Patents

Patents - Definition & Background Information
Applying for a Patent
International Patent Application
Date of filing versus date of invention - priority filing date
Sales of your invention before filing your first patent

PATENTS: DEFINITION & BACKGROUND INFORMATION

What is a patent?

A patent is an exclusive right given by the Government of one country to manufacture, use or market an invention. That invention might be a piece of equipment or it might also be a process by which a product is made. A "patent" in Canada [referred to as a "Utility Patent" in the United States] is intended to protect the function, purposes or method of operation of the invention. It is not intended to protect such things as the shape or visual appearance of the product [which can be protected by industrial design registration in Canada or a "design patent" registration in the United States], nor does it protect the name, slogans, logos or graphic symbols used to help sell the product in the market place [all of which can be protected by Trade Mark registration].

A patent is intended to protect the way something works, its function or the purpose for which it was developed.

How does a patent protect my idea or invention?

A patent is the only means by which you can "own an invention" and have the right to control or decide who is entitled to manufacture, sell or import your product or manufacturing methods. You cannot prevent someone from using your idea unless you hold a patent for the invention.

What constitutes infringement of a patent?

Infringement of a patent or occurs when someone uses your idea, logo, business name, etc. or copyright material without your authorization, or they use something so similar to your idea that a reasonable person would come to the conclusion that the product comes from the same manufacturer as yours or the Trade Mark is being used by the same manufacturer.

What are the penalties for infringement?

Penalties for infringement include damages based on the profit that either you could have made if you had sold the pirated products or profit that the individual actually made, as well as punitive damages. In addition, an injunction can be granted by the Court to prevent further infringement from occurring.

What kinds of things can be patented?

Anything that has a consumer / industrial / commercial benefit that can be sold.

What does a patent look like?

American Patent Registration

Is my idea or invention protected once I've begun the process of the patent application?

Yes. If you are the "first to the gate," you retain the right to the invention or idea as long as the application remains in process. If you give up the process of the application, you forfeit the right to protection of the idea or invention.

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APPLYING FOR A PATENT

How do I begin the process of applying for a patent?

The process of applying for a patent is often misunderstood and confused with other forms of protection of "intellectual property".

The first step in determining whether you have an idea which can be protected by patent is to have a patent search conducted. This is often done in the United States Patent Office, although it can be done in any Patent Office in which you are interested in marketing your invention. Commonly, a patent search is conducted in the United States Patent & Trademark Office as their patent office has a very extensive collection of patents, compared to say the Canadian Patent Office. The purpose of having a patent search conducted is twofold:

1. To attempt to determine the probability of success if you were to apply for a patent for your invention and;
2. To determine whether any sale or marketing of your invention would likely result in legal action against you for patent infringement.

A patent search conducted only in the Canadian Patent Office of the Canadian "patent art" will tell you something about what types of inventions have been previously registered with the Canadian Patent Office. In having this type of search done, you are attempting to locate any patents which may be relevant to you and to your invention and which may be relevant to the issue of whether or not you would be successful in securing a patent for your invention.

The second reason for having the patent search conducted is to determine whether any patents previously granted by the Patent Office are similar to your invention and whether those patents are still "alive", that is whether those relevant patents have expired or not. If any relevant patent has not expired, then you may be looking at the very real possibility of being sued for patent infringement if you were to manufacture or sell the product or use the process which has been protected by that patent or patents.

Once the patent search has been completed, you will receive an opinion as to whether your invention could likely be protected by a patent application and what types of difficulties you would expect to encounter during the course of the application. Based on the search results, you would then decide whether to proceed with the patent application, and also decide which countries have markets that are sufficiently large to make a patent application worthwhile.

Once you have applied for a patent in one country, it is very important that you apply for patent protection in any other country which you would like to obtain a patent, with your applications to those foreign countries filed within twelve months of the filing date of your initial application. By filing the corresponding patent applications in these foreign countries within twelve months, you are able to take advantage of the date of filing of your first patent application, which becomes your "priority filing date" with respect to the patent applications filed in the other countries.

Under this priority filing date system, these foreign countries will treat your applications as if they were filed on the same date that your first patent application was filed. This will secure and protect your right to obtain a patent in those foreign countries, even if someone has filed a patent application in that foreign country with an earlier filing date, but subsequent to the date when you filed your first application. This priority filing date is also known as a "Convention Priority", meaning the foreign country or countries recognize the filing date of your first patent application. Since most countries in the world are now on a "first to file" patent filing system, it can be extremely important for you to take advantage of the Convention Priority filing date whenever possible.

A patent application in the United States commonly takes between 1-2 years to complete, while a patent application in Canada will often take 2-3‡ years. Costs of securing patent protection in foreign countries can vary widely and can depend upon costs of translation of your patent application into the foreign language, as well as the custom of the country in which you are attempting to obtain patent protection. Filing for patent protection in such countries as Japan and China can be particularly costly, primarily due to the difficulty in translating concepts or arguments.

Do I need to have a patent search conducted?

Many people believe that they should be selling the product for several months before having an initial patent search conducted. This is dangerous for a number of reasons:

1. You may be infringing upon someone else's patent without realizing it.
2. You may incur substantial cost and expense in manufacturing your product only to find that all of your profits and inventory are confiscated in an infringement lawsuit.
3. You may invest a great deal of time and money pursuing what you believe to be your invention, only to later learn that it is not really your invention but has in fact already been invented by someone else.
4. By having a patent search conducted first, you can determine what the Patent Office has allowed in the past and you are often able to think of ways that you can improve your product to make it more likely to be patented and also to improve the product itself.

