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Patent FAQ
Unless otherwise specified, all question and answers relate to Canadian patents and patent law in Canada.
Sections:
Similarities and Differences Across Jurisdictions
General Questions
- What is a patent?
A patent is a time-limited, legal right to exclude others from making, using and selling an invention, which may be a product, composition, machine, process, or an improvement of any of the aforementioned that is new, useful and inventive, A patent specification describes the invention, and the manner and process of making and using it. Generally, the invention is defined in a set of claims and is accompanied by a written description and a set of figures.
- What is a patent application?
A patent application can be defined as a package of your invention’s patent information materials. These include administrative documents required by patent offices and documents that thoroughly describe how to make and use the invention and its patentable aspects that the applicant wants to legally protect. A patent application generally includes an abstract, a title, an identified field of the invention, background to the invention, a summary of the invention, a detailed description of various embodiments of the invention, drawings or figures of embodiments of the invention, and claims that define the scope of patent protection sought.
Usually, inventors and patent professionals work together to create the patent application. An inventor describes to a patent professional how to make and use the invention and the patent professional handles the step of drafting the legal documents that reflect the innovative aspects of the invention and meet the administrative requirements of the patent offices in which the application will be filed.
If a patent application is poorly drafted, an applicant may not receive legal protection for valuable aspects of their invention, if protection is granted at all. The scope of the monopoly the applicant is granted may be so narrow that it becomes virtually useless because competitors or other interested parties can make the invention substantially as claimed, with minor changes, and in this way avoid infringing the applicant’s exclusive rights.
- What legal rights does a patent owner have?
A patent owner has a time-limited, legal right to exclude others from making, using, or selling an invention. These patent rights generally last from the date of grant of the patent until 20 years from the date the application was filed, assuming all required maintenance fees are paid. In most jurisdictions, patents are considered private property rights which may be enforced by the owner of the patent through the courts. Like real property or land, which gives an owner the right to prevent the use of that land by others, patent rights give an owner the right to prevent the use of a claimed invention by others. Note, however, that it is the responsibility of the patent owner to enforce their rights. The government offices that grant patents do not monitor for their infringement.
Patent rights, like other property rights, can be licensed or sold.
- How can patents enhance the commercial value of ideas?
The time-limited, legal right to exclude others from making, using or selling an invention is valuable as it can be used to exclude competitors from making, using or selling the patented invention. In other words, a duly enforced patent can eliminate competition with respect to the invention in the marketplace. The patent owner can set their price without fear of being undercut by competitors and consumers can only purchase the invention from the patent owner or parties authorized by the patent owner to make and sell the invention. While the patent owner's right to exclude is limited to the claimed invention, a well-drafted set of claims in a patent application can often provide a considerable scope of protection that protects against variants. In addition, because a patent is a transferable property right, it can be bought and sold.
- What is a patent worth?
The monetary value of a patent is directly connected to the benefits an invention provides. The greater the benefits of an invention, the more others in its industry or related markets will want to use the patented invention that you hold exclusive rights to and the more they’ll want to pay you to do so. Consequently, even simple inventions can be very valuable if you can envision them being adopted by a lot of people in their everyday lives to solve a common problem.
Filing and obtaining a patent also communicates value to prospective consumers and investors since a ‘patent pending’ notice or owning a granted patent indicates that the invention is innovative enough to justify investing in legal protection. Further, investors are generally more inclined to invest in a product knowing that no one else is entitled to make it. A patent protects their investment by bettering the odds of commercial success.
- What are the differences between patents, industrial designs, trademarks, and copyrights?
Patents are used to protect new and useful inventions, including software processes, manufacturing and production processes, devices, and products. Unlike other types of intellectual property rights, they are directed toward protecting the utility of a given invention.
Industrial designs, known as design patents in the United States, are used to protect visual elements of a design as applied to an article. For example, a novel shape for a coffee maker, but not the coffee maker’s internal mechanisms or functionality.
Trademarks are used to protect brands, images or slogans that are used in association with goods and/or services to indicate the source of those goods and services.
Copyright is used to protect creative works, such as original literary, artistic, dramatic, or musical works, from reproduction.
- What is patentable?
Patentable inventions include new and useful products, machines, processes, and compositions. Improvements on other inventions are also frequently patented, provided they are not obvious improvements. Subject matter that cannot be patented, like a visual product design or business name or abstract theory, may alternatively be eligible for protection under Canadian copyright, trademark, or industrial design laws or as a trade secret. Subject matter that is not patentable in Canada includes scientific principles, methods of medical treatment, and higher life forms.
- What are the different types of patents I can obtain?
In Canada, you can only obtain a single type of patent for new and useful inventions. This may be contrasted with patents in the United States, which are separated into two categories: design patents, corresponding to Canadian industrial designs, and utility patents, corresponding to Canadian patents. Please see our industrial design page or our Industrial Design FAQ for further information about industrial designs and design patents.
- What are process patents and product patents?
The terms ‘process patent’ and ‘product patent’ may be defined as patents that protect either a method or the product that results from a method, respectively. Unlike the different types of patents found in the U.S., the terms ‘process patent’ and ‘product patent’ only refer to the subject matter being claimed by a patent application.
For example, a process patent may protect a more efficient manufacturing process for a pharmaceutical, while a product patent would protect the pharmaceutical itself.
- What is the difference between licensing and assigning a patent?
Licensing a patent means granting permission to another individual or organization to make, use and/or sell the invention that has been patented, like granting someone the right to use a piece of land. A license may be granted for a limited period of time or for the entire life of a patent.
A patent assignment, on the other hand, is a complete transfer of patent rights from one person to another, like selling a piece of land. A formally drafted legal document, generally known as an assignment agreement, sets out the terms of the transfer of patent rights. For example, an assignment agreement can be used to have an inventor assign a patent to a company or from one company to another company.
