What
is a patent?
A patent is a legally enforceable property right, which enables its owner to exclude others from making, selling or using a particular invention.
How long does it last?
Patent protection lasts for the term of the patent, provided maintenance fees
are paid as discussed below. In Canada, the United States and most other
countries, the term ends 20 years from the patent application filing date.
How
widely does it apply?
A separate patent must be obtained in each country of interest. A Canadian
patent protects an invention only in Canada. To protect the same invention in
the United States, a separate United States patent is required.
There is no such thing as a "worldwide patent". Although international
treaties can simplify the foreign patenting process in some cases,
as discussed below.
What can be patented?
Only "inventions" are patentable. An invention must be new, useful and involve
an "inventive step" compared to the closest "prior art". (“Prior art” refers to information
that is already known to the public, as reflected in publications, patents, public uses, and
other sources of public knowledge.) A new and unobvious product, process, apparatus or
composition of matter will generally be patentable; as will a new and unobvious improvement
to an existing product, process, apparatus or composition of matter.
What cannot be patented?
While most things are potentially patentable, there are exceptions. Problematic areas include medical procedures; marketing or
business plans; teaching methods; cosmetic procedures such as hair dressing and pedicures; and artistic expressions such as
flower arranging, painting, and playing musical instruments (although the materials and instruments used may be patentable).
Special considerations may also apply in the case of some inventions such as
computer software, games, and living matter.
What time limitations apply?
In Canada, a patent application must be filed no later than one year
after the earliest public disclosure of the invention. Public disclosure can
include distributing samples, selling or exhibiting an invention (or something
into which the invention is incorporated), publishing details of the invention
in advertising or any other printed material, and public use or testing of the
invention. Disclosure to just one person can constitute public disclosure in some circumstances.
The United States has a similar one-year grace period. Europe and many other
jurisdictions, however, have no grace period whatsoever. Any public disclosure of the
invention, before filing a patent application, can result in loss of patent
protection in such countries.
Can a non-disclosure
agreement preserve rights?
Yes. To preserve potential patent rights, an invention should not be disclosed
prior to the filing of a patent application, to anyone who has not signed a
properly drafted non-disclosure agreement.
Who
can apply for a patent?
The right to apply for a patent belongs initially to the inventor(s), but may be tranferred to someone else. If an inventor sells the rights to an invention to
another party, then that party may apply for the patent. If an invention is
made during the course of an inventor's employment, the employer may
automatically acquire the right to apply for the patent — although this is not always the case.
If an inventor dies or is incapacitated, the right to apply may vest in the
inventor's executor, administrator or other representative.
In some countries, including the United States, the inventor's signature
on the patent application is required, even if someone else has the
right to make an application.
Does a patent guarantee the right to exploit one's own invention?
A patent does not necessarily entitle the patent owner to make, use or sell the
patented invention — it only allows the patent owner to prevent others from
doing so. Making, using or selling one's own invention may infringe another
patent. For example, if an invention is an improvement to a prior invention,
making the improved product may infringe a patent for the original product.
Infringement searches can be conducted to investigate this possibility.
What if there is more than one application?
If two or more parties apply to patent the same invention most patent
offices will award only one patent. In Canada and most other countries,
that patent will be awarded to whichever party files the first patent
application, regardless of who made the invention first. It is therefore
important to apply promptly.
Can existing patents be searched?
Yes, time permitting, it is always wise to conduct a search before applying for a
patent. If the invention has been disclosed in a previous patent or publication
anywhere in the world, then the invention may not be patentable.
Worldwide searches are impractical, so a limited search is usually made in only
one country. Normally, the search is conducted in the U.S. Patent Office, since
it has a large volume of well-classified prior art.
Computer databases can also be searched quickly and relatively inexpensively.
Database searches are most useful in searching for sophisticated inventions which
can be described by precise, well-known terms of art. They are much less useful
in searching mechanical "gadget-type" inventions.
No search will guarantee the patentability of an invention, but they will provide a reasonable assessment of the prospects of obtaining worthwhile patent
protection. Search results are also useful in preparing a patent application.
What do searches cost?
Patentability search costs range from about C$750 for a simple online
database search to C$2,500 or more for a typical patent office search.
What information is needed to conduct a search?
A search requires a description of the invention, and drawings or
photographs which show how it is made, operated and used. It is helpful
to have details of any known prior art, and a summary of its shortcomings
and an explanation of how they are overcome by the invention. A list
of other advantages of the invention and details of possible variants
or modifications that could be made without departing from the general
concept should also be included.