Wherever possible, the initial patent search should be conducted FIRST before doing anything else. It takes approximately four to six weeks to have a thorough patent search performed. During this time, you can be raising funds to help pay the cost of pursuing a patent application or several applications as well as Trade Mark applications and marketing or licensing of your product.

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INTERNATIONAL PATENT APPLICATION

The Patent Co-operation Treaty (PCT) is an international treaty which has been signed by many different countries and which enables an inventor to obtain patent protection in a number of different countries without incurring the very large expense of filing individual patent applications in those countries. For example, as of January 1, 1994, China became a member of this International Treaty. Previous to January 1, 1994, if someone wanted to obtain patent protection in a number of foreign countries including China, this would have required preparing and filing two applications: one "treaty application" and a separate application for China.

As of January 1, 1994, you can now obtain patent protection in China at the same time that you obtain protection in most other industrialized countries in the world. Although the cost of pursuing a treaty application is quite high, the ultimate cost can often be passed on to the distributor or the manufacturer in the various foreign countries in which you want to sell your product, thus substantially reducing your cost of obtaining patents in these countries. If you file individually in these several foreign countries, you will most likely be paying those costs yourself.

When is the best time to file for a patent?

It is important to apply for patent protection as soon as you have finalized the details of the invention. The Federal Government brought into effect several changes as of October 1989 regarding the Canadian Patent Act. Under those changes, Canada is no longer a "first to invent" country but has become a "first to file" country. This means that the date that you have invented something or the date that you created an idea is no longer important. Instead, what has now become critically important is to make sure that your patent application is filed as soon as possible in the Patent Office, preferably at the Canadian Patent Office or the United States Patent Office.

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DATE OF FILING VERSUS DATE OF INVENTION - PRIORITY FILING DATE

The date that you file your first application anywhere in the world becomes what is called your priority filing date. If you file for patent protection in every other country in which you are interested in obtaining a patent within twelve months of the date of filing of your first application, your subsequent patent applications will be treated as if they were filed on the date that your first application was filed (i.e. your priority file date). This enables you to claim priority over anyone else who has filed an application subsequent to the date that your first application was filed.

You are permitted to file for patent protection in those countries subsequent to this twelve month period expiring, but in the event that you file your subsequent applications more than twelve months after the first application was filed, those subsequent applications will not be given the advantage of the "deemed filing date" of the priority filing date but rather will be treated as being filed on the day that they were in fact filed.

The danger of this lies in the possibility of someone else having filed for patent protection for a similar invention in one or more of those foreign countries and as a result, that individual becomes the "first to file." Your application may then be unsuccessful only because you did not file within this twelve month period.

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SALES OF YOUR INVENTION BEFORE FILING YOUR FIRST PATENT APPLICATION

Most countries in the world do not allow any sale of your invention or product prior to the date of filing of your first patent application somewhere in the world. Those countries require that you not have publicly disclosed, displayed or sold your product at all prior to initially filing for patent protection. As an entrepreneur/inventor, you will normally want to test the market for your invention before incurring the cost and expense of a patent application. Why not attempt to capitalize on your invention as quickly as possible?

The danger here is that you may be unable to obtain patent protection in most countries of the world, regardless of the volume of sales of your product which you are able to enjoy.

Although the law in Canada and the United States allows for a one year "grace period" (i.e. a maximum of one year may elapse between the date of your first disclosure, display or sale of your product), this grace period is often interpreted in a dangerous fashion. Many people think that the grace period allows them to sell for several months so long as they get their application filed within one year from the date that they first sold the product or displayed it publicly. This is dangerous for two reasons:

1. Any disclosure of your invention may result in someone filing for patent protection for your invention or for a version of your invention which has been revised or improved upon by someone else.
2. Someone else may believe that your product has substantial market potential and they may begin manufacturing and selling your product only as a result of having seen the product initially, thus damaging your potential in the market place.

How soon can I disclose my ideas to others, including the manufacturer?

You should disclose your ideas to as few people as possible until you have filed for your patent application because your ideas could easily be stolen and pirated. You should begin the patent process in both Canada and the U.S. to ensure that you will be protected in both countries.

Does a non-compete and non-disclosure agreement protect me from having my ideas or invention pirated?

Not necessarily. A non-compete and non-disclosure agreement keeps a specified individual or party from applying for a patent but it does not prevent them from publicly disclosing the information. Any other individual or party that receives the information has the ability to take the idea or invention to the patent office first and impede your ability to successfully acquire the patent for yourself. A non-disclosure can act as a good deterrent but doesn't necessarily protect you. You need to initiate a patent as quickly as possible. Keep in mind that the first one to the gate at the patent office has priority rights.

Can someone steal or pirate my idea or invention if I'm still in the Research and Development stage?

Yes. It is important that you begin the process as early as possible and include in the patent any information that might possibly be included in the patent.

Can I make changes or modifications to the patent as I develop the product?

Yes, as long as the additions or changes do not describe a separate or secondary invention or idea. You are entitled to make revisions and modifications throughout the process of the application.

How long does the patent process generally take?

The patent search usually takes about 4-6 weeks. The patent application will normally take 1½ to 2½ years or longer, depending on the number of modifications necessary to complete the process.