in other countries, the invention has been improved, refined, or superseded, or variants of the invention identified, then the first two task categories mentioned above may have to be redone before the subsequent patent application filings are effected. This two-stage approach to protection of an invention is frequently suitable where the inventive idea is not static but is the subject of ongoing research, development, modification or refinement. Filing an earlier somewhat skeletal patent application preserves a Paris Convention priority date for the underlying inventive concept, while the second-stage patent application can embellish the originally filed specification, refine the claims, and capture modifications and improvements made to the invention subsequent to the first-filed patent application. Note that this strategy is often suitable even if patent protection is to be sought in only Canada or only the U.S. or in both countries. In either case, the later patent application that includes comprehensive up-to-date information can obtain the benefit of the filing date of the first- filed application provided that the second application is filed within a year of the first filing. In the U.S., what is termed a continuation-in-part application may be filed more than a year after the first filing in the U.S. and obtain the benefit of the filing date of the first-filed application, as long as the continuation-in-part application is filed before a patent is granted on the earlier application. Variants of this strategy are possible involving a series of three or more filings; we can review these with you if and when the circumstances for their implementation advantageously arise.
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