A patent is a legally enforceable property right, which enables its owner to exclude others from making, selling or using a particular invention.
Patent protection lasts for the term of the patent, provided maintenance fees are paid as discussed below. In Canada, the United States and most other countries, the term ends 20 years from the patent application filing date.
A separate patent must be obtained in each country of interest. A Canadian patent protects an invention only in Canada. To protect the same invention in the United States, a separate United States patent is required.
There is no such thing as a "world-wide patent". Although international treaties can simplify the foreign patenting process in some cases, as discussed below.
Only "inventions" are patentable. An invention must be new, useful and involve an "inventive step" compared to the closest "prior art". A new and unobvious product, process, apparatus or composition of matter will generally be patentable; as will a new and unobvious improvement to an existing product, process, apparatus or composition of matter.
What
cannot be patented?
While most things are potentially patentable, there are exclusions. Problematic areas include medical procedures; marketing or business plans; teaching methods; cosmetic procedures such as hair dressing and pedicures; and artistic expressions such as flower arranging, painting, and playing musical instruments although the materials and instruments used may be patentable).
Special considerations may also apply in the case of some inventions such as computer software, games, and living matter.
In Canada, a patent application must be filed no later than one year after the earliest public disclosure of the invention. Public disclosure can include distributing samples, selling or exhibiting an invention (or something into which the invention is incorporated), publishing details of the invention in advertising or other printed material, and public use or testing of the invention. Disclosure to just one person can constitute public disclosure in some circumstances.
The United States has a similar one-year grace period. Europe and many other jurisdictions, however, have no grace period whatsoever. Any public disclosure of the invention, before filing a patent application, can result in loss of patent protection in such countries.
Can a non-disclosure
agreement preserve rights?
Yes. To preserve potential patent rights, an invention should not be disclosed prior to the filing of a patent application, to anyone who has not signed a properly drafted non-disclosure agreement.
The right to apply for a patent belongs initially to the inventor(s), but may be tranferred to someone else. If an inventor sells the rights to an invention to another party, then that party may apply for the patent. If an invention is made during the course of an inventor's employment, the employer may automatically acquire the right to apply for the patent - although this is not always the case. If an inventor dies or is incapacitated, the right to apply may vest in the inventor's executor, administrator or other representative.
In most countries, including the United States, the inventor's signature on the patent application is usually required, even if someone else has the right to make an application.
Does
a patent guarantee the right to exploit one's own invention?
A patent does not necessarily entitle the patent owner to make, use or sell the patented invention - it only allows the patent owner to prevent others from doing so. Making, using or selling one's own invention may infringe another patent. For example, if an invention is an improvement to a prior invention, making the improved product may infringe a patent for the original product. Infringement searches can be conducted to investigate this possibility.
What if there is more than one application?
If two or more parties apply to patent, the same invention most patent offices will award only one patent. In Canada and most other countries, that patent will be awarded to whichever party files the first patent application, regardless of who made the invention first. It is therefore important to apply promptly.
Can existing patents be searched?
Yes, time permitting, it is always wise to conduct a search before applying for a patent. If the invention has been disclosed in a previous patent or publication anywhere in the world, then the invention may not be patentable.
Worldwide searches are impractical, so a limited search is usually made in only one country. Normally, the search is conducted in the U.S. Patent Office, since it has a large volume of well-classified prior art.
Computer databases can also be searched quickly and relatively inexpensively. Database searches are most useful in searching for sophisticated inventions which can be described by precise, well-known terms of art. They are much less useful in searching mechanical "gadget-type" inventions.
No search will guarantee the patentability of an invention, but they will provide a reasonable assessment of the prospects of obtaining worthwhile patent protection. Search results are also useful in preparing a patent application.
Patentability search costs range from about C$500 for a simple online database search to C$1,500 or more for a typical patent office search.
What information is needed to conduct a search?
A search requires a description of the invention, and drawings or photographs which show how it is made, operated and used. It is helpful to have details of any known prior art, and a summary of its shortcomings and an explanation of how they are overcome by the invention. A list of other advantages of the invention and details of possible variants or modifications that could be made without departing from the general concept, should also be included.
