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Intellectual Property Protection
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" Where Success Meets Balance "
For 13+ years, our 450+ clients have entrusted us with the care of 1500+ Patents, Industrial Designs and applications for both, in the fields of Engineering, Computer Software, Biotechnology and Pharmaceutical Science.
Our Services
Corporate In-house Disclosure Program Development
Corporate Transaction Support
Litigation Support
Patentability Investigations
Corporate In-house Disclosure Program Development
Corporate Transaction Support
Litigation Support
Patentability Investigations
Patent Application Drafting
Patent Application Prosecution
Patent Portfolio Audit
Patent Portfolio Management
Patent Application Drafting
Patent Application Prosecution
Patent Portfolio Audit
Patent Portfolio Management
What Clients Say
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Curious about the patent process?
Check out these common questions:
A patent entitles its owner a limited monopoly for the invention it claims, in return for the inventor revealing to the world how to carry out the invention. The monopoly is an ‘exclusive’ right to prevent others from making, constructing or using the claimed invention. The monopoly is limited to the country that issues the patent. Patent rights do not, however, give the patent owner immunity from others who believe he infringes their patent rights.
The first step is to file a patent application in the country where you are seeking patent protection. If you are seeking patent protection in three countries, you must file three patent applications. There are, however, several regional schemes, which allow you to pursue applications in a number of countries with one patent application.
- a “disclosure” which sets out the best mode of the invention in sufficient detail to allow a person skilled in the art to carry it out;
- one or more claims which define the invention; and
- one or more figures illustrating the preferred embodiment(s).
A patent application is a complex legal document and needs professional care. The Canadian Patent Office has a record of Patent Agents who are qualified to write patent applications and to represent inventors. A list of Canadian Patent Agents can be accessed at the following link:
Canadian Intellectual Property Office.
The patent application should be written with a close collaboration between the Patent Agent and the inventor(s) to be sure:
- that the invention is adequately disclosed;
- the preferred embodiment and the best mode of the invention is sufficiently described to allow a person skilled in the art to carry it out the invention without “undue experimentation”;
- the range of alternatives to the preferred embodiment are discussed as contemplated by the inventor(s).
The invention must be carefully claimed to provide the proper scope of protection. Inexperienced drafters of patent applications can sometimes overlook important approaches to claiming the invention.
Your application should be filed naming all the co-inventors of the invention as claimed. The co-inventors should include those who actively participated in the evolution of the invention, but not those who merely followed instructions in the building of the prototypes, nor those who merely confirmed what others had contributed.
You should have a bound lab notebook in which you can record each development in the invention as they occur, by noting the date of the development and a description capable of being read by a person skilled in the art. You should include any test data that allows you to make the observation or form the conclusion. You should have each page witnessed by a third party who is capable of understanding what you have written.
A patent application may be filed in paper form by mail, fax or online. Once filed, the application is then given a serial number and a “filing date”. The latter is extremely important.
Generally speaking, most countries require that a patent application be filed before any activity that makes the invention available to the public anywhere in the world, in a way that would enable a person of skill in the art to carry out the invention. (We call these “absolute novelty” countries.) This could include such things as an enabling pitch at a public event, an enabling demonstration at a shopping mall, or for that matter an enabling activity that may actually not be witnessed by a member of the public, but nonetheless available to the public with no obligation of secrecy. A remote use of a test prototype can conceivably be considered an activity that makes the invention available to the public, though efforts to secure the test site, for instance, might arguably disqualify a use of this type as one that is “available to the public”.
Canada provides a one year grace period to the inventor to file a patent application. The grace period is measured from the earliest such activity by the inventor (or someone who derives information from the inventor). Therefore, a Canadian application must be on file within one year of the date of the earliest such activity by the inventor, but before any such activity by third parties.
A similar grace period is available in the United States, which applies to the above described activities, as well as other public or non-public activities in which the invention may be used, but not necessarily in a manner to be accessible by a member of the public, and when the invention is ready for patenting. Further, secret business activities, for example that involve an “offer for sale” or some other commercial exploitation, may also start the one year clock running. Thus, it is advisable to work promptly and to file within one year of the earliest of any such activity, secret or otherwise. Activities more than one year from an effective Canadian or U.S. filing date will be scrutinized and rights may be lost if any of those activities fail to meet the requirements above.
Strictly speaking, “Patent Pending” means that your patent application has been allowed by the Patent Office and a patent will issue. However, patent applicants have used the term once their patent application is “on file”. Inventors often mark their products or literature “Patent Pending” because they believe that it gives notice to the world that there are proprietary rights in the product and its owner is seeking patent rights. This is viewed by some as having certain deterrent value against potential competitors.
- $2000 to file in Canada;
- $3500 to file in the United States; and
- $7500 to file a PCT application.
- No. There are a number of world treaties that entitle you to a one-year grace period from the filing of your first patent application, in which you can decide which other countries to target your patent filing campaign. If you file your first application in Canada today, you can file in the U.S. and most other industrialized countries in the world within one year from today and those applications will be given “priority” to your original filing date (your “priority date”) of your first application in Canada. However, your priority to the original filing date may be of limited value to you if you have engaged in any activities of the type described above (see When Must A Patent Application Be Filed?). (see also How Do I File In Other Countries? below)
The claims must define an invention that:
- falls within the statutory subject matter as defined by the patent laws of the country in question. Generally speaking, most countries require that the invention must be an “art, process, machine, manufacture or a composition of matter”.
- is “novel”;
- is “useful”; and
- is “inventive”.
The Patent Office issues a Notice of Allowance, Issue Fees are paid and the Patent Certificate is issued.
The U.S. Patent Office imposes a “Duty of Disclosure” on its applicants. The duty of disclosure may be discharged by filing the relevant prior art. Failure to comply with the duty of disclosure can result in any patent issuing from your patent application being declared invalid. The duty to cite prior art continues throughout the prosecution of the application and, in order to avoid paying a fee for an untimely-filed Information Disclosure Statement, you should forward the prior art to your Patent Agent, as it becomes known to you. Prior art is considered ‘material’ if it, by itself or in combination with another reference, renders the invention unpatentable, or if it contradicts the statement by the applicant or his agent regarding the patentability of the invention. Prior art should be cited if an Examiner would be likely to consider it important in assessing patentability of the invention. The Canadian Patent Office will, in some cases, require that you supply the prior art that has been cited in other corresponding applications on file, for example in the U.S. Patent Office. No prior art needs to be submitted on a PCT application.
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