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Patent Guide

For exact definitions and details, consult the Trademark Act, the Trademark Rules, and decisions of the courts in specific cases. You can find these texts in many libraries. You can also buy a copy of the Act and Rules in any bookstore selling Federal government publications. 

 
      


If you have questions not covered by the related sections you may direct them to: 

ARVIC Search Services Inc.
#260, 2323-32 Ave NE, Calgary, Alberta T2E 6Z3 
Telephone: (403) 234-0844 Fax: (403) 294-0944 E-Mail

Reprinted from CIPO - 2002-12-31


Index to Chapter Four - Patents

Introduction
Patent Protection

Novelty, Utility, Ingenuity

The First Steps Towards Patent Protection

Next Steps - The Prosecution

What Protection Means

Format of the Application

The Role of the Accountants and Lawyers

Introduction

In this section we will discuss

Wealth of Technical Know-how
Your R&D Partner

Summary of Benefits of A Patent Search

Patents Fuel Progress

Purpose of this Guide

In today's world of rapid fire technological change, the company with the competitive edge is usually the one tapped into the latest developments in a given field. Many people tend to think that only large firms with sophisticated research and development departments can afford to stay abreast of new technology. They are unaware of the gold mine of inexpensive, readily available technical know how waiting to be used at the Canadian Patent Office.

Patents and patent applications can serve as resource materials much like trade or research journals. They contain a thorough explanation of a particular technology in language that anyone in the field can understand. The patent document provides a wealth of information: a capsule description of a particular technology; background history of a problem; how the new invention overcomes these problems; a complete description for making the invention; and any conditions under which the invention will not work.

Thus, protection of the inventor is only one part of the patent story. By providing information, patents also promote research and development, stimulate the economy and increase the overall level of knowledge of our population.

 


Your R&D Partner

With so much information stored in each patent, it's not surprising that the Patent Office has the largest collection in Canada of current technological know how from around the world. The Office contains over 1.2 million Canadian patents, 4.9 million American patents, and almost all of the patents from most industrialized countries. It receives more than 35,000 applications annually, covering technologies ranging from biotechnology to disposable diapers.

Some of these patents are merely for "end of the line" improvements, but many are important, pioneer inventions that open up whole new fields in technology. Electronics, for example, started with a patent on a vacuum tube.

The information on these patents not only covers every conceivable field, but may very well be the most up to date information available. That is because patent applications are now generally made public long before patents are granted or refused. Indeed, about 70 percent of the information contained in patents does not appear in any trade journal for at least five years after the patent has been granted. At least 50 percent of this information is never published in mainstream technical literature. This percentage is likely to increase, as a result of legislation designed to ensure that patent documents are available to the public earlier than ever before.

A historic example of how patent documents tend to be more current than other publications concerns Hollerith's punched card for computers. A patent was issued on this important invention in 1889, but no other publication told the story until 1914, 25 years later.

A prime goal of the Patent Office is to make patent information available to Canadian industries, universities and research centres, to help them keep abreast of innovations. The resources of the Patent Office are especially useful to small and medium sized businesses which may be unable to conduct their own research and development.

In fact, ignoring Patent Office resources could cost you time and money, especially if you end up "reinventing the wheel." Some 10 percent of all R&D in Canada does just that, by duplicating patented technology. A search of the patent literature may prevent this kind of wasted effort.

Learning the existing solutions to certain technical problems can also give you ideas for better inventions. In almost any field, some work has already been done somewhere. It makes sense to attack a problem with all the available knowledge at hand. Perhaps the solution to the problem exists in a foreign patent, and you may be able to use it without restriction here in Canada.

Patent documents can also reveal trends and sources of new products, show what the competition is doing at home and abroad, and help you find new suppliers, markets or know how that you can use under license.

Keep in mind that Canada is a net importer of intellectual property, including patents. Of the more than 30 million patents in the world, only 1.2 million are Canadian patents, but all are available to Canadians. Most of the "state of the art" technology from highly industrialized countries such as the United States, Japan, or Germany comes to Canada via the patent system.

 


Summary of Benefits of a Patent Search

If you are a business person, researcher, engineer or student, a search through patent documents can help you:

  • Identify trends and developments in a specified field of technology;
  • Discover new product lines which you can license from the patentee or use without needing a license;
  • Find information that prevents duplication of research;
  • Identify unproductive avenues of inquiry by reading about the current state of the art;
  • Keep track of the work of a particular individual or company by seeing what patents they have been granted;
  • Find a solution to a technical problem;
  • Gain new ideas for research in a particular field.

Competitors may be using the information in patent documents to their advantage. Can anyone afford to ignore it?

 


Patents Fuel Progress

Where would we be without patents? At a more primitive stage of industrial development, without a doubt. Technological progress and economic strength in modern industrialized nations, and Canada is no exception, depend greatly on the patent system both at home and abroad.

Patents offer inventors monopolies on their creations for specific periods, and thus provide incentives for research and development. Without the possibility of patent protection, many people might not take the risks or invest the time and money involved in devising and perfecting new products. Our society would be deprived of thousands of innovations, from the proverbial better mousetrap to new medicines, communications systems, energy sources, and so on. And without new products the economy would quickly stagnate.

But patents do more than keep creative wheels spinning. They are also a means of technological exchange. Each patent document describes a new aspect of a technology in clear and specific terms and is available for anyone to read. They are made public specifically to promote the sharing of knowledge. As such, they are vital resources for businesses, researchers, inventors, academics and others who need to keep up with developments in their fields.

 


Purpose of This Guide

This site explores the two main ways patents may be important to the inventor, business person or researcher as a source of protection and of information. The site is designed to be your introduction to patents and patenting procedures, and to outline how you can use the resources of the Canadian Patent Office to further your business or research venture.

It is not, however, a comprehensive text on patent laws (these are available in many libraries). Nor is it a substitute for the professional advice you may need from a registered patent agent to assist you in protecting your invention.

