Patents 

Patents are the protection measure which applies to a new process or product, with some novel utility or a new or improved way of doing something previously known in the field.  A patent provides the inventor or inventors of some particular product or process with a limited monopoly to the exploitation of their invention.  This monopoly provides the inventor with the exclusive right to manufacture, use or otherwise exploit or sell the invention in the jurisdiction in which their patent is granted for a certain number of years, in exchange for making the knowledge of their invention and its operation available to the public.  Patents and patent applications which are disclosed by their inventors in turn provide a great deal of useful technical information to those interested in searching patents for such information.  One source of such searching information are patent databases operated by various patent offices around the world – these databases can be accessed through our firm web site at www.furman-kallio.com.

What is prior art?

Printed information in books, articles, brochures and patent publications, as well as general knowledge, is commonly referred to as "prior art", if it was made public before the date of filing of the patent application.  Such prior art can render a subsequently filed patent application unpatentable, either on the basis of lack of novelty, or obviousness. 

What is patentable?

The first step in the patent process  is to ascertain whether or not your idea is entitled to protection under the Patent Act.  Generally speaking, new products, articles of manufacture, processes or methods, chemicals and compositions of matter (and improvements to the same) are considered to be patentable subject matter.  Examples of unpatentable subject matter include methods of managing or organizing a business, new modes of teaching, scientific principles and abstract theories.

In order for a new idea to be patentable it must be patentable subject matter, have utility, be novel, and be unobvious.  There are very few inventions that are unpatentable due to subject matter.  In general a new compound or process is patentable if it produces new and useful results.   Specifically non-patentable items in Canada include higher life forms and methods of medical treatment.  Exclusions to the realm of patentable items and processes vary by country and you should consult a patent professional if you have questions in this regard.  For example, business methods are now explicitly patentable in the United States, while there is some question as to the patentability of business methods in Canada and elsewhere at this time.

Novelty:

Information regarding the fact that the same invention was known or used by others, or described in a printed publication prior to the filing date of the patent application would be considered prior art, destroying the novelty criteria of an application.  In this case patentability can be destroyed if the invention is described in a single publication; the invention at that point is said to be anticipated.  It is important to note that such a single reference must disclose all of the features of the invention.  This basis of disqualification refers to a "dead ringer" showing of the inventive subject matter in a single piece of prior art.

Obviousness:

Patentability can also be destroyed on the basis of obviousness.  In contrast to novelty, obviousness renders an invention unpatentable if the invention can be said to be obvious by combining one or more prior art references, or by combining any number of prior art references along with any other types of publicly available information or the general state of practice in the field.  The question to answer is whether, at the date a patent application is filed, an unimaginative skilled technician, in light of general knowledge and the prior art available to that technician at that date, would be led directly and without difficulty to the invention.

Patentability searches:

An inventor may wish to obtain an assessment of the patentability of their invention prior to incurring the additional drafting and filing expenses discussed herein.  Patents from all countries are relevant to the patentability of an idea in Canada (and elsewhere) and while a search of Canadian and U.S. patents is not exhaustive, it typically does provide a good idea of the state of the prior art as it relates to the proposed invention at a reasonable expense.  In addition this search can locate and provide copies of prior art which is required for the drafting of the patent application.  The searching costs (with analysis) will vary depending on the nature of the idea and the time required to assess the search results.

Firstly as mentioned above it is possible to do a great deal of basic patent searching for free via the internet.  Access to many of the most popular patent searching websites is linked from our site at www.furman-kallio.com.  These databases can be searched by any number of different criteria to locate patents or information of interest in your particular technical area of interest.  You should remember that most database searches, insofar as they depend on key word selection, are limited to that extent and relevant information can be missed if not all of the proper key words are selected for searching.

Your patent lawyer or agent can also conduct a more complete search and give you their opinion on whether your idea is patentable over the prior art already existing in the field of your invention.  The ‘prior art’ consists of publications or other patents in the field of your invention.  The cost of a prior art search depends on the sources consulted and the complexity of your invention.  A patent agent might conduct either an electronic search for patent art of interest, or alternatively might also conduct a physical search at a patent office or information repository of interest. 

