The #1 Comprehensive Guide to Patents
A patent grants property rights by the government to an inventor. This grant gives the inventor exclusive rights to the patented process, design or invention for a specific period of time. An individual can apply for a patent through the Canadian Intellectual Property Office. Patent protection applies in the country or the region which the patent is issued in. In Canada, a patent lasts for 20 years from the date which it is filed.
Once an individual has filed a patent, they are able to sell them, license them or use them as assets to attract funding from investors. In exchange for these benefits, the inventor must provide a full description of the invention when a patent is filed. Details of the patent application filed in Canada are disclosed to the public after an 18-month period of confidentiality.
An invention can be either a product (e.g. a door lock), a composition (eg. chemical composition used in lubricants for door locks), the machine itself (e.g. the machine that makes door locks), or a process (e.g. a method for making door locks). An invention can also be a way of improvement of any of the inventions just listed.
How do I know my invention is eligible for patent protection?
To be eligible for patent protection, your invention must be three things:
1. New
The invention must be new. This means that the invention does not currently exist in the world. If the invention exists, patent protection will not be granted. For example, if an individual files a patent application for shoelaces, it is highly likely this application would be denied as this invention currently exists. On the other hand, if a patent application is submitted for an invention which enhances the shoelace experience, it is possible such an application would survive.
2. Useful
An invention must be useful to receive patent protection. To be considered useful, the invention must be both functional and operative. An invention is functional if it has a special activity, purpose or task. The invention must be designed to be practical rather than attractive to meet this functional requirement. For an invention to be operative it must work. So, for example, if an individual files an application for patent protection for an invention that does not actually work, then the application is likely to not succeed.
3. Inventive
The final requirement for eligibility for patent protection is that the invention must be inventive. This means that the invention shows ingenuity, it is not obvious to someone of average skill who works in the field of your invention.
When should you file a patent application?
In Canada, patents are granted to the first applicant. This means that the individual who is the first to file a successful patent application will be granted patent protection for the invention. As a result, it is important that you file a patent as soon as possible in case another individual is on a similar track to you.
Making any public disclosure of an invention prior to filing a patent application may make it impossible to obtain a patent. However, there is an exception in Canada and the United States. If the public disclosure was made by the inventor or by someone who learned of the invention from the inventor less than one year before the patent application is filed, the application may still be successful. Please note, however, that in some countries disclosing the invention to the public anywhere in the world before filing a patent application may prevent the inventor from obtaining a patent.
Choosing when to start the patent process is a critical decision. The right time to file a patent application is ultimately based on a combination of business and legal factors, which varies for each business. If you feel that you can make the most profit by preventing others from making, using, selling, renting, or importing your invention, then you need a patent.
For example, if Kelly invents the machine that folds your clothes for you and she determines that in order for her to maximize her profits, she needs to be only the only person who can make, use and sell this product. It would, therefore, be beneficial to Kelly to file a patent application.
Why patents matter in biotechnology
Filing patents are also very important for biotechnology inventions. Biotechnology is a research-intensive industry with about 40-50% of their revenues in research and development. Therefore, it is extremely important for biotechnology firms to protect their research. The most effective way to do so is by securing a patent.
Not every biotechnology firm sees a product go from design to manufacture. In many cases, small firms license their patented innovations to larger firms who have the resources capable of producing them and taking them to the market. The success of these small firms heavily depends upon whether they are able to convince those larger firm investors that they have a sound intellectual property strategy. This strategy centres on patent protection, and helps minimize risks for these investors.
Patents are vital for keeping the biotechnology industry moving forward. As already noted, once a patent is acquired, the details of the invention enter the public domain. The invention’s description will include its advantages and claims about the product’s usage, production methods, and the product itself. This allows for competing companies to learn what other firms are doing and to be inspired to create their own innovations.
Patents also strengthen the biotechnology firms they protect. Once secured, a firm feels encouraged to continue their research because they know their efforts are protected. These firms are also more likely to have the necessary funds if their patented goods are a success.