The Canadian Patent Office - The federal agency responsible for granting patents in Canada is the Canadian Patent Office, directed by the Commissioner of Patents.

The role of the patent office in granting patents is to acquire and disseminate technological information and to encourage the creation, invention and exploitation of inventions. The Patent Office is part of a larger agency called the Canadian Intellectual Property Office (CIPO), which comes under Industry and Science Canada. CIPO is responsible not only for patents, but for all intellectual property rights including copyrights, industrial designs, trademarks and integrated circuit topographies.

The main functions of the Patent Office are to:

  • To receive and examine applications for patents and grant patents to qualifying applicants;
  • Record assignments of patents;
  • Maintain search files of Canadian and foreign patent documents and a search room for public use in researching patent documents and records;
  • Offer copies of Canadian patents prior to Patent No. 445 931 for sale to the public; and a publish and disseminate patent information.

The Patent Office has approximately 250 employees, about 100 of whom are examiners with extensive technical and legal training. These specialists in various fields of invention examine patent applications, some 35 000 of which are received each year.

The archives of the Patent Office constitute the largest collection of technological information in Canada. A detailed classification system helps people retrieve this information.

 


PATENT PROTECTION

In this section we will discuss.

What is A Patent
What Can You Patent

What Is a Patent

Through a patent, the government gives you, the inventor, the right to exclude others from making, using or selling your invention from the day the patent is granted to a maximum of 20 years after the day on which you filed your patent application. You can use your patent to make a profit by selling it, licensing it or using it as an asset to negotiate funding.

In exchange, you are expected to provide a full description of the invention so that all Canadians can benefit from this advance in technology and knowledge. The Patent Office will publish your application 18 months from the earlier of, a) your filing date in Canada, or b) your filing date abroad under an international treaty; this date is known as the "convention priority date."

People may then read about, though not make, use or sell, your invention without your permission. Only after your patent has expired may anyone freely make, use or sell your invention. The idea is to promote the sharing of technological information while giving you a monopoly on your creation.

To sum up, a patent is a document protecting the rights of the inventor and a repository of useful technical information for the public.

The rights conferred by a Canadian patent extend throughout Canada, but not to foreign countries. You must apply for patent rights in other countries separately. Conversely, foreign patents do not protect an invention in Canada.

People occasionally confuse patents with copyrights, industrial designs, trademarks and integrated circuit topographies. Like patents, these are rights granted for intellectual creativity and are forms of intellectual property. However, patents are for new technologies (process, structure and function); copyrights are for literary, artistic, dramatic or musical works and computer software; industrial designs are for the shape, pattern or ornamentation applied to an industrially produced object; a trademark is a word, symbol or picture, or combination of these, used to distinguish the goods or services of one person or organization from those of another; integrated circuit topographies refer to the three dimensional configuration of the electronic circuits embodied in integrated circuit products or layout designs.

 


What Can You Patent

Suppose you are the proud inventor of an electric door lock. How do you know if you can obtain a patent for it? There are three basic criteria for patent-ability. First, the invention must be new (first in the world). Second, it must be useful (functional and operative). Finally, it must show inventive ingenuity and not be obvious to someone skilled in that area.

The invention can be a product (a door lock), a composition (a chemical composition used in lubricants for door locks), an apparatus (a machine for making door locks) or a process (a method for making door locks), or an improvement on any of these. Ninety percent of patents are, in fact, for improvements to existing patented inventions.

A patent is granted only for the physical embodiment of an idea e.g. The description of a plausible door lock or for a process that produces something saleable or tangible. You cannot patent a scientific principle, an abstract theorem, an ideal a method of doing business, a computer program, or a medical treatment. Nor can you patent inventions having illicit or immoral purposes.

What you can and can not Patent
What you can Patent What you can not Patent
New kind of door lock E=MC2
Apparatus for building door locks Romeo and Juliet
Process for lubricating door locks Process for refining an illegal substance
Method of making door locks A business plan
Improvements on any of these


NOVELTY, UTILITY, INGENUITY

In this Section we will discuss;

Novelty
Utility

Inventive Ingenuity

Registered Patent Agents

When to Apply for A Patent

Novelty

To be granted a patent you must be the original inventor of your door lock (or the assignee of the inventor). And it must be the first such door lock in the world.

What's more, you cannot obtain a valid patent in Canada if your invention was made public before you filed the application. There is, however, a one year exception. If you, or someone who learned of the invention from you, discloses it publicly, you can still file in Canada within the year following that disclosure. (This applies to Canadian patents, but not necessarily to foreign ones.)

 


Utility

A valid patent cannot be obtained for something that doesn't work, or that has no useful function. If your door lock does not work, it will fail the utility test.

 


Inventive Ingenuity

To be patent-able, your invention must be a development or an improvement that would not have been obvious before hand to workers of average skill in the technology involved. You can't offer an electric door lock that's merely a bit faster or stronger than others and that any door lock designer could easily come up with. Your door lock must elicit a "why didn't I think of that" reaction from other designers in the field.

You may obtain a patent for an improvement to an existing patented invention, but keep in mind that the original patent may still be in force. Hence, manufacturing or marketing the product with your improvement would probably be an infringement. This situation is often resolved by agreement between the patentees to grant licenses to each other.

 


Registered Patent Agents

Preparing and prosecuting, following through on a patent application, is a complex task. Prosecution involves corresponding with the Patent Office, making any necessary amendments to the application, and fixing the legal scope of the patent protection. All this require broad knowledge of patent law and Parent Office practice, knowledge that you can expect from a specialist known as a registered patent agent. A trained patent Agent can save you from many headaches caused by such things as a poorly drafted patent that inadequately protects your invention. Hiring such an agent is not mandatory but is highly recommended, and most inventors do so.

Registered patent agents must pass rigorous examinations in patent law and practice before they may represent inventors before the Patent Office. Beware of unregistered patent agents; they are not authorized to prosecute applications and are not subject to Patent Office discipline. A list of registered patent agents is kept in the Patent Office. However, the Patent Office cannot recommend any particular one to you. Your local telephone directory is another source of agents' names.