- How do you buy patent rights?
Patent rights can be licensed or bought through negotiations between a vendor and purchaser that determine the price and terms and conditions of the license or sale. Some businesses develop inventions and patent them strictly for the purpose of licensing or selling them, whereas others are reluctant to let others benefit from their research and development. Strategizing with a patent lawyer about your commercialization strategy is helpful, especially if you intend to patent an improvement or new use for an already patented invention to ensure the eventual patent rights are positioned to achieve your objective.
- What kinds of inventions are eligible for patent protection?
In most cases, the most important requirement is that an invention is new, meaning, it has not been previously disclosed to the public by anyone, including the inventor. While patents are frequently granted for improvements, this requirement typically means that at least one feature of a claimed invention must not have been taught or suggested by any prior public disclosure.
An inventor’s own public disclosure may prevent an invention from being patentable. Many jurisdictions, however, offer a short grace period in which a prior public disclosure by an inventor is acceptable, so long as an application is filed within the grace period.
Patentable inventions must also be non-obvious, or inventive, meaning that even if they are new and haven’t previously been disclosed, they must involve a certain degree of invention relative to what has been disclosed. In other words, if a pencil with an eraser on top hasn’t been disclosed, but a pencil and an eraser each have been, there remains a question as to whether it would have been obvious to combine the pre-existing pencil and eraser.
Many jurisdictions also place limitations on the subject matter that is eligible for protection. For example, there are often limits on the patentability of scientific theories, mathematical methods, higher life forms, and methods of medical treatment.
- What are the requirements for an invention to be patentable?
Typically, the most important requirements are that the invention be new and non-obvious. To be new, the invention must not have been publicly disclosed. The test of non-obviousness involves considering whether the invention is something that a skilled worker in the field or industry of the invention would consider obvious. Novelty and non-obviousness are generally judged considering prior art.
If you need help determining whether your invention is patentable, we offer both patentability assessments to give you our opinion on patentability, as well as novelty searches designed only to uncover relevant prior art for you to review. Contact us now for a complimentary and confidential initial telephone appointment to learn more.
- What is prior art?
Broadly speaking, prior art is defined in patent law as information that has been publicly disclosed before the priority date of the patent application. Prior art is examined to determine the patentability of a proposed invention.
Prior art can be any publicly available information, such as published patent applications, granted patents, academic research publications, trade magazines, or online product descriptions. Further, prior art includes disclosures made in any language. Note that prior art includes all patents in the world and industrially relevant public disclosures. Thus, prior art is not limited by national or regional boundaries.
- Why do a patent search or patentability assessment?
A patent search will uncover prior art documents relevant to the patentability of a proposed invention and an understanding of the state of the art in a particular field of invention.
A patentability assessment includes a prior art search (patent search), an analysis of the prior art uncovered, and an opinion from a patent professional on potential objections which may be raised against your patent application and the odds of overcoming them and obtaining a patent, as well as the likely scope of the monopoly which may be obtained.
Prior art searches and patentability assessments help inventors make informed business decisions by investigating if it is worthwhile to proceed with a patent application in view of applicable prior art.
- What is the priority date?
The priority date of an application is the earliest application date of a priority document to which a priority claim is made in a regular patent application. In many cases, this priority claim is made to a United States provisional patent application.
Many jurisdictions, including Canada and the United States, will allow an applicant who has filed a patent application in another country to claim the benefits of the earliest filing date of that application as the filing date of a subsequent patent application, so long it has been filed within 12 months of the earliest filed patent application and the subsequent patent application relates to the information described in that earlier application. This is known as a priority date. The ability to claim an earlier priority date is valuable, as in most cases a patent examiner will be unable to cite prior art filed and/or published after the priority date against the patentability of the claims of your application.
- What if my idea is old but no one has ever patented it?
If an invention has been disclosed publicly it may no longer qualify as new, as required by the patent office. If the public disclosure was by the inventor, a one-year grace period may apply in some countries, such as the United States and Canada.
However, if your invention is simply an idea that you have been conceptualizing for a long time, but which is not known publicly, it may still be eligible for patent protection.
- What if my idea was patented but the filing expired?
Patents are generally granted for a period of 20 years from the date of filing. Once a patent expires, the owner no longer has exclusive use of the invention, and it no longer limits the public’s ability to make or use the invention. Inventive improvements to the original invention, however, may still be eligible for patent protection.
- How are patent rights enforced?
Generally, patents are enforced, much like other private property, namely, by the owner of a patent through the courts.
If you discover someone making, using or selling your patented invention, you may choose to commence a lawsuit alleging infringement. Such a lawsuit will generally seek monetary compensation from the other party and/or a court order that the other party stop infringing your patent.
- Who decides if patents are granted or not?
The granting of patents is handled at the national or regional level by the respective national or regional patent office. In Canada, for example, this is within the authority of the Canadian Intellectual Property Office (CIPO).
Patent applications may be filed initially at an international level, often with at least an initial consideration of the merits of the application. However, applicants must eventually decide in which countries they are interested in seeking a patent and file subsequent applications in those jurisdictions. This is known as a national or regional phase entry of an international application.
- What is a patent lawyer?
A patent lawyer can be defined as a lawyer with significant experience handling the legal work involved in one or more of the areas of securing patent protection for inventions, identifying patent-related legal risks, and enforcing patent rights. Some may also be able to advise on commercializing inventions. Patent lawyers who are certified by a law society as specialists in patent law have been recognized for their high degree of expertise and must maintain a continuing focus in patent law.
- Can I obtain a patent but keep my invention confidential?
Generally, patent applications are made public 18 months after the filing of the application, and almost always before the application is granted.
Public disclosure is an integral part of the patent system, and often described as the inventor’s side of the bargain, exchanging public disclosure of an invention for a time-limited monopoly.