Should I use a patent agent?
Patents and patent applications are difficult to maneuver. Most experts agree that inventors seeking patent protection should use services of a registered patent agent to help them navigate the complexities of patent law. Patent agents work with inventors to evaluate an invention disclosure, assess patentability, draft a patent application, and communicate with the Canadian Intellectual Property Office on the inventor’s behalf. Many law firms are registered patent agents, however, not all patent agents are lawyers. The Government of Canada notes that more than 90% of patent applications are filed with the assistance of a patent agent.
Provisional vs Full Patents
It is possible you may have come across the words “patent pending” on a variety of products. Even though it may appear that an invention has been patented, this status actually means that there is a provisional patent in place.
What is a provisional patent?
A provisional patent provides protection on an invention for a 12-month period before a formal application is filed. The intention is to provide an inventor time for things such as pitching an idea, test commercial feasibility, or refining the product before fully committing to the expensive and time-consuming process of a formal patent application. What is important to remember here is that provisional patents are meant to be used on a short-term basis. Obtaining a provisional patent is less expensive than a full patent, and may not require the services of a patent agent.
Requirements for a Provisional Patent
The requirements of a provisional patent are relatively straightforward. They must include:
- The application as a provisional application for patent
- The name(s) of all inventors
- Inventor residence(s)
- Title of the invention
- Name and registration number of patent agent and docket number (if applicable)
- Correspondence address
- Any government agency that has a property interest in the application
The Benefits of a Provisional Patent
- The inventor does not need to worry about interested parties stealing an idea. Although a provisional patent is not a full patent, if an invention is labeled as “patent pending,” this signals some legal rights if an infringement occurs.
- An inventor is able to test and perfect a concept prior to filing a full patent application. This is crucial as it puts an official filing date with the patent office. Remember, for a patent application, an individual must be the first to file in order for it to be granted.
Canada vs the U.S.
Summary of the process:
An inventor can choose to file for patent protection either in Canada or the U.S. In Canada, an inventor would first file a Canadian patent application which provides protection for 12 months. An inventor can then file a second Canadian patent application claiming internal priority over the previous application or can pursue prosecution of the original patent application. If an inventor chooses to file in the U.S., they would first file a provisional patent application granting protection for 12 months. The inventor would then file a regular patent application referring to the provisional application, or they can convert their provisional application to a regular application. The length of protection, however, does not differ between the two countries.
Costs:
The U.S. application process can be slightly more expensive than the Canadian process. In Canada, an inventor would pay $200 for the first application and then $400 for the second application or $200 if they are a small entity . In the U.S., an inventor would pay $130 USD, and $200 USD for every 50 pages in excess of 100 for the provisional application. If the inventor converts their provisional application they would then pay $140 USD or $70 USD if they are a small entity. If the inventor files the regular application, the inventor will have to pay $420 USD (additional fees may also apply) or $210 if they are a small entity (additional fees may also apply).
Minimum requirements
The minimum requirements to filing a patent application also differ. In Canada, an application must include: an indication that the inventor is requesting a patent; a document in any language that appears to be a description of the invention; the applicant’s name or other identifying information; and the applicant’s address.
In the U.S. the application must include: a written description of the invention and any drawing necessary to understand the invention. The cover sheet and filing fee are not required to be given on the filing date, however, an extra charge is applied if these are given at a later date.
Is the content of the first application made public?
If an inventor files their patent application in Canada, the content is not made public if the application is withdrawn within 18 months of its filing. At the end of the 18 months, however, the contents are made public.
In the U.S., however, this differs. If the provisional application is converted into a non-provisional application, the non-provisional application may be published. If this does not occur, however, then the contents are not made public.
The Patent Cooperation Treaty (PCT)
The Patent Cooperation Treaty (PCT) is an international treaty which supports applicants who seek to have international patent protection for their inventions. The PCT helps patent offices with their decisions to grant patents, and facilitates public access to a wealth of technical information which relates to these inventions.