Patent agents' fees are not regulated by the Patent Office. You and your agent should agree on fees before work on your application begins. Once you've appointed a patent agent, the Patent Office will correspond with no one else about the prosecution of your application. You may, however, change patent agents at any time.

 


When to Apply for a Patent

In Canada, patents are given to THE FIRST INVENTOR TO FILE an application. Therefore, it's wise to file as soon as possible after completing your invention, in case someone else is on a similar track. Even if you can prove that you were the first to conceive of the invention, you lose the race if a competing inventor files before you do.

On the other hand, filing too soon, while you're still developing your invention, may mean omitting essential features from the application. You may then have to reapply, adding to your expenses and risking possible patent disputes.

It's imperative, also, not to advertise, display or publish information on your invention too soon. Public disclosure of your invention before filing will make it impossible to obtain a valid patent. There is an exception in Canada if the disclosure was made by the inventor, or someone who learned of the invention from the inventor, less than one year before filing. Most other countries require filing before use or written disclosure anywhere.


THE FIRST STEPS TOWARDS PATENT PROTECTION

In this Section we will discuss;

The Preliminary Search
Searching At the Patent Office

Searching At A Public Library

Using A Search Specialist

Preparing A Patent Application

Assisting Your Patent Agent
Requesting Examination
Special Order Examination

The Preliminary Search

The first step your agent will likely recommend is a preliminary search of existing patents. This will determine if your door lock, or a similar one, has ever been patented before. If so, there's no point in proceeding further, and knowing this beforehand can save you much time and money. Obtaining the information, however, is not as simple as it may sound. You must compare your invention to others and weigh similarities and differences. That's where you are wise to rely on the expertise of your patent agent.

Preliminary searches are not always successful. That is, sometimes the patent examiner finds prior patents, or literature, that did not turn up in the preliminary search. So don't count on obtaining the patent until it's actually in hand.

 


Searching at the Patent Office

The only way to conduct a patent-ability or infringement search on your own, without a patent agent, is by visiting the Patent Office in person. However, you are strongly advised to engage a patent agent or searching firm for this important work. Patent Office staff can direct you and give you useful information but will not do the search for you.

The Patent Office in Place du Portage, Phase 1, Hull, Quebec, holds over one million Canadian patents. These are classified into more than 350 subject classes and over 35,000 sub-classes. An example of a class is "Optics" with the sub-classes "Holography," "Reflectors," "Retractors," and so on. In addition, there are about five million American patents classified according to a similar system and available for public scrutiny in the same building.

As a first time visitor, you may feel overwhelmed by the prospect of a search through so many patents. However, the Technological Information Services Division of the Patent Office will be pleased to help you decide which classes and subclasses to investigate.

 


Searching at a Public Library

Some public libraries have the subject index, the class schedules and the class listings, giving lists of Canadian patents in specific search fields, on microfiche. You can use this information in conjunction with a publication called the Patent Office Record to conduct a rough preliminary search. Library staff can explain the system.

You'll find some descriptive information on patents issued prior to 1976 in the Patent Office Record. The abstracts of patents issued after 1976 are on microfiche at some libraries. They also may have the cover pages, claims and drawings of post 1976 patents on microfiche. Some libraries have all the class definitions on microfiche.

 


Using a Search Specialist

The searcher offers what might be generally referred to as a state-of-the-art search utilizing access to international computer databases. Inventors are cautioned that it may be necessary, based on advise of the patent agent, to extend this initial search to include manual searches of the patent office.

Computerized patent searching is not an exact science. It is vastly restricted by the information the inventor supplies. In order to complete a search it is vital that information from the inventor be supplied in as much detail as possible. As a minimum you will need to supply the searcher with a full written description of the invention, who invented it, when, how it works, who typical users might be, and the general classification of the retailer who would be the target marketer of the invention.

The vast majority of inventions are improvements on prior applications or processes. Therefore, the inventor should supply a detailed background history of how the invention came into being, how he was exposed to the prior application or process, and any past or present association the inventor has with either the holder of the artwork or the place where the prior artwork was first observed.

Drawings are an aid to preparing searches as well as a source of assistance to the patent agent. Visual comparisons of prior artwork and the subject artwork are a required component in the opinion preparation process. Drawings need not be professionally prepared. However, they should be prepared neatly and in sufficient detail to show all components involved and their interaction with each other.

Prototypes are not required as part of the search process. However, inventors should be cautioned that engineering approval may be required prior to the preparation of an application. When the process involves an improvement to a manufacturing process, then the inventor must supply a detailed description defining each stage of the invented process as clearly and carefully as possible. Particular emphasis should be given to areas of the process that are considered critical. An aid to conducting searches and preparing opinions is a description or list of current or off the shelf equipment is used in the invented process, a history of any prior use of the existing equipment and a discussion as to why the improvement is necessary.

When the process involves a chemical formulation then it is important that the inventor provide not only a break down of the chemical composition but also the generic equivalents. If temperature or pressure are critical then a mean or ambient range of each should be included as part of the description.

Exact prices for the preparation of searches and the patent agents opinion can not be specifically defined. Inventors should be advised that prices are normally in the range of $350 - $500.00.

 


Preparing a Patent Application

A patent application consists of an abstract, a specification and often drawings. The abstract is a brief summary of the contents of the specification. The specification comprises; a clear and complete description of the invention and its usefulness and the claims which define the boundaries of patent protection.

Your specification must be so clear and complete that it will enable anyone with average skill in the technology to make or use the invention. Information you specify as protected by your claims cannot be used freely (copied, manufactured or sold) by others until the patent expires. Information not protected by your claims can be used immediately by anyone.

The challenge is to draft the claims so that your invention is defined broadly enough to provide maximum protection against potential infringers, while at the same time being sufficiently specific to identify your invention and distinguish it from all prior inventions.

