Patent

Patent Your Innovations to Power Your Profits

Patents provide time-limited monopolies for the disclosure of inventions. These monopoly rights allow inventors or the businesses that own them to profit financially, providing an incentive for investing the time and money into research and development.

The market value of a patent can vary, but studies suggest that the average sale value of a United States patent exceeds $500,000 Canadian dollars. As an example of the higher end of the scale, four patent families drafted by us were sold a few years ago with a sale price of approximately 10 million Canadian dollars.

Where does this value come from? A patent allows you to exclude competition for what is covered by the patent. This allows you to capture all of the sales for your new and innovative product or service. And without competition you can set your price higher and earn a higher profit margin. All other things equal, you will make more money with a patent than without.

Aside from market value and pricing power, patents can deter your competition from copying your product or service, or when they fail to respect your patent, entitle you to claim monetary damages for your lost profits from competitors who do. This provides a level of security that allows new companies to build their business without being quickly overcome by large competitors with more resources.

As a patent law firm with registered patent agents in a breadth of technical disciplines, our firm's greatest strength is in helping clients with patents. We are particularly experienced in helping companies achieve their patenting objectives in a way that allows them to budget their expenditures to scale with the growth of their business.

We provide comprehensive patent services in Canada as well as direct filing and prosecution services in the United States for Canadian applicants. We also help clients obtain patents elsewhere around the world by acting as a liaison with patent agents in other jurisdictions.

An overview of the types of patent services that we provide is found below. For more information about patents, check out our additional resources on patents found on the right side of this page.

If you have questions about our patent services or you are ready to start working with us, please contact us for a complimentary and confidential initial telephone appointment.

Obtaining Patents

Patenting is a complex process. We understand that and proactively counsel our clients on the status and management of their applications at every step of the process to help them make informed filing and prosecution decisions and budget the associated costs.

Patentability Assessments

It is generally advisable to obtain or do your own patentability assessment prior to having a regular or non-provisional patent application drafted.

A patentability assessment includes a patent search, review of the uncovered references, and a written assessment of the likelihood of obtaining a patent for the proposed invention. If the assessment concludes that your proposed invention is not patentable, it’s best to know that early and not incur the cost of drafting, filing and prosecuting a non-provisional patent application.

If the assessment concludes that your proposed invention is patentable, apart from instilling confidence for moving forward, you’ll have an indication of what scope of protection we think you can obtain which will help us prepare the patent claims in the application so that they will be more quickly allowed by the patent office. This reduction of the time spent in prosecution with the patent examiner should result in an overall lower patenting cost.

Drafting and Filing a Patent Application

If it looks like patent protection can be obtained or patent protection is pursued without conducting an initial search, the next step is that we draft a patent application for the proposed invention. If a patentability assessment has been conducted the prior art references uncovered during the patent search will help us draft claims that could receive early allowance from the patent office.

Once a patent application is prepared and approved by the inventors, most Canadian applicants will choose either to file it in the United States initially and then in other jurisdictions within one year of the initial U.S. filing date or to pursue a Patent Cooperation Treaty (PCT) patent application as discussed further below.

We file Canadian and U.S. patent applications (for Canadian applicants) directly with the Canadian Intellectual Property Office (CIPO) and the United States Patent and Trademark Office (USPTO) as your patent agent, and also arrange and supervise the filing and prosecution of patent applications in non-U.S. foreign jurisdictions through our network of foreign patent attorneys.

Patent Cooperation Treaty (PCT) Applications

If there is interest in potentially obtaining patent protection across several jurisdictions, it often makes sense to file the initial regular patent application as a Patent Cooperation Treaty (PCT) application.

We typically file PCT applications for clients who ultimately wish to file patent applications in five or more jurisdictions or at least wish to defer decisions about filing beyond the usual one year convention priority deadline to 30 months from the earliest provisional or non-provisional patent application filing. This allows you additional time to evaluate the commercial reception of the invention before determining the extent to which patent protection will be pursued around the world.

Provisional Patent Applications

In cases where the invention is not fully developed or where you wish to defer a portion of the patent application drafting costs, it may make sense to have us prepare and file an initial provisional patent application in the United States (there is no provisional patent in Canada) instead of a regular or non-provisional patent application. A provisional patent application on its own cannot issue to an enforceable patent but it does allow you to begin to market your product or service as described in the application as patent pending.

Patent pending status is helpful in conveying to potential customers that your product or service is innovative and may also deter competitors from copying your product or service due to the risk of being excluded from the market once the patent issues. (Read more about the benefits of using a "patent pending" notice.)