- Can I patent my invention and keep parts of my invention secret to the public?
No, when applying for a patent you are required to disclose how to make and use your invention. The disclosure is the quid-pro-quo of the patent system. In exchange for fully and completely disclosing your patent-eligible invention, you are awarded a time-limited monopoly on the manufacture, use and sale of the invention. If you want to ensure your invention remains secret, you may wish to consider resorting to trade secrets to protect your work.
- Can I obtain a patent on my software-related invention?
Any invention is patentable provided it meets the requirements set by law, such as requirements for novelty, non-obviousness, usefulness, and patentable subject matter.
In many cases, as long as the software includes some novel step or approach it is eligible for patent protection, regardless of whether it also includes some sort of scientific theory or mathematical method. However, restrictions vary by jurisdiction.
- Can I patent my app?
Any invention is patentable provided it meets the requirements set by law, such as requirements for novelty, non-obviousness, usefulness, and patentable subject matter.
The ability to patent an app will likely depend on whether your app does or incorporates something that can be considered new and inventive. Generally, if an app does something novel which improves the functionality of the app or a mobile device, that novelty can be patented if it provides a significant benefit. Thus, in assessing the novelty and inventiveness of website functionality or a mobile app, it is important to compare it to what is in the prior art and identify differences of commercial benefit.
However, if the novelty of the app is mainly cosmetic, industrial design, trademark, or copyright protection may be more appropriate. A patentability assessment can be helpful in determining whether it is possible to patent an app.
- Can I patent computer code?
Computer code per se cannot be patented but would be automatically protected by copyright law as a literary work. However, if the computer code includes a new and inventive solution to a problem that modifies how a computer works, it might be patentable. The patent eligibility of software-related inventions depends largely on how these inventions are framed. A patent agent may be able to help assess the patentability of your software-related invention and ensure that an application for the invention is drafted to maximize the likelihood it will be considered eligible subject matter for a patent.
- Why are patents necessary?
The patent system is often described as a bargain between an inventor and the public which is meant to encourage the rapid spread of information; the inventor provides the public with a detailed description of how an invention can be made and used, and in exchange the public grants the inventor a time-limited monopoly over the invention.
The patent system can also be viewed as an incentive system designed to encourage investments in research and development. By offering the possibility of monopoly rights, the system encourages inventors to invent. Further, by offering several years of protection, the system encourages inventors to further invest in distributing and improving the invention by granting them a vested interest in the success of the invention.
- What role do patents play in everyday life?
From electric lighting to plastics to microprocessors, patented inventions have contributed to the advance of human technical knowledge in almost every technical field. Patents and the possibility of obtaining patents have driven the valuations and the research of numerous companies and have been the driving force behind the development of many industries.
- What is patent information?
The term patent information is often used to refer to the information made available in patent applications. This generally includes a detailed description of the invention, a set of figures showing the invention, and information about the applicant and the inventors.
Many databases also provide information about related applications or issued patents, such as inventions invented by the same inventor, applications pursued or owned by the same applicant, or inventions directed to similar subject matter.
- Why should I care about patent information?
Often the information contained in a patent application is not disclosed anywhere else. One of the reasons for the patent system in most jurisdictions is to require that inventors disclose how to practice the invention. As a result, an enabling disclosure is generally available. Although it should be noted that these disclosures are directed to a person of skill in the field of the invention and may not be easily understood by a layperson.
Reviewing patent applications relating to your industry can help you to discover product variations and new techniques. It can also help you to avoid duplicating a research and development process that has already been completed by someone else. In many cases, it can also give you an idea of where there may be an opportunity to come up with, and protect, improvements to a product or technique, by finding an aspect of your industry that is not the focus of many patent applications.
Patent information can also give you an idea of what your competitors are developing. While patent applications are generally only published 18 months after filing, this does give you an idea of what your competitors were considering at the time the applications were filed.
- Are US patents valid in other countries?
No, patents are granted in a jurisdiction, which can be a country or a region. In the case of the United States, a granted U.S. patent can only apply in the United States. If the subject invention has not been granted a patent in any other country, it is open to anyone to make, use or sell the invention outside of the U.S.
- What is the Patent Register?
Canada's Patent Register is a listing of medicinal ingredients and their associated Canadian patents, the patent expiry dates, and other related information established in accordance with the Patented Medicines (Notice of Compliance) Regulations that is maintained by Health Canada. This is distinct from the Canadian Patents Database containing Canadian patent documents on a website that is maintained by the Canadian Intellectual Property Office.
Before Filing an Application
- When should you apply for a patent?
Generally, an inventor should file as soon as possible, particularly in rapidly developing areas of technology where an invention may be independently discovered and disclosed by others. Filing an application before anyone publicly discloses the invention ensures that their disclosure cannot be used by the patent office to allege that your invention is not novel.
Additionally, patents are generally granted on a first-to-file basis. Practically speaking, this means that where two inventors independently invent the same thing, the first one to file an application is the one to whom a patent may be granted. If the second inventor then files an application, the first inventor’s application will usually count as a public disclosure of information and may be used by the patent office to argue that the invention is obvious or anticipated.
Further, in order to file a patent application, an inventor must be able to describe the invention, and the manner and process of making and using it, in full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains to make and use the same.
- How long does the application process take?
The time to process a patent application varies, but generally it takes between two and three years in Canada and the United States if you proceed expediently. Many patent offices, including the Canadian Intellectual Property Office, offer options to accelerate applications in certain circumstances. In Canada, expedited examination is available for applications pertaining to green technologies, for example.
- What are the steps to patent filing?
Once you have come up with an invention, the first step is to find out whether that invention has been publicly disclosed by someone else. This typically involves a search of public disclosures of technology like your invention, such as by searching published patent applications. Practically speaking, if you keep up to date on public disclosures relating to the field of your invention, this may be as simple as considering what you have seen and reviewing recent publications.
