Patent Filing &Prosecution

Work Overview

“Patent filing & prosecution” is to obtain patent rights through a filing processing for filing a patent application and a prosecution processing for communicating with the Patent Office.
In the filing processing, we draft patent application documentation that is to be submitted to the Patent Office based on a written description of the invention created by the inventor. The application documentation has a great influence on the scope of patent rights. Consequently, in this filing processing, patent engineers create patent application documentation by considering how to formulate expressions and explanations so as to link an invention to a more valuable patent.
When a patent application is examined by the Patent Office, we are often notified of the reasons for why an invention can't be patented (Reasons for Refusal). In our prosecution processing, in order to obtain a patent, we express opinions and amend the scope of claims while considering the notice of reasons for refusal. The skill of our patent engineers is shown by how they make appropriate amendments and how well they can argue.

Canon's patent filing & prosecution

Multi-faceted examination of inventions

Multi-faceted examination of inventions

The main purpose of obtaining patents is to support the development of our company's business. By obtaining patents, only our company can use the technology we have the patent for and provide appealing products and services that differentiate us from other companies. In addition, the patents we have obtained can be cross-licensed with other companies to, maintain the freedom of our own company designs and obtain royalties from other companies which leads to reductions in their cost competitiveness. Patent engineers at Canon aim to obtain high-value patents that can achieve the above objectives.
We don’t make patent applications proposed by developers just as they are; rather we capture the essence of an invention and polish it so that it encompasses all of the forms it takes including the generic conceptualization of the invention. At that time, we imagine what kind of products our company and other companies will manufacture in the future, and what kind of alternative technologies could be developed, while holding discussions with developers (i.e. inventors) and enhancing their ideas. It is not so rare that a new idea is born from the comments of an IP staff member (a liaison specialist or a patent engineer), an invention completed based on this idea, and that two persons, the developer and IP staff member, become joint inventors. It is no easy task arrive in this way at to take a multifaceted perception of an invention and devise expressions and an explanation of it, but when successful it is very rewarding. Through such multifaceted consideration, we decide what kind of patent application we will submit, and what kind of patent portfolio we will build.

patent engineers and a developer discussing an invention.

Tenacious prosecution

Tenacious prosecution

In order to be granted a patent right, an invention needs to have novelty and involve an inventive step over the prior art. However, at first glance, even good inventions can appear similar to the prior art, and this sometimes makes it difficult to identify an inventive step. At Canon, we don't give up obtaining patent rights for such inventions just because they appear to be similar to the prior art. Even if the invention and prior art appear to be the same, there are usually differences and the essence of an invention is often hidden in these differences. Consequently, patent engineers ask for cooperation from developers (i.e. inventors), and consider, and really think through, “What is the essence of this invention?” Then, they have to draft amendments and/or arguments to clarify the essence of the invention and submit them to the Patent Office. In addition, we sometimes ask examiners for interviews and give them a technical explanation of the invention in order to enable them to understand differences from the prior art and effects caused by these differences. The sense of accomplishment when we are able to obtain a patent for a case like this, which requires perseverance, is exceptional.

Tenacious prosecution

Professional group of patents and technologies

Canon prioritizes in-house creation of the documentation to be submitted to the Patent Office, such as patent application documents, amendments and arguments. Our internal patent engineers draft these documents. In order to do this, our patent engineers must have technical knowledge, and of course patent knowledge. Therefore, each member of patent engineers is naturally well-informed about products and peripheral technologies, and they become professionals in their fields. Through repeated drafting of patent application documentation, while having an awareness for appropriately describing inventions, our patent engineers enhance their abilities for written expression and grasping the essence of an invention.
Patent engineers also work frequently with IP professionals in outside patent firms. When they are asked to prepare instructions and other materials by those firms, they hold technical briefings and business meetings on a case-by-case basis so that they can accurately convey information about our company's products and the main points of an invention. They also ensure that in-house patent engineers and outside IP professionals share the same understanding.
At Canon, patent engineers are entrusted with specific technological fields, and they can build patent strategy in their respective fields. They consider the kind of invention for which an patent application is being filed, what kind of patent cluster is being obtained to compete with rival companies, and also the countries or regions in which patent applications are going to be filed, while factoring in differences in patent laws and examination standards and market size. Thus, it is a feature of Canon, and a most satisfying point, that our patent engineers are able to build patent strategies.

Trusting our intuition

Our patent engineers are constantly thinking about what kind of technology will flourish in the future. When we file a patent application on a technology that no other company has yet put in a product, others around us may not respond well and ask us, “Is this technology really needed?” or “Do we really need to file a patent application?” But we have to trust in our intuition and say, “This technology become definitely necessary in the future!” It is an amazing feeling, better than anything else, when many other companies actually use our technology after we filed a patent application based on our intuition.