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| CANADA PATENT PROTECTION WHAT IS A PATENT Through a patent, the government gives you, the inventor, the right to exclude others from making, using or selling your invention from the day the patent is granted to a maximum of 20 years after the day on which you filed your patent application. You can use your patent to make a profit by selling it, licensing it or using it as an asset to negotiate funding. In exchange, you are expected to provide a full description of the invention so that all Canadians can benefit from this advance in technology and knowledge. The Patent Office will lay open 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." (See Applying for a patent outside Canada.) People may then read about, though not make, use or sell, your invention without your permission. Only after your patent has expired, or lapsed for non-payment of maintenance fee, 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. 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 trade-marks, copyrights, industrial designs and integrated circuit topographies. Like patents, these are rights granted for intellectual creativity and are forms of intellectual property. However:
There are three basic criteria for patentability.
NOVELTY, UTILITY, INGENUITY Novelty To be granted a patent you must be the original inventor of your door lock (or the assignee of the inventor). And it must be the first such door lock in the world. What's more, you cannot obtain a valid patent in Canada if your invention was made public before you filed the application. There is, however, a one-year exception. If you, or someone who learned of the invention from you, discloses it publicly, you can still file in Canada within the year following that disclosure. (This applies to Canadian patents, but not necessarily to foreign ones.) Utility A valid patent cannot be obtained for something that doesn't work, or that has no useful function. If your door lock does not work, it will fail the utility test. Ingenuity To be patentable, your invention must be a development or an improvement that would not have been obvious beforehand 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. Registered patent agents must pass rigorous examinations in patent law and practice before they may represent inventors before the Patent Office. 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. The Patent Office provides a list of registered agents. WHEN TO APPLY FOR A PATENT In Canada, patents are given to the first inventor to file an application. Therefore, it's wise to file as soon as possible after completing your invention, in case someone else is on a similar track. Even if you can prove that you were the first to conceive of the invention, you lose the race if a competing inventor files before you do. On the other hand, filing too soon, while you're still developing your invention, may mean omitting essential features from the application. You may then have to reapply, adding to your expenses and risking possible patent disputes. It's imperative, also, not to advertise, display or publish information on your invention too soon. Public disclosure of your invention before filing will make it impossible to obtain a valid patent. There is an exception in Canada if the disclosure was made by the inventor, or someone who learned of the invention from the inventor, less than one year before filing. Most other countries require filing before use or written disclosure anywhere. Steps Towards Patent Protection The preliminary search 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. Canadian Patent Database online Canadian Patent Database The Patent Search Room, in the Client Service Centre, is open from 8:30 a.m. to 4:30 p.m., Eastern Time, Monday through Friday, except on legal holidays. 1.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:
Your specification must be so clear and complete that it will enable anyone with average skill in the technology to make or use the invention. Information you specify as protected by your claims cannot be used freely (copied, manufactured or sold) by others until the patent expires. Information not protected by your claims can be used immediately by anyone. The challenge is to draft the claims so that your invention is defined broadly enough to provide maximum protection against potential infringers, while at the same time being sufficiently specific to identify your invention and distinguish it from all prior inventions. Appendix A shows an example of a patent application. Carefully prepare a statement covering the following points:
2. Filing your application Filing a patent application means preparing a formal application and asking the Commissioner of Patents to grant you a patent. To receive an official filing date in Canada, you must submit no less than the following: statement that a patent is sought; Bear in mind that a complete patent application further includes the following: formal petition; 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 laid open to public inspection 18 months after the filing date or priority date. You may request to have your application laid open earlier, if you wish. 3. Requesting examination Your application will not automatically be examined simply because you've filed it. You must formally request examination and attach the examination request fee. This request must be made within five years of the Canadian filing date, otherwise your application will be considered as abandoned. If this happens, you may request reinstatement through a letter to the Commissioner of Patents and the payment of the prescribed 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 five-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 some 30,000 requests for examination 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 