Once you are familiar with what else exists in the field (often called the state of the art), the next step is to prepare a patent application. While there are several formal requirements, the most important sections of a patent application are generally the detailed description of embodiments and aspects of the invention, the figures corresponding to the detailed description, and the claims setting out what the patent protects.
The next step is to file your application and, in the case of Canada, request examination of your application (examination is automatic in most other countries and need not to be specifically requested). Once examination has been requested, the patent office does a search of prior public disclosures and reviews your application to ensure it meets technical requirements. The patent office will then either approve or object to the application. It is very common to receive an initial objection and the patent office will typically provide an applicant with the opportunity to respond to any substantive and/or technical objections. If the patent office is satisfied with the application, usually after the applicant files a response to any objections made and/or amends the application to overcome same, the office will grant the application and issue the patent.
- What are the costs associated with obtaining patent protection?
Preparing and filing a patent application generally includes patent office fees and the professional fees associated with using the services of a patent agent. The largest costs are typically incurred in the initial phases of preparing and filing the patent application and additional costs are incurred several months after filing in response to patent office objections.
If a provisional patent application is prepared first, a portion of the cost associated with preparing a patent application may be deferred to the point in time when the provisional must be formalized into a regular, non-provisional patent application.
How much a patent costs is often related to the complexity of the invention and the length of application needed to describe how to make and use embodiments of the invention. Moreover, more complex inventions often require patent lawyers with expertise with that field of subject matter to draft a patent application that accurately describes the invention and protects the valuable aspects of an invention.
- What is a preliminary patent search and how is it conducted?
A preliminary patent search is a search of public disclosures, generally conducted to allow for an assessment of the novelty of a proposed invention. Such a search typically focuses on patents and patent applications as these documents provide detailed descriptions of how an invention is made or used, while other documents such as news reports may provide no more than a vague overview. These searches are often conducted before an application is filed to allow the application to be drafted with a focus on features which were not found during the patent search.
- How can I search for inventions that have already been patented?
Many patent offices provide searchable databases which permit a user to search using keywords or using classifications, and these databases indicate the status of any patent application filed with the respective office. For example, the Canadian Intellectual Property Office (CIPO), United States Patent and Trademark Office (USPTO) and World Intellectual Property Organization (WIPO) all provide these services. Remember, however, that patent applications are often held confidential for a period of time after filing, meaning a search of a database may not uncover all relevant applications filed as of the date of the search. The websites of national intellectual property offices also often have general information on how their databases can be used to help inventors file a patent application and the definitions of various terms the office uses, like the meaning of a particular patent status for an application.
In many cases, patent offices also publish their own analysis of whether an application is patentable. For example, the USPTO’s Global Dossier database provides an opportunity to view the prosecution history of an application, which generally includes letters written by examiners about the patentability of the claims.
- Can I conduct a patent search myself?
Practically speaking, if you are a professional in the field of your invention, a patent search may be as simple as considering what you have seen and reviewed in recent industry-related publications.
While a professionally conducted search and opinion may be desired, it is not unwise to initially use your own familiarity with the field or a combination of your own familiarity and a brief keyword search of public databases such as Google Patents.
- What does "patent pending" mean?
Patent pending is a notice placed on products or used in with the course of marketing a product to inform the public that a patent application has been filed to protect the product or a component of the product. It is usually intended to dissuade others from copying the product, and often also used to indicate to the public that the product is inventive or new.
- What might prevent a patent application from being granted?
An invention must meet the requirements set by law, such as requirements for novelty, non-obviousness, usefulness, and patentable subject matter.
Accordingly, a patent application may be refused for failing to meet any of the above requirements. For example, a rejection may be received based on the existence of prior art which renders your invention obvious or no longer novel. A rejection may also be based on technical mistakes, such as incorrectly filing the application or failing to include required material. Often the patent office will provide an applicant with an opportunity to respond to a rejection by amending the application or arguing against the rejection. However, in some cases technical mistakes may greatly reduce potential patent protection, particularly where the application contains an incomplete disclosure, as an applicant is generally not permitted to add subject matter to a filed application.
- Can I tell others about my invention?
One of the requirements for patentability is novelty, in other words, not publicly disclosing or having your invention publicly known prior to a patent application being filed. While a grace period may apply in Canada and the United States to permit an applicant to file an application up to a year after a first public disclosure, relying on this one-year grace period to file a patent application is often risky. It is often best to keep information confidential, such as by asking anyone you need to discuss your invention with to sign a non-disclosure agreement. Further, there are many countries which do not provide a grace period for an inventor’s own disclosure of the invention, meaning any disclosure predating the filing of a patent in those countries would be a bar to patentability in those countries.
- Can I discuss details of my invention with a potential investor before filing a patent application?
It is generally advisable to disclose only after filing an application or at least only in circumstances governed by a confidential disclosure agreement. As a last resort, if information must be disclosed prior to filing and a non-disclosure agreement cannot be executed, inventors are encouraged to disclose as little as possible about the invention.
- What is a Non-Disclosure Agreement and why do I need one?
A non-disclosure agreement, or NDA, is a contract in which one or more parties agree to keep specified information or disclosures private. In a patent context, an NDA is evidence that a discussion of an invention between parties was not a public disclosure of the invention. These contracts can be customized, and often also contain some reference to who owns the rights to any improvements or suggestions made during a discussion.
We prepare non-disclosure agreements which are suitable for use in disclosing your invention to third parties for the purpose of exploring a business relationship. Contact us now if you are interested in having us prepare a reliable NDA that you can use to disclose your invention to others.
- What is a provisional patent application?