 


Assisting Your Patent Agent

You can assist your agent to obtain the strongest possible patent and avoid unnecessary costs by providing him or her with the right information. Carefully prepare a statement covering the following points:

  1. Subject matter of the invention.
  2. A broad description of the invention.
  3. Objectives of the invention, its main practical advantages over existing practices or products.
  4. The "preferred practice," that is, the most appropriate use of your invention, giving details of at least one practical application. (For example, if you invented a new knitting machine, you should specify what items, such as stockings, sweaters, bags, etc., the machine makes best. You should also mention normal variations to be expected, eg. How many stockings in a batch of 10,000 knitted by your machine will be defective.)
  5. Features of the invention that are new and distinguish it from what has come before. State these features regardless of whether they may be patented.
  6. The scope of the invention, the materials, compositions, conditions, etc., used to obtain good results.
  7. Limitations. (Can one obtain satisfactory results throughout the given range of the invention, or are there exceptions?)
  8. Results of laboratory or commercial tests illustrating both preferred practice and the conditions under which one could expect unfavourable or hazardous results.
  9. Lists of relevant patents or technical articles you've already found in any literature search, including full details such as name of inventor, number of patent, country and date of issue, or name of periodical and date. Indicate the similarities and differences of practices or products relevant to your invention.
  10. An indication of any disclosure you have made.
  11. Your name, address and citizenship
  12. All countries in which you would like to file for a patent.

Filing Your Application - Filing a patent application means preparing a formal application together with a written petition asking the Commissioner of Patents to grant you a patent. You must pay the prescribed filing fee and submit the following: A petition, abstract, specification, claims (part of the specification), and drawings. Don't submit models or specimens of the invention unless the Commissioner requests them.

Once accepted for filing, your application is assigned a number and filing date, and you will be informed of these. This is no guarantee of a patent. It simply means your application is pending. The application will be published 18 months after the filing date.

 


Requesting Examination

Your application will not automatically be examined simply because you've filed it. You must formally request examination and attach the examination request fee. This request must be made within seven years of the Canadian filing date, otherwise your application will he regarded as abandoned. If this happens, you may request reinstatement through a petition to the Commissioner of Patents and the payment of a prescribed late fee.

Why would you file an application and not automatically request examination? - Perhaps you need time to assess the feasibility or marketability of your invention. Filing gives you some protection for your invention without having to fully commit yourself to the patent procedures. Your competitors will likely be wary of infringing on your invention after your application is published because you could seek retroactive compensation in the event that you are granted a patent. However, if you do not request examination within the seven year period, anyone will be able to freely make, use or sell the products or processes described in your application.

Once you've requested examination, you'll probably be eager to see results quickly. Remember that the Patent Office receives 35,000 applications a year, and that patent examiners consider cases in the order in which they are received. The examination process may take two to three years.

Filing Prior Art and Protests - Patent applications are made public 18 months after their Canadian filing date, or an earlier foreign filing date if applicable. Anyone else may raise questions about the patent-ability of your invention or one of its claims by filing what is known as "prior art" information that might cause the patent examiner to reject one or more of your claims. The prior art can be patents or published material that has a bearing on the case. An explanation of how the information is pertinent is also required. Anyone may also file a protest against the granting of a patent. Such protests will be made public.

 


Special Order Examination

Perhaps you have special reasons for wanting an early examination of your application. You expect imminent competition or you hope to establish a business once you've received protection for the invention. If your case is exceptional in this way, you may ask for advanced examination by means of a "Special Order" request, accompanied by a fee and an affidavit outlining your reasons for the request.

Note, however, that patents cannot be allowed earlier than 20 months after their priority date. It takes this long to ensure that no one has already filed a similar application in another country. When the earlier application is then filed in Canada, it could defeat the later one.

 


NEXT STEPS - THE PROSECUTION

In this Section we will discuss;

The Examiner's Task
Responding to Rejection

Summary of Steps to Obtain A Patent

The Examiner's Task

Determine whether it's in the proper format. The next step is a study of the claims and a search among prior patents and other technical literature to find what is most closely related to the features covered in your claims. The examiner will reject what is old, obvious or improper in your claims through a report to you or your agent.

Patent Office Letter of Rejection - The examiner's search often results in the rejection of some claims. This is the result of patent agents drafting broad claims in an attempt to obtain the fullest possible protection. The examiner may discover previous patents or publications which show every feature of one or more claims in your application. Or the examiner may judge some claims to be obvious to a person having ordinary skill in the field. The examiner's rejection will be in a report or letter called a "Patent Office Action." The Action may reject your whole application or only some claims, or it may demand other changes in your application.

 


Responding to Rejection

If the examiner rejects some of your claims, don't despair. You may respond to the objections as long as you do so within the period specified in the Patent Office Action. Your patent agent must send the response, called the "amendment letter," to the Commissioner of Patents.

The response may ask the Commissioner to amend your application by changing or canceling some claims, or adding new claims. You must meet or overcome each objection raised by the examiner.

Helping Your Agent With Amendments - Your agent will carefully study the Patent Office Action to help you decide whether to abandon your application now, thus avoiding further expense. If you decide to continue you may be able to help prepare the amendment letter. You are in the best position to know the practical details of your invention, and can point out its novel features and advantages as compared with others cited in the Patent Office Action. If you want to make changes to your invention, inform your agent promptly. He or she may recommend filing a new application, in accordance with Patent Office rules, to obtain the full protection you need.

Reconsideration by the Examiner - On receiving your response, the examiner will study it and prepare a second Office Action. This may be a "notice of allowance" telling you that you will be granted a patent. Or it may be a call for further amendments. This exchange of Office Actions and responses may be repeated until the examiner allows your application or states that the Action is final.

