1. What Is A Patent?
A
patent entitles its owner a limited monopoly for the invention it
claims, in return for the inventor disclosure how to perform the
invention. The monopoly is an ‘exclusive’ right to prevent others from
making, constructing or using the claimed invention. The monopoly is
limited to the jurisdiction that issues the patent. Patent rights do not
give the patent owner immunity from being sued by others who believe he
infringes their patent rights.
2.
How Do I Obtain A Patent?
The first step is to file a
patent application in the country where you are seeking patent
protection. If you are seeking patent protection in five countries, you
must file five patent applications.
3. What Is A Patent Application?
A patent application generally has five parts:
- an
"abstract" or short description of the invention;
- a "disclosure"
which sets out the best mode of the invention in sufficient detail to
allow a person skilled in the art to carry it out;
- a description of
the filed in which the invention operates;
- one or more claims which
define the invention; and
- one or more drawings illustrating the
preferred embodiment(s).
4. Must
I Conduct A Patent Search Before I File?
It is not a
requirement to perform a search prior to filing a patent application.
However, it is always a good idea to search beforehand, particularly if
you do not have experience in the area you are interested in. There are
several ways to search, and a multitude of places to search, such as
magazines, libraries, books and the like. Online database searching may
be supplemented with a manual search of the public records at the U.S.
Patent Office. These collections are only a part of the "prior art"
related to your invention.
5.
What Conclusions Can I Draw From A Patent Search?
None.
Database searches are prone to error because they are limited by the
words used in the search. Important prior art references can be
overlooked, simply because their scribe chose words not considered for
the database search. Manual searches are also prone to error. Patent
Office records are public. A pertinent prior art reference can be
overlooked because it is missing or misfiled from its proper location
and therefore not seen in the search. Thus, other pertinent prior art
may still be lurking undetected in the Patent Office, and indeed in the
multitude of other areas where such relevant information may be stored
in public libraries around the world. Thus a search will provide a good
indication of the state of the art, not a conclusive one.
6. How Do I Prepare A Patent
Application?
A patent application is a complex legal
document and needs professional care. The Canadian Patent Office has a
record of Patent Agents who are qualified to write patent applications
and to represent inventors.
The patent application should be
written with a close collaboration between the Patent Agent and the
inventor(s) to ensure:
- that the invention is adequately
disclosed;
- the preferred embodiment and the best mode of the
invention is sufficiently described to allow a person skilled in the art
to carry it out the invention without "undue experimentation";
- the
range of alternatives to the preferred embodiment are discussed as
contemplated by the inventor(s).
The invention must be carefully
claimed to provide the proper scope of protection. Inexperienced
drafters of patent applications can sometimes overlook important
approaches to claiming the invention.
7. Who Should Be Named As Inventors?
Your application should be filed naming all the co-inventors of the
invention as claimed. The co-inventors should include those who actively
participated in the evolution of the invention, but not those who merely
followed instructions in the building of the prototypes, nor those who
merely confirmed what others had contributed.
8. What Kind Of Invention Records Should
I Keep?
You should have a bound lab notebook in which you
can record each development in the invention as they occur, by noting
the date of the development and a description capable of being read by a
person skilled in the art. You should include any test data that allows
you to make the observation or form the conclusion. You should have each
page witnessed by a third party who is capable of understanding what you
have written.
9. How Is A Patent
Application Filed?
A patent application is delivered to
the Patent Office Mail Room, for example at the Canadian Patent Office
in Hull, Quebec or the U.S. Patent Office in Alexandria, Virginia. The
application is then given a serial number and a filing date.
10. When Must A Patent Application Be
Filed?
Among other requirements, you must file your
Canadian patent application before the invention has been disclosed in a
manner that made it available to the public in Canada or elsewhere.
There is, however, a grace period of one year given to disclosures by
the inventor and those who have derived the information from the
inventor. Canada works in a "first to file" system this means that the
first inventor to file gets the patent. United States patent laws
switched from a “first to invent” model to the "first to file" model in
March of 2013. Among other requirements, you must file your U.S. Patent
application within one year from the "printed" publication anywhere in
the world, within one year from the date that the invention was first
"in use or on sale" in the United States. Generally speaking, for most
countries outside Canada and the United States, you must file your
patent application before the invention has been disclosed in a manner
that made it available to the public.
11. What Does "Patent Pending" Mean?
Strictly speaking, "Patent Pending" means that your patent
application has been allowed by the Patent Office and a patent will
issue. However, patent applicants have used the term once their patent
application is "on file". Inventors often mark their products or
literature "Patent Pending" because they believe that it gives notice to
the world that there are proprietary rights in the product and its owner
is seeking patent rights. This is viewed by some as having certain
deterrent value against potential competitors.