There are numerous advantages to doing a comprehensive patentability search before proceeding to draft and file a patent application.  These include the ability to fine-tune your own patent application based on problematic pieces of prior art revealed in the search to avoid Patent Office rejections based on those at a later date.  The total cost of drafting and filing your application might be avoided if the search uncovers a dead ringer for your invention which would negative the possibility of successful patenting of your invention.

Filing a patent application:

A patent application consists of the following elements:

a.  abstract;

b.  background;

c.  detailed description of your invention;

d.  drawings, figures or other demonstrative aids; and

e.  claims.

A patent application in its entirety needs to describe the invention in sufficient detail to be understood by a person with ordinary skill in the technical field to which the invention relates (this fictitious person is nominally referred to as a ‘person skilled in the art’).  The claims define the scope of your patent.  The remainder of the document needs to substantiate the scope and contents of the claims – anything which is claimed but not explained or enabled in the remainder of the patent application is not covered by the claims.  It is the claims of your patent which are interpreted by a court in any infringement action. 

Patent drafting, and specifically claim drafting, requires detailed legal and technical expertise to ensure the broadest and most complete possible coverage for an invention.  Claims which are too broad or are not supported by the remainder of the application are invalid and unenforceable, while claims which are drafted too narrowly might leave significant maneuvering room for someone to work around the claims of the patent in question.  Other than the applicant himself, a registered patent agent is the only person allowed to communicate with the Canadian Intellectual Property Office on behalf of a patent applicant for the purpose of advancing a patent application on their behalf and endeavoring to secure patent protection.

Once a patent application is filed, it will be examined by the Patent Office in each jurisdiction in which it has been filed.  In Canada it is necessary to specifically request the commencement of examination of the application, which can be done at any time up for up to five years after the date of filing of the application.  It is important to recognize that patent applications are not simply approved as filed - at issue is the grant of an important monopoly right which can be legally enforced against others to exclude them from making, using or selling the patented invention.  Applications are therefore subject to careful scrutiny by the Patent Office, who may reject an application on numerous grounds.

Examiners in each Patent Office will review the claims and disclosure to ensure that claim is only made to subject matter to which you are entitled, and that various formalities are met.  Additionally, the Examiner assigned to the case, who will be a person skilled in the technical field of the invention, will conduct a search of patent and non-patent literature to see what if anything similar has been done previously in the field.  It is entirely possible that the Examiner will then object to the contents of the claims or the patent application on the basis that the invention is not sufficiently different from the prior art to be entitled to patent protection.  Exchanges between an applicant/agent and the Patent Office will occur at this stage, the applicant/agent making arguments and effecting changes or amendments as necessary to satisfy the Patent Office.  If the Patent Office should reject some or all of your application, there are usually avenues of appeal available as well.  You should work closely with your lawyer or agent in the drafting and review of your patent application, as only you really know just what the scope of your idea is and what it includes. 

If a patent application is found by the Examiner to be allowable it is necessary to pay final issue fees and complete various other registration formalities, at which point a patent will issue.

Using your patent:

Once a patent is issued, you can endeavor to practice the patent and enforce your monopoly.  The right to practice the subject matter of your patent is not necessarily without impediment.  For example, if a patent is an ‘improvement patent’ which improves upon or relies upon the subject matter of another patent, the holder of the improvement patent must have a license from the holder of the original patent to allow them to practice their improvement without worrying about infringing the original patent.

It is also important to note that obtaining your patent is only the first step in the process.  Enforcing the rights guaranteed by your patent is also your own responsibility.  The government gives you the monopoly right to your invention by granting the patent, but it is the responsibility of the patent holder to police and enforce their own patent rights.  The mere filing of a patent application does not itself confer any legally enforceable rights in the invention under current Canadian and U.S. law.  Enforceable rights against infringements come into existence only when the patent actually issues.  Canadian patent applications will be laid open for public inspection eighteen months after they are filed or when examination is requested, whichever is sooner.  Persons who infringe the claims of a patent application after it is filed will be liable for infringement, although the action for infringement cannot be brought until after the patent actually issues. Issuance may occur a number of years after laying open and the right to recover some damages may therefore be lost due to provincial statutes of limitations.