Appealing - If the examiner makes a final rejection of your application, you still have the right to appeal to the Commissioner of Patents by requesting that the Commissioner review the examiner's rejection. The review is conducted by the Patent Appeal Board, a special committee of senior Patent Office officials. If you wish, you can appear before this board. If the Commissioner rejects your appeal and refuses to grant a patent, you may take your case to the Federal Court of' Canada, and from there to the Supreme Court of Canada,

Re-examination of a Granted Patent - You've been granted a patent! Wonderful! But you still may have hurdles to overcome. After issue, the Commissioner of Patents or a third party may ask that one or more claims of your patents be reexamined. This can happen at any time during the term of your patent. The request must be based on "prior art" documents, i.e., written descriptions of the invention that are available to the public. The Commissioner of Patents may appoint a reexamination board which will issue a certificate canceling, confirming or amending your patent claims as appropriate. You may appeal decisions that cancel or amend claims to the Federal Court of Canada, you cannot, however, appeal the Commissioner's refusal to set up a reexamination board.

Reissue and Disclaimer - If you own a patent that inadvertently contains omissions or mistakes, you may apply to have it reissued within four years of its issue to broaden or amend its claims, or you may apply for a disclaimer any time after issue to narrow the scope of some or all of the claims of your patent.

Filing a Second Application - You may, within a year, file a second application on your invention and receive the same filling date as before. This allows you to make some minor modifications to your application while retaining the early date, provided you did not use the first application as a basis for filing abroad under the Paris Convention Treaty. Your first application must not have been refused, withdrawn, abandoned or made public.

 


Summary of Steps to Obtain a Patent in Canada

  1. Find a patent agent.
  2. Do a preliminary search. (If there's an existing patent, consider ending the process now.)
  3. Help your agent prepare a patent application.
  4. File your application.
  5. Request examination.
  6. Examiner does search for prior patents and studies claims.
  7. Examiner either approves or rejects application.
  8. Respond to examiner's objections and requirements.
  9. Examiner reconsiders and either approves or calls for further amendments.
  10. If final decision is rejection, you may appeal.
.

Applying for a Patent Outside Canada - Obtaining a Canadian patent does not protect your invention in another country. If you wish such protection, you will have to apply for foreign patents. Suppose, for example, you've invented a mountain climbing snowmobile and hope to corner the market in countries where the machine may be in demand. You'll probably want a patent not only in Canada, but also in the United States, Austria, Germany, and so on, where ever a mountain climbing snowmobile could be used. You might also want a patent in Japan, where many snowmobiles are manufactured. Otherwise, someone in one of those countries might copy your invention and market it in competition with you.

You may apply for a foreign patent either within Canada, via the Canadian Patent Office under the Patent Cooperation Treaty (PCT), or directly to the patent office of the foreign country concerned. But no matter how you apply, you will have to abide by the patent laws of that country. Bear in mind that these laws may differ from Canadian laws. In some countries, for example, you lose the right to a patent if your invention is disclosed before the filing date. (Remember, in Canada and in the United States there is an exception. This is not the case in most other countries.)

Many countries require that your patented invention be manufactured or otherwise worked in that Country within a certain period, usually three years. In some places you may have to allow some other company or individual to manufacture your invention. (This is called granting a compulsory license.)

Convention Priority - Many countries, like Canada, belong to the Paris Convention for the Protection of Industrial Property, a treaty that allows you to invoke what is called "convention priority." This means that your filing date in one member country will be recognized by all the others provided you file in those countries within a year of first filing. For example, if you filed in Canada on January 1, 1990, you could file up to one year later in most countries (January 1, 1991) and still be accorded the same rights as if you had filed there in 1990. The United States is an exception and gives only limited convention rights. It is, therefore, essential to file promptly in the United States.

Under the Paris Convention, you can file an application abroad, and then in Canada. The Patent Office will recognize the earlier filing date as your convention date if you claim convention priority" within six months of the Canadian filing date. The Canadian filing date must be within 12 months of the convention date. However, your application will be published 18 months after your convention date, not your filing date in Canada.

Note!! That being granted a patent in one country may bar you from obtaining one in another if you delay too long in filing for the second patent. That is, if your invention is patented and therefore public in Sweden, it will not he considered "new" in Canada, and vice versa. You must file your various applications all within one year in order to receive the benefits of "convention priority." For addresses of foreign patent offices write to Canada's Commissioner of patents. The Commissioner's staff will supply you with any addresses that are available.

The Patent Cooperation Treaty - Application for a foreign patent within Canada is made possible through a treaty called the Patent Co-operation Treaty (PCT), administered by the World Intellectual Property Organization (WIPO) in Geneva. It provides standardized international filing procedure, which is share by our principal trading partners, including the United States, Japan, and most of the European Community.

Under the PCT, you may file for a patent in as many as 43 member countries through a single application filed in Canada. This procedure is simpler than filing separate applications and may be less expensive or enable you to defer costs. For example, instead of filing in the language of each country and paying, within a year of first filing, all translation, filing and agent's fees, you can file in one language and have up to 18 or 30 months to pay some of these fees. This gives you more time to raise capital, conduct market studies, etc.

When you file under the PCT you will get a "prior art" search which checks your application against other applications and patents, and a preliminary examination with an opinion on the patentability of your invention. This is no guarantee of a patent. Local patent offices in the countries to which you apply reserve the right to conduct their own examinations, but they often accept the preliminary examination report. This means you will receive a fairly reliable indication of whether it's worthwhile to seek multiple patents in foreign countries before fees are due.

Your application for foreign patents filed under the PCT through the Canadian Patent Office must be in English or French. You may also be required to provide for translation into the languages of the designated countries. Eighteen months after filing, your application will be made available to the public. Your application, made in Canada under the PCT, automatically qualifies for a normal national filing for a Canadian patent.

 


WHAT PROTECTION MEANS

In this Section we will discuss;

Patent Infringement
Protection Before Grant

Trade Secrets

Patent Marking and "Patent Pending"

Types of Fees

Fee Schedule

Patent Infringement

Patent infringement would occur if someone made, used or sold your patented door lock without your permission in a country that has granted you a patent, during the term of the patent.

