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How American Businesses Can Save Money on Patents
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. Further, working with one agent in respect of multiple applications in multiple jurisdictions, or working with one agent for all your IP needs tends to be cost-efficient.
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 assets 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.
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 limiting costs. 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.
Further, a Canadian patent agent can advise whether your business would be eligible for small or micro-entity status and assist with asserting the same. Qualifying for small entity status can reduce fees owed to the USPTO in respect of patent applications by 50%. Qualifying as a micro-entity reduces these fees even further, for a total 75% reduction. If you run a non-profit organization or a small business with fewer than 500 employees and affiliates, and have not conveyed an interest in your invention to a large entity, you may qualify as a small or micro-entity. As incorrectly declaring small or micro-entity status can bring severe consequences, such as a subsequently granted patent later being declared invalid, receiving guidance from a patent agent on this matter can be a worthwhile step in the patent application process. This is just one example of an aspect of patent filing which can be addressed by and assistance with which can be obtained from a Canadian patent agent. A Canadian patent agent may also advise on filing strategy, priority dates, and applications filed via the Patent Cooperation Treaty (PCT).
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 patent application 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 protection available 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 drafting responses to office actions received in the course of examination. After a patent application is filed in the U.S., 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, inventive (in other words, non-obvious), useful, and of a patentable subject matter. 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. Objections can be based on non-compliance with formalities (e.g., improperly labelled drawings, illegible drawings etc.) or for substantive reasons (e.g., indefiniteness, anticipated by and/or rendered obvious over cited references).
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 persuasive 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 American businesses or inventors. 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. Moreover, given that the criteria for patentability is similar in the United States and Canada, similar objections may be received and consequently, these objections may be dealt with in a similar manner, resulting in an expeditious prosecution process.
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. In 2022, over US$2 billion worth of goods and services were traded daily between the United States and Canada. As such, a Canadian patent in addition to a United States patent is likely to be advantageous for a patent owner. A Canadian patent would add to the rights the patent owner has in the U.S. such that exclusivity applies across both the United States and 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. As such, businesses and individuals interested in securing a Canadian patent will want the help of an experienced Canadian patent agent to file a patent application in Canada. If you would like to discuss options for filing a patent application, please contact us for a complimentary and confidential telephone appointment.