A provisional patent application is a type of patent application that can be filed in the United States which is not examined by the patent office, and which cannot, by definition, provide exclusive patent rights (i.e., which never issues to a patent). Instead, a provisional application is used to obtain a priority date, which may be claimed in a later regular application to secure an earlier filing date for the regular application. Patent offices grant patent rights to the first filer of a patent application for an invention. Thus, filing a provisional patent application allows an inventor to secure prioritized entitlement to patent rights in respect of an invention over competitors that might independently develop the same invention and apply for patent protection.
Provisional applications are particularly useful when you are still developing your invention. As a regular application can typically claim priority to a provisional if filed within a year of the provisional, the provisional permits you to work on your invention for a year before deciding if you wish to move ahead with the invention as described in the provisional. From a business perspective, a provisional application is typically much cheaper to draft and file than a regular application and often gives you a year in which to decide whether you are prepared to incur the costs of a regular application. A provisional application also permits you to use the notice patent pending with your invention commercially.
Canada does not offer the option of filing a provisional application; however, a similar result can be achieved by filing an initial Canadian application comparable to what would be filed as a U.S. provisional and then later filing a second Canadian application claiming internal priority to the first application. Canadian applications are not examined until examination is requested so, like the American provisional patent application, many of the costs of a patent can be deferred for a time while you decide if you wish to proceed.
A provisional patent application is a great way to start if you are a pre-revenue business just getting your project off the ground. Contact us now for a complimentary and confidential initial telephone appointment to learn more about how we can turn your ideas into assets.
- How is a patent granted?
A patent must be granted to enjoy the time-limited right to exclude others from making, using or selling an invention. The patenting process begins with the drafting of a patent application. Such applications usually include a set of claims defining the invention and a description detailing how to put the invention into practice.
When a patent application has been prepared and filed with one or more patent offices, it is then examined by those offices. As part of the examination phase, a patent office does a search of prior public disclosures and reviews your application to ensure it meets technical requirements. The patent office will then either approve or object to the application. It is very common to receive an initial objection and the patent office will typically provide an applicant with the opportunity to respond to any substantive and/or technical objections. If the patent office is satisfied with the application, usually after the applicant has filed a response to any objections raised or amended the application, the office will allow the application and issue the granted patent.
Once a patent has been issued, the owner has enforceable patent rights. Many jurisdictions require that maintenance fees be paid from time to time to keep a patent in good standing and maintain those rights.
- How long does the application process take?
The time for a patent application varies, but generally it takes between two and three years in Canada and the United States if an applicant proceeds expediently. Many patent offices, including the Canadian Intellectual Property Office, offer options to accelerate applications in certain circumstances, for example, where the invention relates to green technology.
- What are the costs of patent protection?
Preparing and filing a patent application generally includes patent office fees and the professional fees associated with using the services of a patent agent. The largest costs are typically incurred in the initial phases of preparing and filing the patent application and additional costs are incurred several months after filing in response to patent office objections.
If a provisional patent application is prepared first, a portion of the costs associated with preparing a patent application may deferred to the point in time when the provisional must be formalized into a regular, non-provisional patent application.
- When would I file multiple provisional applications for a single invention?
A provisional application is generally filed to secure a priority date. However, a provisional application filing date can only be used as a priority date for content disclosed in the provisional. If you have filed a provisional application and then significantly change your invention but are not yet ready to file a regular application, it is often best to file a second or subsequent provisional to secure a priority date for the changes you have made. Generally, when you are ready to file a regular application, you can claim priority back to the two or more provisional applications provided you have not waited more than one year from the filing date of the earliest provisional.
- Can I still apply for a patent after I have published my research findings?
Unfortunately, publishing your findings violates the novelty requirement of patentability and counts as a disclosure.
However, in the United States and Canada (and several other jurisdictions), you may be able to take advantage of a grace period. Provided certain conditions are met, the grace period allows you to file an application for an invention you disclosed. Note, however, that there are risks in relying on the grace period and it is generally best to apply for a patent before making a public disclosure or as soon as possible after a public disclosure.
- Can I establish a priority date or proof of date of invention by sending a letter to myself?
No. This method, sometimes referred to as the poor man's patent, will not hold up in the face of a public disclosure. Moreover, patent systems around the world now grant patents on a first-to-file rather than first-to-invent basis.
- What kind of services does a patent agent offer to their clients?
A patent agent can assist you in understanding and complying with the requirements of patent law and procedure and has the expertise and experience to handle all correspondence with the patent office to ensure that both technical and substantive requirements are met.
An experienced patent agent can draft a patent application that provides you with the appropriate scope of protection for your invention. A patent agent is also experienced in responding to objections raised by the patent office and can help in ensuring rights are not lost through failure to meet technical requirements. If you are looking for an experienced patent agent, note that Heer Law is led by a certified specialist in patent law.
- Why are laboratory notebooks important?
Laboratory notebooks and other evidence of the invention process can be used to show who invented what, and when. This may be important evidence if anyone seeks to contest your ownership or inventorship, or if anyone seeks to pass off your invention as their own. However, they generally do not establish a priority date for a patent application or provide an author with any enforceable patent rights.
Filing Process
- Who grants patents?
The granting of patents is handled at the national or regional level by the respective national or regional patent office. In Canada, for example, this is within the authority of the Canadian Intellectual Property Office (CIPO).
Patent applications may be filed initially at an international level, often with at least an initial consideration of the merits of the application. However, applicants must eventually decide in which countries they are interested in seeking a patent and file subsequent applications in those jurisdictions. This is known as a national or regional phase entry of an international application.
- What's in a patent application?
A patent application generally includes an abstract, a summary of the invention, a detailed description of embodiments of the invention, drawings and a description of the drawings, and a set of claims.
There is no universal Canadian patent application template though, and patent drafting often involves an inventor and a legal professional working together to maximize both the chances of receiving a patent and the scope of protection it provides. As such, it helps to be cautious of high-throughput resources, like free patent drafting software. These free resources often risk inaccurately expressing your invention, seriously limiting the scope of protection you may receive, and disclosing to the public unprotected innovations.