If you believe your patent is infringed, you may sue for damages in the appropriate court. The defendant may argue that infringement did not occur, or may attack the validity of your patent. The court will determine who is right, basing its decision largely on the language of the claims. If what the defendant is doing is not within the wording of any of the claims of your patent, or if the patent is declared to be invalid for any reason, there is no infringement.

 


Protection Before Grant

When you obtain a patent in Canada, you will be able to sue infringers for all damages sustained after the grant of your patent. Also after grant, you may sue for reasonable compensation for infringements that occurred in Canada from the date your application was made available for public inspection, 18 months after filings, to the date of grant.

 


Trade Secrets

You may be tempted to protect your creation by simply keeping its information secret and selling it to a willing buyer. The information is then known as a trade secret. You will run into problem, however, if another person independently invents or discovers the subject matter of the trade secret. There is nothing to prevent that person from using it, applying for a patent or publishing the information.

 


Patent Marking and "Patent Pending"

The Patent Act does not require that patents be marked as "Patented". However, marking an article as patented when it isn't is against the law. You may wish to mark your invention "Patent Applied For" or "Patent Pending" after you have filed your application. These phrases have no legal effect but may serve as warnings to others that you'll be able to enforce the exclusive right to manufacture the invention once a patent is granted.

 


Types of Fees

There are three kinds of fees you must pay to obtain a patent: filing fees, examination fees and grant of patent fees. Yearly maintenance fees are required to maintain an application or a patent in force.

Maintenance fees encourage applicants and patent holders to re-evaluate the economic value of their applications and patents on a yearly basis. Owners of valuable patents who are benefitting from the patent system must pay these fees or their patent rights will expire before the maximum 20 years. On the other hand, owners of inactive patents may choose not to pay maintenance fees, thus letting the patents lapse and enabling others to use freely at an earlier date the technology described in those patents.

Maintenance fees apply to applications filed after October 1, 1989, and to all patents granted after that date. For applications, you must pay these fees annually, starting before the second anniversary of the your filing date in Canada. To maintain a patent granted after October 1, 1989, you must pay annual maintenance fees, starting before the second anniversary of the issue date. If you don't pay these fees, your application will become abandoned or your patent will lapse.

 


Fee Schedule

The following is a partial list of some fees relative to applications for patent (effective October 1, 1989). For further information please consult Supply and Services Canada.
Document Small Entity By Other
On filing an application $ 150.00 $ 300.00
On Requesting Examination $ 200.00 $ 400.00
Grant of Patent $ 150.00 $ 300.00

Plus, for each page of specifications and drawings in excess of 100 pages $ 4.00

4. On asking for a special order under Section 39 of the Patent Rules $100.00

5. On completing an application not completed on its filing date $200.00

6. For publication in the Canadian Patent Office Record of a notice indicating that the applicant wishes to make his patent available for license or sale $ 20.00

7. Fees for maintaining an application for a patent in effect:
Maintenance Small Entity By Other
Year 1 .00/yr 0.00/yr
Year 2 to 4 $ 50.00/yr $ 100.00/yr
Year 5 to 9 $ 75.00/yr $ 150.00/yr
Year 10 to 14 $ 100.00/yr $ 200.00/yr
Year 15 to 18 $ 200.00/yr $ 400.00/yr

"Small Entity", means an "independent inventor" or a "small business concern". "Small business concern", in relation to an invention, means a person who is not an individual and whose gross annual revenue is not more than two million dollars."

Marketing Your Invention - Now that you've taken steps to protect your brainchild, you'll want to decide the best way to market it and turn a profit. You have a number of options including going into business yourself, licensing the invention or selling your patent. Setting up your own business allows you to retain full control of your invention, but means you assume all the risks.

With a license, you grant one or more companies or individuals the right to manufacture and sell your invention in exchange for royalties. The license can apply nationally or to only a specific geographic region. However, if you have not obtained protection in a certain country, your invention can be used freely by anyone there, even if you're protected elsewhere.

By selling your patent, you give up all rights as inventor, but you could gain an immediate lump sum of money without having to worry about whether the product is a commercial success.

It is important to keep your invention secret until your first patent application is filed, in order to preserve your rights to file later in most foreign countries.

Help With Marketing - The Canadian Patent Office cannot help you with marketing, but you can receive assistance from other federal or provincial agencies.

Names of Canadian manufacturers who might be interested in a new invention are available from a number of sources, including the Canadian Trade Index, issued by the Canadian Manufacturers' Association. Other sources of names are Frazer's Canadian Trade Directory and The Thomas Register of American Manufacturers. These publications are usually available in public libraries.

If you have a patent in a foreign country and wish to license there, the Technology Liaison Directorate of Industry and Science Canada may be able to help you. Address your enquiries to: Technology Liaison Directorate, Industry and Science Canada, 235 Queen Street, Ottawa, Ontario K1A 0H5.

The Patent Office has no control over private organizations that promote inventions, and cannot advise you about them. Seek guidance from the Better Business Bureau of the city in which the organization is located, from your registered patent agent, or from the provincial department responsible for industry or consumer affairs. You are urged to investigate before your invest.

If you wish to make your patent available for sale or licensing, you can publicize your intentions trough the Patent Office record. This is a good way of reaching potential investors, since many business people, researchers and others consult this publication to keep in touch with new technology.

You may place a sale or license notice in the Patent Office Record free of charge, if you make your request when you pay your fee on the grant of your patent. At any other time, you must pay a fee for this notice.

Compulsory licenses - You don't always have a choice about whether to grant a license on your invention. In some cases, the Commissioner of Patents can order that you grant a "compulsory" license that is, the right for one or more companies to import or produce your patented invention subject to payment of royalties.

Medicine and Food - Compulsory licenses may be granted, under certain circumstances, to Canadian firms for manufacturing new foods or pharmaceutical products.