patentability of your invention or one of its claims by filing what is known as "prior art"—information that might cause the patent examiner to object to one or more of your claims. The prior art can be patents, patent applications which have been open to public inspection, and 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 Note, however, that a "Special Order" request will not be considered unless the application has been laid open to public inspection and a request for examination has been made. 4. The prosecution The examiner's task Patent Office letter of objection Responding to examiner's objections The response may ask the Commissioner to amend your application by changing or cancelling some claims, or adding new claims. You must meet or overcome each objection raised by the examiner. Helping your agent with amendments Reconsideration by the examiner Appealing Re-examination of a granted patent Reissue and disclaimer NON-RESIDENT APPLICANTS An applicant for a patent who does not appear to reside or carry on business at a specified address in Canada shall, on the filing date of the application, appoint as a representative a person or firm residing or carrying on business at a specified address in Canada. 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, wherever 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 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 licence.) 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, 2000, you could file up to one year later in most countries (January 1, 2001) and still be accorded the same rights as if you had filed there in 2000. 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 four 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 be 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" in the other countries. Under the current Act it is now possible to claim priority based on an earlier filed Canadian application. THE PATENT COOPERATION TREATY Application for a foreign patent within Canada is made possible through a treaty called the Patent Cooperation Treaty (PCT), administered by the World Intellectual Property Organization (WIPO), in Geneva. It provides a standardized international filing procedure, which is shared 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 115 member countries through a single application filed in Canada. This procedure is simpler than filing separate applications and enables 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 20 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 Patent Office must be in English or French. You may also be required to provide for translation into the languages of the designated countries if you choose to continue in those countries. Eighteen months after filing, your application will be made available to the public. Only nationals and residents of Canada can file under the PCT in Canada. Your application made in Canada under the PCT automatically qualifies for a normal national filing for a Canadian patent if you have designated Canada. PATENT INFRINGEMENT Patent infringement would occur if someone made, used or sold your patented door lock without your permission in a country that has granted you a patent, during the term of the patent. If you believe your patent is infringed, you may sue for damages in the appropriate court. The defendant may argue that infringement did not occur, or may attack the validity of your patent. The court will determine who is right, basing its decision largely on the language of the claims. If what the defendant is doing is not within the wording of any of the claims of your patent, or if the patent is declared to be invalid for any reason, there is no infringement. FEES There are three kinds of fees you must pay to obtain a patent: filing fees, examination fees and grant of patent fees. Yearly maintenance fees are required to maintain an application or a patent in force. Maintenance fees encourage applicants and patent holders to re-evaluate the economic value of their applications and patents on a yearly basis. Owners of valuable patents who are benefitting from the patent system must pay these fees or their patent rights will expire before the maximum 20 years. On the other hand, owners of inactive patents may choose not to pay maintenance fees, thus letting the patents lapse and enabling others to use freely, at an earlier date, the technology described in those patents. For applications filed after October 1, 1989, and for patents issued on these applications, maintenance fees are payable starting on or before the second anniversary of the application filing date; but for patents issued after October 1, 1989, as a result of applications filed before October 1, 1989, maintenance fees are payable starting on or before the second anniversary of the patent issue date. In all cases, maintenance fees must now be paid on or before the starting date of the period covered, rather than before the expiry date of the period as was the practice prior to October 1, 1996. Failure to do so, will result in the abandonment of an application. However, reinstatement of the application is possible. For a patent, on the other hand, maintenance fees may be paid late within a one-year grace period, subject to a late payment charge, but failing this the patent will lapse with no possibility of revival. You'll find more details about fees at the Tariff of Fees page. Payments may be made by credit card (VISA, MasterCard or American Express), direct payment, deposit account, postal money order or cheque payable in Canadian dollars to the Receiver General for Canada. Do not add federal and provincial taxes. PATENT OFFICE Business with the Patent Office is normally done in writing. Address all correspondence to: Patent Office General enquiries : |
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