IPIC

Warning about Unnecessary or Alternative Methods
for Obtaining Intellectual Property Protection

About Patents

What is a patent?

A patent is a bundle of important, and potentially, economically valuable rights. In Canada a patent is obtained from the Patent Office which is a federal government agency. A patent provides a patent owner with the exclusive right to manufacture, sell and use the patented invention. Similar rights extend to patent owners in most other countries around the world, where patent protection is obtained. In other words, a patent is necessary in each country in which you want protection. In return for the grant of these patent rights, the patent must provide full disclosure of the invention. This means a description of the invention in sufficient detail that anyone trained in the field in which the patent is directed would be able to practise the invention after reading the description. Patent rights are limited in time, usually to a maximum of 20 years from the date of filing of the first patent application.

Patents are also a great source of useful technical information available to the public (which otherwise would have been kept secret).

Why obtain a patent?

Patents are worth acquiring since they provide the possibility of protecting, and keeping exclusive, commercially important technology. If you or your company owns a patent for a commercially important technology, then with these patent rights in hand, it is possible to create a monopoly in the marketplace until the expiry of the patent. Generally speaking, start-up companies with promising technology and a solid patent portfolio protecting their technology attract the attention of the investment community. Equally, larger enterprises seek and obtain patent protection for their technology with a view to maintaining or increasing market position. That being said, having a patent does not guarantee that the invention will be commercially successful.

The patent application

In order to obtain a patent, it is necessary to prepare and file a patent application with the Patent Office in the country or countries in which protection is sought. A patent application contains a patent specification comprising a background to the invention, a summary of the invention and a detailed description of the invention, including a preferred example(s) of the invention and often including drawings. The patent specification must describe the invention in sufficient detail to be understood by a person with ordinary skill in the field of technology to which the invention relates. Also required in a patent application are claims which define the scope of protection of the invention.

The claims in a patent are critical because they define the scope of the patent rights. Anything disclosed in the specification but not claimed is not protected by the patent. The claims must define the essential characteristics of the invention. At the same time, the claims must not cover anything that has previously been publicly known. A claim in a patent may be invalid if it fails to adequately distinguish the invention from prior inventions. Invalid claims are unenforceable. On the other hand, claims that are too narrow in scope may permit the patent to be circumvented by others.

Writing of a patent specification requires specialized legal and technical skills and should be done by a registered patent agent. Only a registered patent agent is entitled to represent applicants for patents before the Patent Office. The sole exception is that an applicant who is also the inventor may also represent himself or herself before the Patent Office.

Is the invention patentable?

Prior to filing a patent application, it is advisable to attempt to assess the patentability of the invention by conducting searches of prior art which includes patent and non-patent literature, worldwide. A registered patent agent can advise you about the types and cost of such searches. Computer patent databases are available commercially and are also available over the Internet. They generally offer a comprehensive and readily accessible source of patent information. Note that database searches are dependent on key word input. It is important to understand the nature and scope of computer searches. Whatever the technique used for conducting a search, it is important that the search results be carefully analyzed and the differences between the invention and prior patents appreciated. Registered patent agents have the expertise and skills necessary to properly carry out effective searching and to make such an analysis.

Filing the application

It is important that an invention be maintained confidential at least until a patent application has been filed. Disclosure of an invention in a public manner before filing can be a bar to obtaining patent protection. Canadian law allows a one year "grace period" during which an invention may be disclosed prior to filing a patent application without jeopardizing the validity of the eventual patent, so long as someone unrelated to the inventor does not make the same invention (independently developed) available to the public prior to the filing. However, most other countries do not allow such disclosures, and foreign patent rights may be lost if any public disclosure takes place prior to filing.

Most countries around the world (including Canada) operate on what is known as a "first-to-file" patent system. This means that, where more than one person has independently made the same invention, a patent is granted to the person who was first to file the patent application. In rapidly developing fields of technology, such as information technology and biotechnology, early filing can be critical with respect to disclosures of similar inventions by third parties in, for example, technical journals. Any foreign patent protection should be sought within one year of the filing date of the first patent application for the invention (e.g. the Canadian application). International filing is conveniently carried out through the Patent Cooperation Treaty (PCT) application procedure. In the emerging global economy, PCT applications are routinely filed in order to secure patent protection worldwide.

Under Canadian law, all patent applications are published 18 months after filing. The grant of a patent can occur only after examination and prosecution of the patent application by the Patent Office, which may take several years. In Canada, and most other countries, annual maintenance fees must be paid commencing two years after the filing date until the expiry of any patent that issues.

Examination of the application

Examination of a patent application is conducted by an Examiner in the Patent Office who is technically qualified in the field of technology to which the invention relates. In Canada, examination commences only after a request for examination is filed. It is possible to maintain an application pending for up to five years from the filing date. Once examination has been requested, the Examiner will conduct a search of prior art, patents and non-patent literature. In many cases, the Examiner will object that the invention is not sufficiently different from prior inventions and/or prior art disclosures to justify the grant of a new patent. It is then necessary to file arguments in support of the patentability of the invention and sometimes amend the claims to better define the invention. Once the Examiner is satisfied that the invention is patentable, a "final fee" must be paid in order to have the patent granted. If however, the Examiner is not finally satisfied, appeal procedures are available in Canada and most other jurisdictions.

Issuance of a patent

Once the patent issues, the ability to practice the invention is not guaranteed. If an inventor obtains a patent for an improvement of an earlier patented invention, it may not be possible to practise the improvement without first obtaining a license from the holder of the earlier patent. In fast moving fields like biotechnology, it is not uncommon for one patent holder to require a licence from another. Note also that having a patent does not mean others will not copy the invention. Patent owners must enforce their own patents. A patent is enforceable only from the date of grant although in Canada in some circumstances it is possible to claim compensation for infringement back to the date of publication of the patent application. A Canadian patent provides protection in Canada only and expires 20 years after the date of filing of the Canadian patent application.

Once obtained, the patent is property which can be sold (assigned) or licensed, or the invention protected by the patent may be brought to the marketplace by the first patent owner. If a patent is sold (assigned), the patent becomes the property of the buyer (assignee). If licensed, the patent remains the property of the patent owner but the invention can be used by the licensee under conditions set out in a license agreement.

In general, patent agents have expertise in obtaining patents and advising patent holders but not in product development and marketing. For an inventor who does not have the resources of a business enterprise, it often is difficult to obtain sufficient technical, marketing and financial support that is necessary to successfully market an invention. Assistance can be obtained from innovation centres associated with universities and colleges and from provincial and federal agencies. However, often for an inventor on his or her own, an invention will achieve commercial success only if he or she is persistent and resourceful in terms of seeking out and "selling" the invention to an entrepreneur or to a business that already is established in the marketplace.

Invention promotion firms should be approached with caution. Preferably an inventor should make his or her own efforts or work with a trusted business partner in endeavouring to commercialize an invention. At the very least, recommendations from reputable advisors should be obtained before using the services of an invention promotion firm.

Summary

If you have created an invention you should:

1. Consult a registered patent agent before making any disclosure of your invention to third parties. A disclosure not in confidence prior to filing a patent application can destroy the possibility of obtaining valid patent rights;

2. Before filing a patent application, consider having searches made to assess the patentability of your invention;

3. At an early stage make efforts to determine whether or not the invention is likely to be commercially successful, while taking care not to disclose the invention to third parties except on a confidential basis;

4. Instruct your registered patent agent to prepare and file a patent application at the earliest opportunity if the search results and other factors appear favourable.