Abuse of Patent Rights - Compulsory licenses may also be granted to remedy what is called "abuse of patent rights." Such abuse occurs if you, the inventor, fail within a period of three years after grant, to take steps to make your invention available on a commercial scale in Canada without good reason. (You may be allowed additional time if you need it.) It's considered an abuse because you are hindering trade and industry. Abuse situations include:

  • Hindering manufacture of the invention in Canada by importing the product from elsewhere;
  • Not meeting demand in Canada;
  • Hindering trade or industry in Canada by refusing to grant a license (if such a license is in the public interest), or by attaching unreasonable conditions to such a license;
  • Using a process patent to unfairly prejudice production of a non-patented product, or allowing the patent on such a product to unfairly prejudice its manufacture, use or sale.

If someone applies for a compulsory license because they believe that an abuse situation exists, you may be required to prove that you are not abusing your patent. In making a decision about such a situation, the Commissioner tries to ensure the widest possible use of inventions in Canada, maximum advantage to the patentee, and equality among licensees. You may appeal compulsory license decisions to the Federal Court of Canada.

Corresponding with the Patent Office - Business with the Patent Office is normally done in writing. Address all correspondence to Commissioner of Patents Industry and Science Canada

50 Victoria Street, Place du Portage, Phase 1, Hull, Quebec K1A 0C9. General Enquiries telephone; (819) 997-1936

If you are enquiring about the status of your pending application, give its serial number, your name and the title of the invention. If you've hired a patent agent, conduct all correspondence through that agent. Arrange any personal interviews with patent examiners by appointment. This gives them time to review your application before seeing you.

Your client may order published patents from the Patent Office or from Micromedia Ltd. Order Canadian patents after Patent No. 445 930 and patents from other countries from: Micromedia Ltd., 165 HoteldeVille, Hull, Quebec J8X 3X2.

Copies of Canadian patents prior to Patent No. 445 930 are available from the Patent Office. If you are ordering patents cited in an examiner's report, state the number of the parent, country and any other identifying information in your request.

The Office will respond to all general enquiries. The Office cannot, however, advise you whether to file an application; tell you whether your invention meets patent-ability criteria prior to your filing an application; tell you whether or to whom a patent for any alleged invention has been granted; advise you as to possible infringement of a patent; act in any way as an interpreter of patent law, or as a counselor, other than in matters directly related to processing your application.

General Enquiries - The Patent Office General Enquiries Section supplies information on a variety of subjects such as: procedures for filing patent applications and for registering copyright, industrial designs and integrated circuit topographies; descriptions and locations of reference materials available across Canada for research on patents, trademarks and industrial designs.

The Technological Information Services Division provides specific information on: methods of searching Canadian and American patents or patents from other countries; locating patents on a given subject using the office's subject matter index to identify the general category and the specific section under which desired technology might be classified (class and subclass); descriptions of the subject matter in a given class or subclass; classes and subclasses in the American or International Patent Classification (IPC) systems that correspond to Canadian classes and subclasses; numerical listings of all patents that have been issued in a given class or subclass (class listings).


FORMAT OF THE APPLICATION

In this Section we will discuss.

Sample of Abstract
Specification

A patent document is simply the final approved application. The form of the application is prescribed by Form 24 of the Patent Rules, which is reproduced below. This should give you an idea of what your abstract, specification and drawings should look like.

 


Sample of Abstract

In a tool for driving posts, it is known to have a guide depending from the hammer to freely embrace the post and slide longitudinally on it. In this invention, handles are secured to the guide such that they extend lengthwise along the outside of it. The tool with the handles may have a lighter hammer and thus may be manually operated, since the handles enable the operator to use his or her own strength to bring the hammer down on the post and hold it against rebound. The guide may have filling pieces secured to the inside to adapt its cross section to the cross section of the post being driven.

 


Specification

The specification shall begin immediately following the abstract or at the top of a new page and shall consist of unnumbered paragraphs in which the following matters shall be dealt with in approximately the following order

  1. The general character of the class of article or the kind of process to which the invention (i.e., the inventive idea) relates.
    Sample - This invention relates to a manual operable tool for driving posts into the ground.

     

  2. The nature in general terms of the articles or processes previously known or used which are intended to be improved or replaced by resort to the invention and of the difficulties and inconveniences which they involve.
    Sample - It is common in devices for driving piles and posts to pull up a weight or hammer, eg by a cable and overhead pulley arrangement, and drop it into the end of the pile or post. It is, of course, necessary that the hammer strike the pile or post squarely, and it has been proposed to provide the hammer with a depending guide which freely embraces and may slide up and down on the post to be driven.

    Tools of this type are, however, inefficient because the rebound of the hammer results in a loss of energy and a tendency to split the end of the post. They are, moreover, unsatisfactory for manual operation, because the hammer must be heavy to be effective, and the power of the operator is used only in raising the heavy hammer.

     

  3. The inventive idea which the new article or process embodies, and the way in which resort to it overcomes the difficulties and inconveniences of previous practices or proposals.
    Sample - "I have found that these disadvantages may be overcome by providing a number of handles secured to the guide and extending lengthwise along the outside of it. Such handles permit the use of a lighter hammer and the elimination of the overhead arrangement, secure a greater effect for the same amount of energy, and reduce splitting of the post, since the power of the operator of the device is used not only to raise the hammer but also to bring it down on the post or hold it against rebound.

     

  4. A full description of the best way of using or putting into operation the inventive idea. If there are drawings, the description should be preceded by a list of these drawings and should be related to them by the use of the numerals which appear upon them. The form of the list and the description is illustrated by the following:

    "In drawings which illustrate embodiments of the invention, Figure I is side view Figure 2 is a top view of this embodiment, Figure 3 is a section of the line.