A patent is enforceable from the date of its issue.  In certain cases it is possible to seek damages for patent infringement back to the date of publication of the patent application.

A patent can be assigned or licensed.  An assignment transfers ownership of the patent to someone else, while a license provides someone with the right to use the patent while the ownership of the patent itself does not change.

Do I need to have a Patent?

You do not need a patent in order to manufacture or sell your invention, however, if you do not obtain patent protection for your invention, nothing will prevent other people or companies from making or manufacturing your invention or using it in whatever manner they might see fit, including selling it on the open market to the same customers which you might otherwise sell it to.  You should be aware of what you wish to achieve by patenting, be it a competitive edge or a permanent record of your contribution to your field of endeavor.  Consultation with a professional can reduce disappointment to a minimum.

When you should file:

In most countries, the first person to file a patent application for a particular idea is the individual entitled to patent protection, versus the first to invent.  So remember, in a competition between two inventors for the patent priority to the same or similar invention, "the earliest bird gets the worm".  Patent applications should be filed promptly and in most cases it is important that an invention be kept confidential until the prospect of filing of patent protection can be fully addressed.  Public disclosure of an invention in advance of patent filing severely restricts the protection available to that invention.  In Canada and the United States there is a one-year grace period following a first public disclosure within which to file a patent application.  In most other countries a prior public disclosure will invalidate any patent available for the invention.

In order to avoid filing problems in other countries where an application has been filed in advance of public disclosure, all other countries should be filed within one year of the original filing date.  This can be done either through an international convention mechanism, or alternatively pursuant to the Patent Cooperation Treaty.  An application filed pursuant to the PCT allows an applicant to secure a filing date and crystallize their patent application rights in multiple countries around the world with one filing.  A patent agent can assist you in the design and implementation of an appropriate international filing strategy.

Where does my patent protect me?

A patent only protects your invention in the country in which it is granted.  For example, if you have a Canadian patent you are protected from others building or using your invention within Canada, as well as outside of Canada and shipping or selling it into Canada.

It is necessary to eventually file your patent application in each country or region in which you wish to be protected.  There are number of different international filing strategies which can be used—a patent professional can assist you in this regard in developing an appropriate international filing strategy to meet your business objectives.

PREFERRED PATTERNS FOR FILING FOREIGN PATENT APPLICATIONS:

Inventors are often interested in obtaining patent protection in several countries.  There are in some cases tactical considerations in favor of filing first into Canada, and then next into the United States and other countries, or vice versa.  For the costs involved and the value of protection obtained, the United States and Canada are the 'best buys'.  Provided that the invention has not been disclosed prior to the filing of the first patent application, the Paris Convention will allow international filings made within most countries within one year to be backdated to the original filing date.  The following options are available to you in considering the filing of corresponding foreign patent applications:

1.       The filing of  separate national application in each country of interest, including any of the individual European countries;

2.       Filing separate national applications for each country outside of Europe, and a single application in the European Patent Office (EPO) designating those of the participating European countries of interest; or

3.       The filing of a Patent Cooperation Treaty (PCT) application designating the countries of interest to you.

Invention promotion firms:

Invention promotion firms should be approached with caution.  It is in most cases preferable for an inventor to make their own efforts to commercialize an invention along with a business partner if a trustworthy business relationship can be established with such a partner.  Alternatively should you choose to deal with an invention promotion firm, you should seek references from other clients of the firm and/or your other professional advisors.

Patent Services:

 The following are some of the services which we can provide:

• patentability searches and opinions as to the patentability of your invention;

• drafting, filing and prosecution of patent applications in countries around the world;

• opinions as to whether or not someone is infringing your patent, or if you are infringing someone else’s patent;

• searches and opinions on the validity of patent documents;

• advice and assistance in the enforcement of your patent, or conversely advice and assistance in the case where you are accused of infringing someone else’s patent;

• assistance in the licensing, assignment or transfer of patent rights, or other patent-related aspects of business transactions.  

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