- How can I help my patent agent?
Generally, the best thing you can do to help your patent agent is to provide clear and concise information regarding your invention. In particular, the following information should be provided:
- The field of the invention
- A broad description of the invention
- Advantages of your invention over existing practices or products
- The most appropriate use of your invention, with details of at least one practical application
- Features of the invention that are new and distinct from prior art Materials, compositions, conditions, etc. used to obtain good results in using your invention
- The invention's limitations—for example, if good results can be obtained throughout the given range of the invention, or if there are exceptions
- The results of laboratory or commercial tests showing your invention’s most appropriate use and the conditions under which poor or dangerous results could be expected
- Copies of relevant patents or technical articles you have already found
- Any disclosures of your invention Your name, address and citizenship
- The inventor’s name, address and citizenship (if more than one inventor, provide each inventor’s information)
- The applicant’s name and postal/business address
- All countries in which you would like to file for a patent
- If you are not the inventor, the source of your entitlement to apply for a patent for the invention and the inventor’s information
- Is a prototype required to file a patent application?
No, a prototype is not required to file a patent application. However, as a description of the invention which enables a person of skill in the field of the invention is required, you will need to have developed your invention to the point where you are able to provide such an enabling description.
- Why do I need to indicate who the inventor is?
Patent rights are granted to the inventor or inventors of an invention or the assignee. Where a patent is owned by a corporation, for example where the inventor was hired by the corporation to invent, the inventor must transfer the patent rights to the corporation, typically through a formal assignment.
- What is examination and what happens during an examination of a patent application?
As part of the examination phase, the patent office does a search of prior public disclosures and reviews your application to ensure it meets technical requirements. The patent office will then either approve or object to the application. It is very common to receive an initial objection and the patent office will typically provide an applicant with the opportunity to respond to any substantive and/or technical objections. If the patent office is satisfied with the application, usually after an applicant has filed a response to any objections raised or amended the application, the office will grant the application and issue the patent. In Canada, examination does not begin until the applicant requests it, which must generally be done within four years of the filing date. However, in the United States examination is automatic.
- Can examination of my application be accelerated?
Yes, most jurisdictions provide mechanisms for expediting examination of a patent application. For example, in Canada these include requesting accelerated examination and paying the requisite fee, requesting expedited examination under the Patent Prosecution Highway (PPH) on the basis of allowed claims in a corresponding application in another jurisdiction, or requesting the accelerated examination option available for green technologies.
- Who owns the patent?
Patent rights are granted by default to the inventors and are owned by the inventors in the absence of an employment relationship or assignment transferring the rights. If there are multiple inventors listed, the patent will be jointly owned. If the rights to the invention were transferred prior to the patent’s grant, such that the applicant is not the inventor, the granted patent rights will be owned by the applicant.
- What should I do if my patent application is rejected?
An initial rejection is not uncommon. This rejection typically takes the form of a letter setting out why the patent office finds fault with your application and providing you with a chance to respond with arguments or amendments.
As applicants typically seek the broadest patent protection possible, it is quite common for an application to be subject to at least one rejection as the applicant and the patent office negotiate the scope of protection to which the applicant is entitled for the invention.
- What should I do if the Patent Office issues a final rejection?
Many applications are rejected multiple times, with the applicant responding to the objections each time and asking that examination continue in light of the response. However, if no progress is being made, many patent offices will end the examination process, and the applicant will be required to appeal a final rejection to some sort of appeal board such as a panel of several experienced examiners or a judge.
For example, in Canada this review will be conducted by the Patent Appeal Board, a special committee of senior patent office officials. If an application is rejected by the Patent Appeal Board, an applicant may be able to appeal to the Federal Court and, if still unsuccessful, to the Federal Court of Appeal.
The Amazon one click patent in Canada is an example of a patent application that was rejected by the Patent Appeal Board and later allowed by the Canadian Intellectual Property Office following a successful appeal in the Federal Court of Appeal. The Federal Court of Appeal remanded the Amazon one click patent application back to the Canadian Intellectual Property Office for further examination in view of its decision and the Canadian Intellectual Property Office quickly allowed it.
- Will the government help enforce my patent?
The government does not typically enforce privately held patent rights on your behalf.
While the government often does take limited action to protect other types of private rights, such as by arresting people when they trespass on private land, the purpose of patent rights is usually commercial rather than personal. As a result, the government leaves enforcement up to the owner or other interested parties, who may seek compensation for losses and may also seek court orders limiting the actions of infringers.
- What is CIPO's MOPOP?
This refers to the Canadian Intellectual Property Office's Manual of Patent Office Practice (MOPOP). The manual sets out practices to be followed by Canadian patent examiners during prosecution of your Canadian patent application. However, please note that the practices in the MOPOP are CIPO's interpretation of the Patent Act, Patent Rules and jurisprudence as of the date each chapter was last updated. Occasionally, your patent lawyer may not agree with CIPO's interpretations of Canadian patent law as set out in the MOPOP.
Opposing Patents
- How do I keep track of competitors' patents?
Most patent offices maintain a publicly accessible database of granted patents and published patent applications. Periodic searches of these databases, such as keyword searches for competitor names and relevant technology, can help you keep track of developments.
- How can I oppose a competitor's patent application?
Before a patent application is granted, third parties may submit prior art that they do not want the patent office to miss, such as particularly relevant published patent applications which may render the subject matter of the application obvious.
You may also send the patent office arguments or reasons why you think the application may be invalid, such as arguing that the invention disclosed in the application is inoperable or that an amendment to the application by your competitor is an improper amendment.
- How do I object to a competitor's patent after issuance?
Once a patent has issued, any person may request re-examination of the claims by filing prior art and a summary of how the art is relevant. The patent office will then review the request to decide if the arguments and prior art raise enough of a question of patentability to justify a re-examination.