If desired, other ways in which the inventive idea may he used or put into operation. There should then follow an introduction to the claims in these words appearing at the top of a new page: The embodiments of the invention in which an exclusive property or privilege is claimed are defined as follows:

The claims should begin on the same page immediately following this introduction. The following examples illustrate the general form which the claims should take:

A. In the case of an apparatus

  1. A manually operable tool for driving posts into the ground, comprising a hammer, a depending guide adapted freely to embrace, and slide up and down on the post to be driven, and handles extending lengthwise outside of the guide and rigidly secured thereto.
  2. A tool as defined in claim 1, in which the guide is a cylinder closed at the top by the hammer.
  3. A tool as defined in claim 1 or claim 2, in which the article has filling pieces secured to it in order to adapt its internal cross section to the cross section of the post to be driven into the ground.
.

 

B. In the case of a process

  1. A process for cleaning the surface of a metal, which comprises converting contaminating matter by chemical attack to a residual film which is readily removable by anodic treatment, and removing the formed film by connecting the metal as an anode in an electrolytic system.
  2. A process as defined in claim 1, in which the metal to be cleaned is iron or steel and the chemical attack consists of treatment of the metal surface with a strongly oxidizing acid.
  3. A process as claimed in claim 2, in which the residual film is removed in an electrolyte comprising one or more acids or salts thereof

C. In the case of an article

  1. An insulated electric conductor comprising a metal sheath, at least one conducting core and, between the core and the sheath, highly compacted mineral insulation constituted by a mixture of two or more pulverulent mineral insulating materials at least one of which will, on exposure to the atmosphere cause the formation, over the exposed area, of a skin or layer which is substantially impermeable to moisture.
  2. An insulated electric conductor as defined in claim 1, in which the insulating materials are calcium oxide and magnesia.
  3. An insulated electric conductor as claimed in claim 2, in which the proportion of calcium oxide in the mixture is between 25 percent and 40 percent.
  4. An insulated electric conductor as defined in claim 1, 2 or 3, in which the insulation resistance is not less than 250,000 ohms for an insulation thickness of 1.5 millimetres.

Drawings - Your application must include a drawing whenever the invention can be shown by one. This would include almost all inventions except chemical compositions or processes. But even these can sometimes be illustrated by a drawing.

Your drawing must show every feature of the invention defined by the claims. There are detailed, specific standards for such things as page size and quality of paper, so that issued patents are uniform in style and easy to read and understand. Drawings must meet the following requirements:

  • Every sheet shall be 20 cm wide and 33 cm long and shall have a clear margin of at least 2.5 cm on all sides.
  • Every drawing shall be prepared with clear, permanent black lines, and India or carbon ink of good quality shall be used for pen drawings.
  • All views on the same sheet shall stand in the same direction and, if possible, stand so that a shorter side of the sheet is the bottom; if a view longer than the width of a sheet is necessary it may stand so that the right hand longer side of the sheet becomes the bottom, and if a view longer than the length of a sheet is necessary it may be divided between two or more sheets.
  • All views shall be on a sufficiently large scale to be easily read and shall be separated by sufficient spaces to keep them distinct, but shall not be on a larger scale or separated by greater spaces than is necessary for such purposes; there shall be no more views than are necessary to illustrate the invention adequately.
  • Section lines, lines for effect and shading lines shall be as few as possible and shall not be closely drawn; sections and shadings shall not be represented by solid black or washes.
  • Reference characters shall be clear and distinct and not less than 3 mm in height; the same character shall be used for the same part in different views and shall not be used to designate different parts; a character shall be connected by a fine line to the part of the view that it designates; a reference character should not be placed on a shaded surface, but if it is so placed a blank space shall be left in the shading where it appears.
  • The views shall be numbered consecutively throughout without regard to the number of sheets.
  • Each sheet of drawings shall be on white bond paper and nothing shall appear therein except the drawings and the reference characters and legends pertaining to the drawings.

If your drawings do not fulfill all the formal requirements, you may be asked to submit them again later together with an additional fee.

 


The Role of Accountants & Lawyers

 


Pay Attention!! Attention Pays - Every time you visit your clients place of business take the time to stop and look around. Ask yourself.

  • What is my client doing for a living?
  • What products does he make?
  • Does that machine look like it has had a modification made to suite this particular clients needs?

    Do not be afraid to ask questions such as.

  • Have you ever modified any equipment to improve the process of making the goods?

    In essence you are being asked to bring to the clients attention that his unique method of carrying on business may be an intangible asset that has value that should be protected.

Once the accountant learns that the client has either (a) completed and invention or improvement or (b) has an idea on an improvement, you should encourage him to conduct a patent search as a method of determining if someone else has already thought of the same idea. Why re-invent the wheel.

Diary of Events - If the client advises you he has created something that should be protected then ask him to sit down and prepare a diary of how the improvement came about. this diary should include dates, time places, each step in the process and the names of those employees who helped him. If the client prepared any drawings then these should also be included. In addition the client should be reminded that a diary is a source of evidence of his ownership and his invention. Regardless of the people he solicits to help him he has a claim. Therefore, he should not be afraid to include their names as part of his comments.

The diary is the clients story. It contains the steps taken to develop the new idea. It also includes the mistakes that were made and the tests that failed as well as why they failed. If the diary reads as a narrative then there was a positive way of recording the events. It is not uncommon for such diaries to read "I was at john's watching the hockey game and enjoying a beer when I realized that if we changed this or that then". John and I went to the shop and tested this idea. It worked. It is also common for such diaries to contain doodles, sketches etc.

Double Registered Mail - Once the diary is completed and before the inventor tells anyone of his improvement, he should mail two copies of the diary, in separate envelopes, by double registered mail to himself. Once the mail arrives do not open it. Place the envelopes in a safe place.

Encourage Searches - Now would be a very good time to conduct a second search to determine if invention had secured a patent in the intervening time period.

Review Evaluation Questionnaire - The questionnaire contained with this package will greatly assist you in determining what additional questions to ask your clients. When in doubt call Arvic. We will help.

 

  

Arvic Search Services Inc.
Suite 260, 2323 - 32 Ave. N.E. Calgary, Alberta Canada T2E 6Z3
Phone: 403-234-0844 Toll Free: 1-888-227-8421 Fax: 403-294-0944 or Email Us