What information is needed for a patent application?
In general terms, a patent application must provide a complete description of the invention (including drawings, where appropriate), which is sufficient to enable a skilled person to construct a working embodiment of the best mode of the invention known to the inventor.
See forms and filing information for further details.
What scope of protection will a patent provide?
A patent application will include "claims" that define the scope of protection requested.
Several claims are typically included to protect different features or combinations of features, but claims must be carefully worded.
Broad claim language is preferable so that competitors cannot avoid infringement simply by making minor changes to the invention. But overly broad wording may invalidate a claim. For example, a claim needs to be worded to cover only the invention and not some prior art.
What does the application and filing cost?
The typical cost for preparing and filing an application in Canada or in the U.S., for a simple invention, begins at about C$4,000. Costs are higher for more complex inventions.
What is the process after filing?
Most patent offices employ technically trained examiners who scrutinize patent applications for novelty, inventiveness and compliance with formal requirements. Particular attention is given to the wording of the claims.
More often than not, examiners raise objections which are usually answered by argument, amendment or both. Examiners' objections are sometimes fatal to a patent application, but in most countries various appeal procedures are available.
If the examiner is ultimately satisfied with its merits of the application, an application is allowed and a patent grant fee must be paid. Grant of the patent usually follows within a few two to three months after the payment of the fee.
In most countries, the process of "prosecuting" an application through to the grant of a patent takes two or more years from the filing date.
Prosecution costs vary widely, but are typically in the range of C$800-$5,000 per country.
What does it cost to maintain a patent?
Most countries charge "maintenance fees" which must be paid to the patent office periodically throughout both the patent application process and the term of the granted patent. Maintenance fees vary widely, but range from about C$150 per year in the early stages to about C$600 per year or more in later stages.
What about international patent claims?
Most countries have signed the Paris Convention, which allows a patent applicant to claim priority over a patent application filed within the previous year.
As described above, to obtain a valid patent in most countries it is essential to file a patent application before the invention is publicly disclosed - but the Paris Convention provides an important exception. As a result, in most countries, it is sufficient to file within one year of the date on which the earliest application was filed, provided that the earliest appplication was filed before any public disclosure of the invention anywhere in the world.
A few countries - including Afghanistan, Andorra, Ethiopia and Saudi Arabia - are not members of the Paris Convention, and special consideration must be given to filing applications in such countries to avoid loss of patent rights there.
What is the Patent
Cooperation Treaty?
The PCT provides a simplified procedure enabling Canadian citizens or residents to obtain patents in many countries. A single English language PCT application may be filed and assessed as to patentability on a preliminary basis, before the applicant has to decide whether to incur the additional cost of proceeding with patent applications in foreign countries of interest. Please see the Patent Cooperation Treaty FAQs for further information.
How are European
Patents obtained?
A single English-language PCT application can be filed at the European Patent Office (EPO) designating any or all of Austria, Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, Netherlands, Norway, Poland, Portugal, Romania, Slovenia, Slovakia, Spain, Sweden, Switzerland, Turkey and the United Kingdom. The EPO examines the application and, if the applicant is successful, grants a European patent. The patent rights must then be "perfected" in the individual European countries of interest through procedures that include filing translations and paying national fees.
How
is trade secret protection obtained?
Unlike patent protection, no formal government recognition is required to obtain trade secret protection. Essentially, the law enables a trade secret owner to prevent others from exploiting the secret, if they have obtained knowledge of it through fraud, theft or breach of some obligation of confidence.
Trade secret protection is, in many ways, opposite to patent protection. For example, to obtain a valid patent, the invention must be fully disclosed in a patent application, which becomes public as part of the patent-grant process. However, trade secret protection exists only if the information in question remains secret.
Trade secret protection is inappropriate if routine examination of any apparatus, process or other subject matter embodying the trade secret will reveal the what the secret is. And if a trade secret owner inadvertently allows the secret to slip out, then trade secret protection is lost.