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Patent FAQ

By: Christopher Heer, Ryan De Vries, Daryna Kutsyna | Last updated: December 4, 2018
Unless otherwise specified, all question and answers relate to Canadian patents and patent law in Canada.

General Questions

  1. What is a patent?

    A patent is a document defining an invention and providing a description of how that invention can be put into practice. Generally, the invention is defined in a set of claims and is accompanied by a written description and a set of figures showing how to use the claimed invention.

  2. What does a patent do?

    A patent provides protection to the owner of the patent.

  3. What kind of protection does a patent offer?

    A patent provides a time-limited legal right to prevent others from making, using and selling the invention defined in the patent. The legal right generally lasts for 20 years from the date the application was filed.

  4. What rights does a patent owner have?

    In most jurisdictions, patents are private property rights which may be enforced by the owner of the patent through the courts. Similar to how property rights in land give an owner the right to prevent the use of that land by others, property rights in a patent give an owner the right to prevent the use of a claimed invention by others. Like other property rights, patent rights can be licensed or sold.

  5. How can patents enhance the commercial value of ideas?

    A patent allows an owner to restrict the use that the owner's competitors make of the idea. While the owner's right to exclude is limited to the claimed invention, a well-drafted set of claims can often provide a considerable scope of protection. In addition, patents can be bought and sold, providing the owner with transferable property rights.

  6. 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. Industrial designs, known as design patents in the United States, are used to protect visual elements of a design as applied to an article. Trademarks are used to protect brands, images or slogans that are used for commercial purposes. Copyright is used to protect creative works.

  7. 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.

  8. What are the different types of patents I can obtain?

    In Canada, you can only obtain a single type of patent protection for new and useful inventions, as described above. This may be contrasted to the United States, where patents 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.

  9. What is the difference between licensing and assigning a patent?

    Licensing a patent means granting permission to another individual or organization to make and/or sell the invention that has been patented, similar to granting someone the right to use a piece of land. A patent assignment is a complete transfer of patent rights from one person to another, similar to selling a piece of land.

  10. What kinds of inventions can be protected?

    The most important requirement in most cases is that the invention include something that has not been disclosed to the public before. 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 disclosures can also be cited, although many jurisdictions offer a short grace period and the patent office will not cite an inventor’s own disclosure as long as the inventor filed an application within the grace period.

    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.

  11. 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 in light of 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.

  12. What is prior art?

    Broadly speaking, prior art is information that has been publicly disclosed before the priority date of the application.

    In some countries, such as Canada and the United States, a one-year grace period may also apply. Generally, a grace period means that any information publicly disclosed by the inventor up to one year before the filing date of an application is not prior art that can be used by the patent office to argue that the invention is not new or non-obvious. Where a third party receives information about the invention from the inventor and discloses that information other than in a patent application, the grace period may also apply to that disclosure.

  13. What is the priority date?

    The priority date of an application is generally the date on which the application was filed, and as such is also the filing date. However, many applications cover technology which was previously disclosed by the same inventor or applicant in an earlier application, such as in an application in another country. Where the technology was previously disclosed, an applicant may be able to claim priority to the earlier application; in which case the priority date of the later-filed application may be the filing date of the earlier application.

    In most cases an earlier priority date is preferred, as it may limit the patent office’s ability to reject an application on the basis of prior art.

  14. 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.

  15. 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, it no longer limits the public’s use of the invention. Since the invention was disclosed in the now-expired patent, it was publicly disclosed and would no longer qualify as new.

    However, inventive improvements to the original invention may still be eligible for patent protection.

  16. How are patent rights enforced?

    Patents are generally private property enforced by the owner of the patent through the courts. If you discover someone using or selling your invention you may choose to start a lawsuit. Such a lawsuit will generally seek monetary compensation from the other party and a court order that the other party stop infringing your patent.

  17. Who decides if patents are granted or not?

    The granting of patents is generally handled at the national level by a national patent office. In Canada it is handled by the Canadian Intellectual Property Office (CIPO). International treaties exist which allow patent applications to be filed initially at an international level, often with at least a first step of official consideration of the merits of the application. However, at some point you will have to decide in which countries you are interested in seeking a patent, this is generally known as a national phase entry of an international application

  18. 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 patent deal; exchanging public disclosure of an invention for a time-limited monopoly.

  19. 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.

  20. Can I patent my app?

    Again, this will likely depend on whether your app does or incorporates something that can be considered inventive. Generally, if an app does something novel which improves the functionality of the app or a mobile device, that novelty can be patented.

    However, if the novelty of the app is mainly cosmetic, industrial design, trademark, or copyright protection may be more appropriate.

  21. 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 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.

  22. 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.

  23. 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.

  24. 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.