What information is needed for a patent application?
In general terms, a patent application must provide a complete description of the invention
(including drawings, where appropriate), which is sufficient to enable a skilled person
to construct a working embodiment of the best mode of the invention known to
the inventor.
See forms and filing information for further details.
What scope of protection will a patent provide?
A patent application will include "claims" that define the scope of protection
requested. Several claims are typically included to protect different features or
combinations of features, but claims must be carefully worded.
Broad claim language is preferable so that competitors cannot avoid
infringement simply by making minor changes to the invention. But overly
broad wording may invalidate a claim. For example, a claim needs to be
worded to cover only the invention and not some prior art.
What does the application and filing cost?
Preparing and filing an application to patent an invention in Canada or in the U.S. typically costs in the range of C$7,000 to C$20,000. Costs can be higher for more complex inventions and lower for very simple inventions. Provisional patent applications can be filed at lower costs. We can give more specific estimates in individual cases.
What is the process after filing?
Most patent offices employ technically trained examiners who scrutinize patent
applications for novelty, inventiveness and compliance with formal
requirements. Particular attention is given to the wording of the claims.
More often than not, examiners raise objections which are usually answered by
argument, application amendment or both. Examiners' objections are sometimes fatal to a
patent application, but in most countries various appeal procedures are available.
If the examiner is ultimately satisfied with its merits of the application, an application
is allowed and a patent grant fee must be paid. Grant of the patent usually
follows within a few two to three months after the payment of the fee.
In most countries, the process of "prosecuting" an application through
to the grant of a patent takes two or more years from the filing date.
Prosecution typically consists of responding to any requirements or
objections that may be raised by an examiner, paying issue fees and
complying with formal requirements for the patent to be issued.
What does prosecution cost?
Prosecution costs vary widely, but are typically in the range of C$1,000 - $7,000 per
country.
What does it cost to maintain a patent?
Most countries charge "maintenance fees" which must be paid to the patent office
periodically throughout both the patent application process and the term
of the granted patent. Maintenance fees vary widely, but range from about C$150
per year in the early stages to about C$600 per year or more in later stages.
What about international patent claims?
Most countries have signed the Paris Convention, which allows a patent
applicant to claim priority over a patent application filed within the previous year.
As described above, to obtain a valid patent in most countries it
is essential to file a patent application before the invention is
publicly disclosed — but the Paris Convention provides an important
exception. As a result, in most countries, it is sufficient to file
within one year of the date on which the earliest application was
filed, provided that the earliest application was filed before any
public disclosure of the invention anywhere in the world.
A few countries — including Afghanistan, Andorra, Ethiopia and Saudi Arabia — are not
members of the Paris Convention, and special consideration must be given to
filing applications in such countries to avoid loss of patent rights there.
What is the Patent Cooperation Treaty?
The PCT provides a simplified procedure enabling Canadian citizens or residents
to obtain patents in many countries. A single English-language PCT application
may be filed and assessed as to patentability on a preliminary basis, before
the applicant has to decide whether to incur the additional cost of proceeding
with patent applications in foreign countries of interest.
Please see the Patent Cooperation Treaty FAQs for further information.
How are European Patents obtained?
A single English-language PCT application can be filed at the European
Patent Office (EPO) designating any or all of Austria,
Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia,
Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy,
Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, Netherlands,
Norway, Poland, Portugal, Romania, Slovenia, Slovakia, Spain, Sweden,
Switzerland, Turkey and the United Kingdom. The EPO examines the application
and, if the applicant is successful, grants a European patent. The
patent rights must then be "perfected" in the individual European countries
of interest through procedures that include filing translations and paying national fees.
How is trade secret protection obtained?
Unlike patent protection, no formal government recognition is required to
obtain trade secret protection. Essentially, the law enables a trade secret owner to
prevent others from exploiting the secret, if they have
obtained knowledge of it through fraud, theft or breach of some obligation of
confidence.
Trade secret protection is, in many ways, opposite to patent protection. For
example, to obtain a valid patent, the invention must be fully disclosed in a
patent application, which becomes public as part of the patent-grant process.
However, trade secret protection exists only if the information in question
remains secret.
Trade secret protection is inappropriate if routine examination of
any apparatus, process or other subject matter embodying the trade
secret will reveal what the secret is. And if a trade secret owner
inadvertently allows the secret to slip out, then trade secret protection
is lost.
For more information contact
(Oyen Wiggs Green & Mutala LLP)