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How American Businesses Can Save Money on Patents

By: Christopher Heer, Annette Latoszewska | Last updated: October 13, 2019
Businesses are somewhat hesitant to undertake the expense of protecting their patentable intellectual property despite its value as, securing a United States patent, from start to finish, can cost thousands of dollars. Thankfully, there is a simple strategy to help U.S. businesses protect their valuable IP while reducing the associated costs.

Canadian patent agents registered with the United States Patent and Trademark Office (USPTO) can directly file U.S. patents for Canadian applicants. Most Canadian inventors and companies rely on such Canadian patent agents for the preparation and filing of their U.S. patent applications. These agents have acquired a wealth of experience before the USPTO representing their Canadian clients at all stages of the patent application process.

While the direct representation of clients by Canadian patent agents in front of the USPTO is restricted to Canadian applicants; inventors and companies in the United States should not overlook the opportunity to capitalize on the significant experience of Canadian patent agents in front of their domestic patent office. A Canadian patent agent, while not able to directly represent a U.S. applicant as their potential agent before the USPTO, can nonetheless help a US-based inventor or company protect their patentable resources in the U.S. both pre- and post-filing. The use of a Canadian patent agent, and payment of professional fees charged in Canadian dollars, represents a big source of savings for a U.S. patent applicant given the current rate of exchange between U.S. and Canadian dollars. The potential savings for a U.S. business or inventor applicant can reach 33% assuming nominal amounts are charged.

Pre-filing

One of the ways a Canadian patent agent can support a U.S. applicant looking to secure a U.S. patent is by drafting the application to be subsequently filed by the U.S. applicant themselves, or by a U.S. patent practitioner. Canadian patent agents with experience helping Canadian applicants obtain U.S. patents have significant familiarity with the law and procedure associated with U.S. patent applications. By using a Canadian patent agent to prepare your application, you receive the benefit of professional expertise while also reducing cost. If you’re an inventor applicant, you can file your prepared patent application without the assistance of a patent attorney or patent agent. If your company is the applicant, the patent rules require that you are represented by a patent practitioner in the filing and prosecution of your patent application.

As noted above, there is no rule which requires an inventor to seek the professional assistance of a patent practitioner at any stage of the application process. However, patent applications are governed by a dense and complex collection of procedural and substantive rules and regulations with which a patent practitioner would have significant familiarity and experience. Further, filing an incomplete or otherwise deficient application can delay the process, limit the scope of the patent eventually granted, or most commonly preclude the patent. Applicants are encouraged to invest in the professional expertise of an experienced patent lawyer or patent agent to avoid making costly and irreparable mistakes and secure the broadest available protection for their invention.

Post-filing

Another way in which U.S. inventors and businesses can take advantage of the experience of Canadian patent agents before the USPTO is in the drafting of responses to office actions received in the course of examination. After a patent application is filed in the US, it automatically proceeds to examination. During examination, a patent examiner reviews the application to confirm its compliance with procedural rules, as well as to confirm the invention as disclosed is patentable at all. In doing so, the examiner will consider in large part whether the invention is new and whether it is inventive (in other words, non-obvious). It is not uncommon to receive one or more objections to the patentability of your invention from the USPTO prior to being granted your patent.

Canadian patent agents registered with the USPTO are experienced in reviewing these objections and effectively addressing them in a response. Having professional support at this stage of the process is critical to ensuring timely examination and eventual issuance of a patent. An experienced patent agent will ensure that your responses are thorough and complete in order to pre-empt repeated objections. Responses drafted by a Canadian patent agent can subsequently be filed by the inventor or by a domestic U.S. patent agent at the inventor’s request.

In the case of U.S. businesses, a prepared response will need to be filed by a representative U.S. patent practitioner. Given the likelihood of receiving one or more office actions in the course of examination, the use of a Canadian patent agent in responding to these actions is another opportunity for savings for an American business or American inventor. Professional fees incurred at this stage often represent a major portion of the expenditures associated with securing a patent.

What about filing in Canada?

Inventors and businesses in the U.S. are also encouraged to consider protecting their intellectual property in Canada. Similarities between U.S. and Canadian patent law can expedite and otherwise facilitate the process of obtaining an equivalent patent in Canada. Further, having already prepared an application for filing in the U.S. can significantly reduce the cost of the subsequent filing in Canada because the same application may be filed with few if any changes.

A U.S. patent gives its owner the right to exclude others from making, using, offering for sale, or selling the invention in the United States or importing the invention into the United States. The benefit of a patent is therefore territorial, and the right above does not extend beyond the U.S. border. With Canada being the largest export market for the U.S., the potential for infringement and the magnitude of the consequent losses are high. A Canadian patent would extend the above rights to apply across Canada.

U.S. patent agents cannot represent U.S. applicants for Canadian patents before the Canadian Intellectual Property Office (CIPO) without also being registered as a patent agent in Canada and as such, businesses and individuals interested in securing a Canadian patent will require the help of an experienced Canadian patent agent to file in Canada. If you would like to discuss options for filing your patent application, please contact us for a complimentary and confidential telephone appointment.