- What is a patent validity opinion?
A patent validity opinion is a legal assessment of the claims of a patent and the likelihood that a patent or a particular patent claim will be invalidated in light of evidence suggesting obviousness or other issues.
A validity opinion can help you to determine whether your competitor’s patent is likely to be enforceable against you, or whether your patent is likely to be enforceable against others.
We provide validity opinions on Canadian patents and can arrange validity opinions for patents in other jurisdictions. Contact us now for a complimentary and confidential initial telephone appointment to learn more.
- Can a competitor make small changes to my invention to avoid infringing my patent?
This is largely a case-by-case assessment and often depends on the quality of the patent and the nature of the changes. The protection afforded by a patent is defined by the claims. Where the nature of the changes takes your competitor’s action outside the protection defined by the claims, it may be that your patent is no longer infringed.
- Am I free to do something if it is described in my patent?
Not necessarily. A patent is a negative right, allowing the owner of the patent to exclude others from the claimed invention. A patent does not give the right to use the invention. Where a patented invention is an improvement that adds something to an earlier patented invention, using the new patented invention may involve infringing the patent for the earlier patented invention.
For example, where there is a patent claiming a stool with at least three legs, a further patent may be available if someone subsequently invents a four-legged stool with an inventive stability mechanism. However, a patent for a four-legged stool does not give the owner the right to produce a four-legged stool without the permission of the owner of the patent for a stool having at least three legs, since a four-legged stool also includes at least three legs. The patent for a stool with four legs and an inventive stability mechanism can only be used to stop other people from producing a stool with four legs and the inventive stability mechanism.
- Is there patent insurance that can help me pay for litigation?
Yes, there are companies with which you can obtain insurance against the risk of patent infringement which may help fund the costs of litigation, and, if applicable, the damages that have to be paid out.
- Can I improve an item that is already patented?
Yes. In fact, most patents are for improvements or modifications on already existing items. However, you may need to get the permission of the owners of patent rights in the original product to manufacture your improved product, such as by way of a licensing agreement.
- Does finding a new use for an existing product count as a patentable improvement?
It could, under certain circumstances. The biggest hurdle in patenting a new use of an existing product is often proving that it would not be obvious to use the existing product in the way you have identified. That is, the new use must be an innovative or non-obvious use.
Patents and Business
- How are patents relevant to my business?
Patents give their owners the right to make and sell an invention without competition.
Patents are also often relevant as a defensive mechanism. If you are producing a complex product, such as a complex piece of machinery or software, it is likely that there are patents covering various parts in the complex product and that these patents are held by various parties. Patents can help your business focus on the innovative aspect of producing new inventions, rather than figuring out how your invention will compete in the market if other companies begin selling it.
- What happens if I don't patent my invention?
Depending on the nature of your invention, you may be able to preserve it as a trade secret. However, if you do not patent your invention, you generally do not have a legal right to stop others from using it, and you are also not able to transfer legal rights to the invention in the form of a sale of the patent.
- Can I sell my patent?
Yes. You can get paid for your inventions by transferring your patent rights completely to another individual or company through a sale of the patent, or you can license your patent to allow another individual or company to make or sell your patented invention.
Note that terms and conditions can be used when selling a patent to customize what patent rights you retain or get rid of. In negotiating a license or sale, it is important not to give away patent rights in a way that could interfere with the regular operation of your business. For example, you may want to ensure that a license granted to a third-party is not exclusive, which would prevent you from making and using the invention yourself.
- Can I discuss details of my application with a potential investor before filing the patent?
Yes. However, if your discussion would constitute an enabling disclosure, such as by including details of how you make or use your invention, it is usually best to ask your investor to sign a non-disclosure agreement.
We prepare non-disclosure agreements which are suitable for use in disclosing your invention to investors for the purpose of exploring a business relationship. Contact us now if you are interested in having us prepare a reliable confidential disclosure agreement that you can use to disclose your invention to investors and others.
- Can I apply for a patent for something I have already started selling?
Yes, unless the sale constitutes a public disclosure that is not covered by a grace period. Often, products can be sold without enabling the public to make the invention that is embodied within the product. Note, however, that there are risks in relying on a one-year grace period, and it is generally best to apply for a patent before making a public disclosure and as soon as possible after a public disclosure.
- How do I maintain my patent?
In order to maintain your patent application or patent in Canada, you must pay regular maintenance fees to the Canadian Intellectual Property Office. They are paid annually, as of the second anniversary of your application filing date, up to the 19th anniversary of the filing date. If you do not pay the maintenance fees, your patent application or patent will be abandoned or will lapse. The quantum of maintenance fees to be paid increases on the 5th, 10th, and 15th anniversary of the filing date. The fee also depends on whether the owner of the patent is an individual or a corporation. You can find the full schedule of maintenance fees here.
In the United States, maintenance fees are only payable on issued patents, at 3.5, 7.5 and 11.5 years after the date of grant of the U.S. patent.
- How do I use my patent? Where do I find advice and funding support?
Creating a business plan for your patent is largely a case-by-case situation that depends on, for example, the nature of your invention, whether you intend to produce and sell it yourself or license it to another company, and the general market demand for your patented invention. You can browse our resources section for general strategic information and a list of available grants and awards for prospective and current patent holders but are encouraged to contact a lawyer for strategic advice tailored to your circumstances.
- What does publication of patent applications entail?
Generally, all patent applications are published eighteen months after their priority or filing date. This publication is intended to provide notice to the public of the application, to discourage future infringement and to enable third parties to weigh in on the application process in some circumstances.
- How does a licence work?
