Index to Chapter Four - Patents
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
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
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
- 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
- Offer copies of Canadian patents prior to Patent No. 445 931 for
sale to the public; and a publish and disseminate patent
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.
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
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
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
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
|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;
Registered Patent Agents
When to Apply for A Patent
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.)
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.
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
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
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
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
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
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
- Subject matter of the invention.
- A broad description of the invention.
- Objectives of the invention, its main practical advantages over
existing practices or products.
- 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.)
- 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.
- The scope of the invention, the materials, compositions,
conditions, etc., used to obtain good results.
- Limitations. (Can one obtain satisfactory results throughout the
given range of the invention, or are there exceptions?)
- Results of laboratory or commercial tests illustrating both
preferred practice and the conditions under which one could expect
unfavourable or hazardous results.
- 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.
- An indication of any disclosure you have made.
- Your name, address and citizenship
- 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
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
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
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
- Find a patent agent.
- Do a preliminary search. (If there's an existing patent, consider
ending the process now.)
- Help your agent prepare a patent application.
- File your application.
- Request examination.
- Examiner does search for prior patents and studies claims.
- Examiner either approves or rejects application.
- Respond to examiner's objections and requirements.
- Examiner reconsiders and either approves or calls for further
- 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;
Protection Before Grant
Patent Marking and "Patent
Types of Fees
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.
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
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
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.
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.
|On filing an application
|On Requesting Examination
|Grant of Patent
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
|Year 2 to 4
|Year 5 to 9
|Year 10 to 14
|Year 15 to 18
"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
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
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
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
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
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
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
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
- 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.
- 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.
- 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
- 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
- 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
- A tool as defined in claim 1, in which the guide is a cylinder
closed at the top by the hammer.
- 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
B. In the case of a process
- 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
- 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.
- A process as claimed in claim 2, in which the residual film is
removed in an electrolyte comprising one or more acids or salts
C. In the case of an article
- 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.
- An insulated electric conductor as defined in claim 1, in which
the insulating materials are calcium oxide and magnesia.
- 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.
- 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
- 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
- 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
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.