If the initial patent application filing will be a provisional patent application, it may make sense to forego a patentability assessment prior to filing that application and instead conduct your own informal keyword search on a service such as Google Patents.

After a provisional patent application is filed, a regular or non-provisional patent application will still need to be filed within 12 months of the filing date of the provisional application in order to move ahead with patenting process.

That year, however, can be useful to attempt to raise money from investors or otherwise proceed with bringing your product or service to market. Then patenting objectives can be reevaluated after seeing how well the new product or service is received by others.

If you are unclear on whether to start with a patentability assessment, regular patent application or provisional patent application, get in touch with us and we will help you determine which option makes sense in your particular circumstances.

Software Patents and Health Care Patents

Our patent lawyers and patent agents have experience working in all fields of technology, but we have particular expertise in protecting software and other computer-implemented inventions as well as health care innovations.

Foreign Associates

We also provide Canadian application filing and prosecution services to foreign associates in need of a Canadian patent agent before CIPO. We file both national phase entry patent applications from PCT patent applications and regular national patent applications in Canada.

Avoiding Patent Infringement

Patent Clearance Opinions and Patent Application Protests

Obtaining a patent does not preclude a patented product or service from infringing patents owned by third parties. We provide freedom to operate opinions in Canada to help clients determine the risk of patent infringement from making, using, and selling their new product or service in the Canadian market.

For any pending applications that are identified which pose an infringement risk if issued, we can prepare and file protests with the Canadian Patent Office aimed at preventing the patent application from ever issuing to a patent.

Dispute Resolution and Litigation Services

Patent Infringement and Patent Validity Opinions / Patent Infringement Cease and Desist Letters

We provide opinions on patent infringement and patent validity issues, as well as prepare and respond to cease and desist letters containing patent infringement allegations.

Patent Litigation in Canada

We also represent plaintiffs and defendants as their Canadian patent litigators in patent infringement and patent impeachment litigation in Canada. For more information about our intellectual property litigation services, please see our IP Litigation page.

Patent Transactions

Patent Sales and Patent Licences

We can help you with the legal agreements for a sale or licensing of your issued patent or pending patent application. For more information about our transactional services, please see our IP Agreement page.

Typical Steps in a Canadian Patent Application

Preparing and Filing Your Patent Application in Canada

After a suitable patent application describing and claiming the invention has been drafted, the next step is to file your patent application with the Canadian Intellectual Property Office. The application will include a description of your invention and drawings of the invention you are hoping to patent.

Within a few weeks of the filing of the application, we will receive official filing certificate which provides confirmation of the filing date. After this proof of filing, you may use "patent pending" on any embodiments of your invention that are displayed or sold to the public, or in connection with any information disseminated about your invention.

Requesting Examination of Your Canadian Patent Application

The act of filing a patent application in Canada, without more, does not cause your application to be examined by patent examiner. To begin examination of your application, we must file a formal request for examination on your behalf; this request must be filed within five years of the filing date of the application.

Having this flexibility to choose when to request examination of your patent application is helpful though. It gives you time to assess the commercial potential of your invention in the market. It also provides the opportunity to receive the results of initial examination in other jurisdictions in which corresponding patent applications have been filed prior to entering the examination phase in Canada.

In many cases, examination in Canada can be deferred until a corresponding patent application is allowed abroad and then corresponding amendments may be made in Canada for a quick allowance.

Once an examination is requested, it may take up to two years for a patent examiner to review your application. There are options available for expediting examination and prosecution of a Canadian patent application should that be desired.

Examination of Your Canadian Patent Application

Once your application is examined by a patent examiner, the examiner will issue either a notice of allowance allowing the application to proceed to grant or an examiner's report containing initial objections to your patent application.

At least one examiner's report is typically received in most Canadian patent applications. If an examiner's report is received, we will correspond with the examiner on your behalf as your patent agent.

Subject to your instructions, we will attempt to overcome the examiner's objections by making arguments that the objections ought not apply, or by making permissible amendments and arguments that the objections ought no longer apply to the patent application as amended.

Allowance of Your Patent Application and Issuance of Your Granted Canadian Patent

If an examiner's report is issued, once your patent application is reconsidered by the examiner and all of the examiner's objections have been withdrawn, the examiner will then issue a notice of allowance to indicate that your patent application has been allowed.

On your instruction, we will then pay a final fee for issuance of the patent so that the granted patent may be obtained. With a granted patent in hand, you will be eligible for all the exclusive rights provided under the Canadian Patent Act.

Ready to get started? Contact us for a complimentary and confidential initial telephone appointment.