Before Filing an Application

  1. When should you apply for a patent?

    Generally 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.

  2. 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.

  3. What are the steps to patent filing?

    Generally, 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 similar to 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 request examination of your application. 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 approves or objects to the application. Typically, if the patent office rejects your application you are then provided with an opportunity to respond. If the patent office is satisfied with the application, the office will grant the application and issue a patent.

  4. What are the costs of patent protection?

    Costs associated with an application generally include patent office fees and the fees of a patent agent. The largest cost is typically to initially prepare and file a patent application and then additional costs are incurred several months after the filing to respond to patent office objections. The cost to prepare a patent application can often be broken in two by starting with an initial provisional patent application that is filed in the United States. This can be done without losing the ability to later proceed to a regular application in Canada or anywhere else.

  5. 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 only vaguely convey details. 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.

  6. 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 a patent application. 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).

    In many cases, patent offices also publish their own analysis of whether an application is patentable. For example, the Global Dossier database provides an opportunity to view the prosecution history, which generally includes letters written by examiners about the patentability of the claims.

  7. Can I conduct a patent search myself?

    Practically speaking, if you keep up to date on public disclosures relating to the field of your invention, a patent search may be as simple as considering what you have seen and reviewing recent publications.

    While a professionally-conducted search and opinion may be desired in some circumstances, in other circumstances it is quite appropriate to rely on 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.

  8. What does "patent pending" mean?

    Patent pending is a notice placed on products to inform the public that a patent application has been filed to protect 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.

  9. What might prevent a patent application from being granted?

    A patent office rejection may be based on prior art which renders your invention obvious or anticipated. A patent office 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 that a piece of prior art was incorrectly interpreted. However, in some cases technical mistakes may greatly reduce potential patent protection, particularly as an applicant is generally not permitted to add subject matter to an application where the application includes only an incomplete disclosure.

  10. Can I tell others about my invention?

    One of the requirements for patentability is novelty, or not having your invention be 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 public disclosure, relying on this grace period 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.

  11. 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.

  12. 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.

  13. 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. A provisional application is often used as a way to obtain a priority date, to which a later regular application may be able to claim priority to effectively secure an earlier filing date for the regular application.

    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.

  14. 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.

  15. How is a patent granted?

    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 the patent application has been filed with one or more patent offices, it is examined. During the examination process, a patent office does a search of prior public disclosures and reviews the patent application to ensure it meets technical requirements. The patent office will then either approve or object to the application. Typically, if the patent office rejects an application the owner is provided with an opportunity to respond. If the patent office is satisfied with the application, the office will grant the application and issue a 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.

  16. How long does the application process take?

    The time for a patent application varies, but generally 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.

  17. What are the costs of patent protection?

    Costs associated with an application generally include patent office fees and the fees of a patent agent.

    The largest cost is typically to initially prepare and file a patent application. Additional costs are often incurred several months after the filing to respond to patent office objections, since most applications face at least one round of objections from the patent office as the applicant and the patent office negotiate the scope of protection.

    Part of the cost to prepare and file a patent application can be deferred by starting with a provisional patent application. A regular patent application can then claim priority to the provisional application, and can often also be based on the provisional application instead of being drafted from scratch.

  18. When would I file multiple provisional applications for a single invention?

    A provisional application is generally filed to secure a priority date when an applicant anticipates filing a regular application. 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.

  19. Can I still apply for a patent after I have published my research filings?

    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), a one-year or other grace period may apply. Provided certain conditions are met, the grace period gives you a time in which to file an application for an invention you disclosed. Note, however, that there are risks in relying on the grace period, it is generally best to apply for a patent before making a public disclosure and as soon as possible after a public disclosure.

  20. 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.

  21. What kind of services does a patent agent offer to their clients?

    A patent agent is able to assist you in understanding and complying with the requirements of the patent system, and handles all correspondence with the patent office to ensure that formal requirements are met.

    An experienced patent agent can assist in drafting a patent as broadly as possible, to help ensure that you maximize the protection and value an eventual patent can provide. An experienced patent agent will also be able to help frame your responses 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.

  22. 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

  1. Who grants patents?

    The granting of patents is handled at a national level by a national patent office or, in some jurisdictions, at a regional level by a regional patent office. The Canadian Intellectual Property Office (CIPO) and the United States Patent and Trademark Office (USPTO) are examples of national patent offices. The European Patent Office (EPO) is an example of a regional patent office.

  2. 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.