Filing one international patent application under the PCT allows applicants to simultaneously seke protection for an invention in a large number of countries. The PCT now has 153 Contracting States.
What is the effect of an international patent application?
Put simply, an international patent application will allow an invention to have the effect of a national patent application in or for all PCT Contracting States. If you comply with certain formal requirements which are set out in the Treaty and Regulations, adaptation to varying national/regional formal requirements and the costs associated will not be necessary.
Who is able to file an international patent application?
The PCT is used by major corporations, research institutions and universities seeking international patent protection. It is also used by small and medium-sized enterprises and by individual inventors.
Any inventor who is a resident of a PCT Contracting State is entitled to file an international patent application. If there is more than one applicant named in the application, only one of them needs to be a resident of a PCT Contracting State.
How to file an international patent application
An international patent application can be filed, in most cases, at your national patent Office or directly with the World Intellectual Property Organization (WIPO) if permitted by the PCT Contracting State. If you are a national or resident of a country that is a party to the African Regional Industrial Property Organization (ARIPO), the African Intellectual Property Organization (OAPI), the Eurasian Patent Organization (EAPO), or the European Patent Convention (EPO), you may also file your application with the regional patent Office concerned, if permitted by the applicable national law. Alternatively, applicants can file their PCT applications electronically.
PCT applicants are generally required to pay three types of fees when filing their applications:
- An international filing fee of 1,330 Swiss francs
- A search fee which can vary from 150 to 2,000 Swiss francs, dependant upon the International Search Authority (ISA) chosen
- A small transmittal fee which varies depending on the receiving Office
PCT fee reductions are available to all applications who file electronically. This reduction will be based on the type of filing and the format of the application submitted.
In most cases, an inventor will have an additional 18 months from the time in which they file their international patent application before they have to begin the national phase procedures with the individual patent Offices to fulfill these national requirements. Or usually, 30 months from the filing date of the initial patent application. It’s important to note that you are not required to wait 30 months before you enter into the national phase. You are always able to request an early entry.
An inventor may file an international patent application in any language which the receiving Office accepts. If your application is in a language the Office does not accept, you will be required to translate the application for the purposes of the international search.
Where do I file my patent?
Where you file your patent application depends on the geographical scope of your business, goals, competitive and cooperative strategies, regional patents, and other factors.
Geographical Scope
It is important to ask yourself where the product will be manufactured and where it will be sold. If a product will be manufactured in China and India, it would be beneficial to have patent protection in these countries. If the primary target markets are in North America and Europe, it would be beneficial to file a patent application in these regions.
Goals:
Many early stage technology companies, for example, want to be bought. So, if it is a company’s goal to be bought in the U.S., then it would be beneficial to file a patent application in the U.S.
Competitive and Cooperative Strategies:
Some patent filings can protect a market and limit a competitor’s ability to maneuver. It is important to remember that a collaborator today can be a competitor tomorrow. So, if an inventor has a collaborator in a given jurisdiction, it would be beneficial for that inventor to file for patent protection there.
Enforcing a Patent
Once a patent is issued, it is up to the owner to enforce it. Patent law in Canada is governed by the Canadian Patent Act 1985 and related regulations.
Generally, two types of patent infringement can be alleged in Canada: direct infringement and indirect infringement.
Direct Infringement
Direct infringement is any act that interferes with the full enjoyment of the monopoly, or exclusivity, granted to the patent holder during the term of the patent, without the patent holder’s consent.
Indirect Infringement
Indirect infringement is an action that gets another person to infringe on a patent. Courts will consider three factors when determining if indirect infringement has occurred:
- The act of infringement must be completed by the direct infringer
- In completing the infringement, the direct infringer must be influenced by the alleged endure to the point that without influence, the direct infringement would not have taken place.
- The inducer must know that as a result of its influence the direct infringer will engage in the activity that is ultimately found to be infringing.