A licence is an agreement between an owner of rights and an individual or corporate licensee, giving the licensee permission to use licensed rights. You may wish to enter into a licensing agreement as a way to capitalize on your patent rights, such as where you do not wish to be involved in marketing and sales or where you do not have the capacity to make your invention yourself. Licences can also enable you to open up a new channel of distribution, including opening up markets in other geographical areas where you do not operate. Drafting and executing licensing agreements is generally done on a case-by-case basis between two parties through a process of negotiation.
- When can I say patent pending in my promotional materials?
You can begin marketing your invention as patent pending once you have filed either a provisional or a regular patent application in the jurisdiction in which you are distributing the promotional materials.
- Can I get a tax break by donating my patent?
As your patent qualifies as personal property, it can often be donated for a tax break corresponding to the market value of the patent.
- My employee has invented a new product or process. Who will get the rights to the patent?
By default, if an employee comes up with and develops an invention, the patent rights may belong to the employee. An invention developed by an employee only belongs to the employer if the employee was hired to invent, where hired to invent is determined based on a number of factors including whether an employment agreement indicates that the employee was hired to invent, or more definitively, is required to assign ownership of inventions to the employer.
We provide consultations to review existing agreements and to provide an opinion on the ownership of inventions in these circumstances. Where there is some doubt that the employer owns the invention, we work with them to develop a strategy to gain full ownership. Contact us now if you would like to discuss how we can help.
- Are there alternatives to protecting my invention?
In some circumstances an invention may be better protected by secrecy than by patent protection. Where the invention is not something that a buyer or user can reverse engineer from your product and where it is unlikely that a competitor will be able to independently arrive at your invention, you may wish to protect your invention as a trade secret rather than by limiting yourself to the 20-year term of protection of a patent.
Similarities and Differences Across Jurisdictions
- How long does a patent last?
In most jurisdictions, patents are valid for up to 20 years from the filing date. After this 20-year patent term, the patent will expire, and you will no longer have exclusive rights in and to your invention. Nonetheless, these expired patents will form part of the prior art that can be used to challenge the novelty and inventiveness of inventions that are the subject of later filed patent applications.
- Are Canadian patents different from U.S. patents?
Canadian patents are like U.S. patents in many ways, like the duration of protection they provide and the exclusive rights they afford the owner. However, there are several, sometimes subtle, differences between the patent laws of Canada and the U.S. and their administration. As such, it is important to speak to a patent lawyer about how these differences in patent law can affect your intellectual property interests because the differences in patent law between jurisdictions can significantly change your business strategy.
For example, the U.S. permits applicants to file a provisional patent application to secure an earlier priority date. However, a provisional patent application is not examined, and the applicant would have to later file a U.S. non-provisional patent application. In Canada, there is no option to file a provisional application, but a similar effect can be achieved by filing a first application that containing information that would otherwise be in a U.S. provisional application, then later filing a second patent application claiming priority to the first.
- Is it possible to extend the term of patent protection?
Patent term extensions are available in some jurisdictions if the application process excessively delayed the issuance of the patent. Generally, such extensions are applied automatically if they are available, and an applicant does not need to apply for an extension separately.
- Is a patent valid in every country?
Most countries handle patent applications at a national level. As a result, most patents are only valid and enforceable in the country in which they are issued.
- How can a patent be obtained worldwide?
As a result of the Patent Cooperation Treaty (PCT), an applicant has the option of filing a single patent application at an international level. However, the international authorities do not grant patents, meaning at some point you will need to enter the application into the national stage and use the international application as the basis for national applications which may then issue to national patents.
Within a pre-determined period of time, an applicant must determine where they wish to seek a patent and must then enter their international application into the national or regional phase. This is done by filing the application with a national or regional patent office that has authority over the jurisdiction in which patent protection is being sought.
Patent lawyers often have relationships with patent professionals in other countries to help facilitate obtaining patent protection for their clients around the world.
A list of countries which participate in the PCT application process may be found on the World Intellectual Property Organization website.
- Where should I file for patent protection?
Generally, you want to secure patent protection for your inventions in any country or region in which you can obtain a worthwhile return on investment for the patenting costs in terms of additional profit made due to higher margins obtainable by having exclusive patent rights, the additional sales made through eliminating direct competition or revenue obtaining by licensing or through sale of the patent rights. Accordingly, these may be countries or regions in which you do business, in which you anticipate doing business, or where your competitors do business.
- Where can I find patent information?
Many extensive patent databases are available to the public. For example, the United States Patent and Trademark Office (USPTO) makes patents and patent applications available on its website, as does the World Intellectual Property Organization (WIPO).
Information about how to perform a search and how to take further steps in the patenting process is also made available by many patent offices. For example, guides are provided by the USPTO and the Canadian Intellectual Property Office (CIPO).
- How can I find the patent laws of various countries?
Most jurisdictions publish their patent laws and regulations. For example, the Canadian government has published the Canadian Patent Act and the Canadian Patent Rules. The World Intellectual Property Office (WIPO) also provides access to intellectual property legislation through WIPO Lex.
- Can you get a patent in a jurisdiction of which you are not a citizen or resident?
Yes, you can file in any jurisdiction regardless of citizenship or residency status.
- When do I need to file my foreign applications?
If you wish to take advantage of a priority date assigned to an earlier filed patent application, you will generally need to file your foreign applications within twelve months of your initial filing or, with respect to PCT applications, within 30 months of the priority date of an international application.
- What is the Paris Convention?
The Paris Convention for the Protection of Industrial Property is a global agreement regarding patent protection. Canada, and nearly 180 other states, are signatories. One of the main effects is a recognition between countries of priority dates established by applications filed in other signatory countries.
- What role does WIPO play regarding patents?
WIPO, or the World Intellectual Property Organization, is not a patent office. Instead, WIPO is a policy body and an agency of the United Nations aiming to promote the protection of intellectual property and administer treaty cooperation.
If you would like our help with patents, please make a complimentary and confidential no-obligation initial telephone appointment to speak with a member of our team.