  3. How can I help my patent agent?

    Generally the best thing you can do to help is to provide as much information to your agent as possible. In particular, the following information should be provided if available:

    • The field of the invention
    • A broad description of the invention
    • Objectives of the invention (that is, its main practical advantages over existing practices or products)
    • The preferred practice (that is, 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 what has come before, whether these features are patented or not
    • The scope of the invention—for example, the materials, compositions, conditions, etc. used to obtain good results
    • 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 patent's preferred practice (item 4, above) and the conditions under which poor or dangerous results could be expected
    • Lists of relevant patents or technical articles you have already found in any literature search, including full details such as: name of the inventor, number of the patent, country and date of issue or name of the periodical and its date with a list of the similarities and differences of practices or products that are relevant to your invention
    • Any disclosure you have made (for example, people you may have told about your invention)
    • Your name, address and citizenship
    • All countries in which you would like to file for a patent

  4. 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.

  5. Why do I need to indicate who the inventor is?

    Patent rights are granted to the inventor or inventors. Where a patent owned by a corporation, for example where the inventor was hired by the corporation to invent, the inventor will then transfer the patent rights to the corporation, typically through a formal assignment.

  6. What is examination and what happens during an examination of a patent application?

    Examination of a patent application means the process of review conducted by the patent office. The patent office reviews the application to ensure formality requirements are met, and to ensure patentability requirements such as novelty, usefulness and non-obviousness are met.

    In Canada examination does not begin until the applicant requests it, which must be done within five years of the filing date. However, in the United States examination is automatic.

  7. Can 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.

  8. 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.

  9. 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 undergo at least one rejection as the applicant and the patent office negotiate as to how much protection the patent office is prepared to give.

  10. 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.

  11. Will the government help enforce my patent?

    The government does not typically get involved in enforcing privately held patent rights, unless an owner or other interested party has obtained a court order. 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.

Opposing Patents

  1. 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.

  2. 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.

  3. 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.

  4. What is a validity opinion?

    A 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.

  5. Can a competitor make small changes to my invention and avoid my patent?

    This 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. This is largely a case-by-case assessment.

  6. Am I free to do something as long as 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.

  7. 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.

  8. Can I create derivative works using 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, such as by way of a licensing agreement.

Patents and Business

  1. How are patents relevant to my business?

    Patents are commonly filed for improvements on existing inventions. These patents give their owners a chance to make and sell the improved 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.

  2. 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 if they are able, and you are also not in a position to transfer legal rights to the invention in the form of a sale of the patent.

  3. Can I sell my patent?

    Yes. You can license your patent to allow another individual or company to make or sell your patented invention, or transfer your patent rights completely to another individual or company through a sale of the patent.

  4. 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 discussing 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.

  5. 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. 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.

  6. How do I maintain my patent?

    In order to maintain your patent application or patent in Canada, you have to pay regular maintenance fees to the Canadian Intellectual Property Office. They are paid annually, beginning on the second anniversary year from when your patent application was filed, up to the 19th anniversary after 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 increase on the 5th, 10th and 15th anniversary of when the patent has been granted. 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.

  7. 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 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 among other factors. 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 particular circumstances.

  8. 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.

  9. 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.

  10. When can I say patent pending in my promotional materials?

    You can say patent pending once you have filed either a provisional or a regular patent application in the jurisdiction in which you are distributing these promotional materials.

  11. 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.

  12. 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 on the basis of 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 to discuss how we can help.

  13. 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 design your product, you may wish to protect your invention as a trade secret rather than limiting yourself to the 20-year protection of a patent.

Similarities and Differences Across Jurisdictions

  1. How long does a patent last?

    In most jurisdictions, patents are valid for up to 20 years from the filing date.

  2. 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.

  3. 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 in force in the country in which the are issued.

  4. 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, only national or regional patent offices have the authority to grant a patent. So, within a pre-determined period of time, an applicant must still determine where they wish to seek a patent, and must then enter their international application into the national or regional phase with a national or regional patent office that has authority over the jurisdiction they are interested in.

    A list of countries which participate in the PCT application process may be found on the World Intellectual Property Organization website.

  5. 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).

  6. How can I find the patent laws of various countries?

    Most jurisdictions have published copes of 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.

    As a result of international treaties, patent applications can be filed at an international level (i.e. a Patent Cooperation Treaty or PCT patent application). However, the international authorities do not grant patents, 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. A benefit of the international application stage is that it may allow you to wait until a later point before deciding in which countries you are interested in seeking a patent.

  7. 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.

  8. When do I need to file my foreign applications?

    If you wish to take advantage of a particular priority date assigned to an early patent application, you will generally need to file your foreign applications within twelve months of your initial filing or within 30 months of the priority date of an international application.

  9. What is the Paris Convention?

    The Paris Convention for the Protection of Industrial Property is a global agreement regarding patent protection. Canada, and approximately 170 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.

  10. What role does WIPO play in regard to 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 have any further questions please feel free to make an appointment.

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