Calgary Patent Lawyer
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 could be a process by which a product is made. A patent (referred to as a "Utility Patent" in the United States) is intended to protect the way something works, its function, or the purpose for which it was developed. Anything that has a consumer / industrial / commercial benefit that can be sold is eligible for a patent.
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).
Why would I need one?
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's the process to apply for a Patent?
The first step is to have a patent search done. This can be done in any country's Patent Office in which you wish to market your invention. Commonly, a patent search is conducted in the United States Patent & Trademark Office, as it has an extensive collection of patents, compared to others such as the Canadian Patent Office.
The purpose of having a patent search conducted is twofold:
- To attempt to determine the probability of success if you were to apply for a patent for your invention and;
- 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 will tell you something about what types of inventions have been previously registered there. Doing this, you are attempting to locate any patents which may be relevant to you and to your invention. This may affect whether or not you would be successful in securing a patent.
The second reason for doing the patent search is to learn whether any patents previously granted are similar to your invention, and whether those patents are have expired or not. If any relevant patent has not expired, then you risk 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. You would also decide which countries have markets large enough to make a patent application worthwhile.
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. They depend on 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 translation costs.
Other Common Patent Questions:
How do I file an International Patent?
The Patent Co-operation Treaty (PCT) is an international treaty which enables an inventor to obtain patent protection in a number of different countries without incurring the expense of filing individual patent applications in those countries.
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. If you file individually in these several foreign countries, you will most likely be paying those costs yourself.
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:
- You may be infringing upon someone else's patent without realizing it.
- 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.
- 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.
- 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.
Wherever possible, the initial patent search should be conducted 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.
What's more important, the date of invention or the date I file for a patent?
Once you have applied for a patent in one country, it is very important that you apply for patent protection in any other country necessary within twelve months of the filing date of your initial application. By filing the corresponding patent applications within twelve months, you are able to take advantage of the date of filing of your first patent application. This becomes your "priority filing date" with respect to the patent applications filed in the other countries.
Under this priority filing date system, these other 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 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.
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.
Can I sell my invention before I file for a patent?
Most countries 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" (a maximum of one year may lapse 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:
- 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.
- 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, as your ideas could 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.
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.
What constitutes infringement of a patent?
- If someone uses your idea, logo, business name, or copyrighted material without your authorization.
- If someone uses 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.
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. Canada is no longer a "first to invent" country, but is a "first to file" country. This means that the date that you have invented something or the date that you created an idea is not important. Instead, what is 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.