What
is a patent?
A patent enables its owner to exclude others from making, selling or using an
invention.
Duration
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.
Territorial
Scope
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 "world-wide patent". In some cases, international
treaties can simplify the foreign patenting process, 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. A new and unobvious
product, process, apparatus or composition of matter will generally be
patentable; as will a new, unobvious improvement to an existing product,
process, apparatus or composition of matter.
What
cannot be patented
Most types of subject matter are potentially patentable, although some areas are
excluded. Problematic areas include medical treatment procedures, marketing or
business plans, teaching methods, cosmetic procedures, hair dressing, pedicure,
flower arranging, painting pictures, playing musical instruments, etc. However,
materials and instruments used in these arts may be patentable.
Special considerations may also apply in the case of some inventions such as
computer software, games, living matter, and others
Premature
disclosure can destroy patent rights
In Canada, a patent application must be filed no later than one year
after the earliest public disclosure of the invention. Public disclosure
includes distributing samples of an article embodying the invention, selling or
exhibiting such articles for sale, publishing details of the invention in
advertising or other printed material of any sort, public use or testing of the
invention, etc. 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 have no grace period whatever. Any public disclosure of the
invention, before filing a patent application, can result in loss of patent
protection in such countries.
Non-Disclosure
Agreement
To preserve potential patent rights, the 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), although
there are exceptions. 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 not always.
If an inventor dies or is incapacitated, the right to apply may vest in the
inventor's executor, administrator or other representative.
In most countries, including the United States, the inventor's signature on the
patent application is usually required.
A
patent does not 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.
First
to file gets patent
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 not to
delay filing a patent application.
Patentability
Searches
Time permitting, it is always wise to conduct a search before applying for a
patent. If the invention has been disclosed, anywhere in the world, in a
previous patent or publication 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 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 any invention. The object is to
make a reasonable assessment of the prospects for obtaining worthwhile patent
protection. Search results are also useful in preparing a patent application.
Search
Costs
Patentability search costs range from about CA $500 for a simple online database
search to CA $1,500 or more for a typical Patent Office search.
Information
required to conduct search
To conduct a search we need a description, drawings or photographs of the
invention, showing how it is made, operated and used. Also helpful are: details
of any known prior art; a summary of the prior art's shortcomings; an
explanation of how these are overcome by the invention; a list of any other
advantages of the invention; and, details of any possible variants or
modifications that could be made without departing from the general concept of
the invention.
The
patent application
A patent application must provide a complete description of the invention
(including drawings, where appropriate) sufficient to enable a skilled person
to construct a working embodiment of the best mode of the invention known to
the inventor.
Claims
The patent application includes "claims" to define the scope of patent
protection requested.
Several claims are typically included to protect different features or
combinations of features of the invention.
Claims must be carefully worded. Broad claim language is preferable so that
competitors cannot avoid infringement by making minor changes to the invention.
But, if claims are worded too broadly, they may be invalid; for example, if the
claim wording covers not just the invention but also some prior art.
Patent
application preparation & filing costs
The typical minimum cost for preparing and filing an application in Canada or
the U.S. for a simple invention is about CA $4,000. Costs are higher for more
complex inventions.
Examination
by the Patent Office
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 that are usually answered by
amendment of the application, argument, or both. Sometimes, examiners'
objections are fatal to the patent application, but in most countries various
appeal procedures are available.
If the examiner is ultimately satisfied with the merits of the application, it
is allowed and a patent grant fee must be paid. Grant of the patent usually
follows within a few 2-3 months after the payment of the grant fee.
In most countries, it takes two or more years after filing to "prosecute" an
application through to the grant of a patent.
Prosecution
costs
Prosecution costs vary widely, but are typically about CA $800 to $5,000 per
country.
Maintenance
fees
Most countries charge "maintenance fees" which must be paid to the Patent Office
periodically throughout the patent application process and throughout the term
of the granted patent. Maintenance fees vary widely, but range from about CA
$150/year in the early stages to CA $600/year or more in later stages.
International
considerations
Most countries belong to the "Paris Convention." This allows a patent applicant
to claim priority in respect of an earlier filed patent application.
Applications filed in such countries within one year of the filing date of the
original application are treated as though they were filed on the original
filing date.
As previously indicated, to obtain a valid patent in most countries it is
essential to file a patent application before the invention is publicly
disclosed. An important exception applies if priority can be claimed as above.
It is normally sufficient to file priority-claiming applications in most
countries within one year of the date on which the earliest application was
filed, provided that the earliest application is itself filed before any public
disclosure of the invention anywhere in the world.
A few countries, e.g. 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.
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 individual patent applications in the various foreign countries of
interest. Please see our PCT FAQ for further
details.
European
Patent
A single English language application can be filed in 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 by filing translations, paying national fees, etc.
Trade
Secrets
Unlike patent protection, no formal governmental recognition is required to
obtain trade secret protection.
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 the "secret".
If a trade secret owner inadvertently allows the "secret" to slip out, then
trade secret protection is lost. Essentially, the law enables a trade secret
owner to prevent others from exploiting the secret, if they obtain the secret
through fraud, theft or breach of some obligation of confidence which they owe
to the trade secret owner.
For more information contact
(Oyen Wiggs Green & Mutala LLP)