12. How Much Does It Cost To File A
Patent Application?
Costs to prepare a patent application
can range from $7,000 to $15,000 or more depending on a number of
factors including the subject matter of the invention. A relatively
straightforward and simple invention would typically fall on the lower
end of that range and a relatively complex invention on the higher end.
The costs to file the patent application also depend on a number of
other factors, including the particular country governmental fees for
filing. For example, you should budget a cost of about:
$2000 to
file in Canada;
$3500 to file in the United States; and
$7500 to
file a PCT application.
13. What
Fees Should I Expect To Spend After The Application Is Filed?
As a very rough guide, you might expect to spend about the same
amount to see you through the examination of the application as you did
to have your application prepared and filed. However, we find that the
lower the cost to prepare an application, the fewer options available
during examination and the greater the risk that the application will
not successfully lead to meaningful patent protection. If the
application is successful, you should budget a cost of about $600 to
issue a Canadian Patent, and about $4000 to issue a U.S. Patent.
14. If I Want Patents In Several
Countries, Do I Have To File All Of Them At Once?
No.
There are a number of world treaties that entitle you to a one-year
grace period from the filing of your first patent application, in which
you can decide which other countries to target your patent filing
campaign. If you file your first application in Canada today, you can
file in the U.S. and most other industrialized countries in the world
within one year from today and those applications will be given
"priority" to your original filing date (your “priority date”) of your
first application in Canada. However, your priority to the original
filing date may be of limited value to you if you have engaged in
commercial activity prior to the filing of your first application,
particularly if that commercial activity has occurred in the United
States.
15. What Happens After My
First Application Is Filed?
The application is reviewed
for formalities. Each country has its own formality requirements and
this usually means submitting extra documentation following filing to
correct these. The application is issued a Filing Certificate confirming
the serial number and filing date. The application is then given to a
Patent Office Examiner who then conducts a search of the Patent Office
Records related to your invention. This begins the "examination" phase
where your Patent Agent negotiates on your behalf with the Patent Office
Examiner. Your Patent Agent works toward the broadest possible scope
available, while the Examiner will be looking for claims that are not
unduly broad, given the state of the art.
16. What Does It Mean To Have
"Patentable" Claims?
The claims must define an invention
that:
- falls within the statutory subject matter as defined by
the patent laws of the country in question;
- is "novel";
- is
"useful"; and
- is "inventive".
17. What Happens If We Are Successful In
Our Negotiations With The Examiner?
The Patent Office
issues a Notice of Allowance, Issue Fees are paid and the Patent
Certificate is issued.
18. How Do
I File In Other Countries?
You can file applications in
each country of choice. This is appropriate if you are considering only
a few English speaking countries. If you are considering a number of
countries, you may want to make use of the international filing regime
administered by the World Intellectual Property Organization, under the
Patent Cooperation Treaty (otherwise known as the "PCT"). A PCT
application can be filed in the Canadian Receiving Office of the PCT,
designating in excess of 150 countries. The PCT application has two
phases or "Chapters":
- Chapter 1 involves an International
Search (where a designated International Searching Authority searches
your invention and provides an initial examination for novelty, utility
and inventive step) and Publication (where your PCT application is
published).
- Chapter 2 is optional and involves a Preliminary
Examination (where the designated International Preliminary Examination
Authority examines your application for novelty, utility and inventive
step). The PCT application does not, itself, become a patent, but is
useful to extend the one year grace period (see If I Want Patents In
Several Countries, Do I Have To File All Of Them At Once?) by an
additional eighteen months (for a total of thirty months from the
priority date).
19. Must I Inform
The Patent Office Of The Prior Art I Have Found In My Searches?
The U.S. Patent Office imposes a "Duty of Disclosure" on its
applicants. The duty of disclosure may be discharged by filing the
relevant prior art. Failure to comply with the duty of disclosure can
result in any patent issuing from your patent application being declared
invalid. The duty to cite prior art continues throughout the prosecution
of the application and, in order to avoid paying a fee for an
untimely-filed Information Disclosure Statement, you should forward the
prior art to your Patent Agent, as it becomes known to you. Prior art is
considered ‘material' if it, by itself or in combination with another
reference, renders the invention unpatentable, or if it contradicts the
statement by the applicant or his agent regarding the patentability of
the invention. Prior art should be cited if an Examiner would be likely
to consider it important in assessing patentability of the invention.
The Canadian Patent Office will, in some cases, require that you supply
the prior art that has been cited in other corresponding applications on
file, for example in the U.S. Patent Office. No prior art needs to be
submitted on a PCT application.