Barristers & Solicitors
Patent & Trademark Agents

Canadian Patents



What is a Patent?

A patent is an official government grant that gives the patent owner the legal right to exclude others from making, using or selling your invention in the country. Patent rights last for 20 years from the date the patent is applied for. After the 20 years have passed, the patent expires and the invention is in the "public domain". Anyone can make use or sell your invention after your invention expires.

While your patent is in force, no one could make, use or sell your invention without your permission. If someone were to manufacture or sell your patented invention without your permission, then you could retain a lawyer to either send that person a cease and desist letter, or commence a lawsuit. If you are successful in your lawsuit, you could get a court order against the patent infringer forcing that person to pay you damages (including compensation for your legal fees). You can sell a patent just like you would sell any other item. Also, you can license your patent to someone in exchange for royalty payments.

Patents are national in scope - a United States patent protects your invention only in the United States, while a Canadian Patent protects your rights only in Canada. Therefore, a Canadian patent can be used to stop others from making, selling, or using your invention in any part of the country. While your Canadian patent may be used to stop someone from importing your patented invention into Canada, it does not prevent anyone from making your invention in Japan and selling it in Europe. If you need patent protection in several different countries, then you may need patents in all of those countries. It is possible to obtain very strong patent protection by being selective in which countries you get patents in.

What types of things does a Patent protect?

Patents protect inventions and how they work. It is impossible to come up with an exhaustive list of what an invention could be, but generally, there are three types of inventions. These inventions include such things as:

Mechanical or Electronic Devices: such as machines, tools, utensils, vehicles, engines, containers, computers, computer accessories, communication equipment, medical devices, lighting equipment, novelty items, toys, articles of clothing, house hold items, etc.

Compositions of Matter: such as chemical compounds, drugs, hand lotions, soaps, fuel additives, food additives, metal alloys, plastics, coatings, cloth, construction materials, paper, nutritional supplements, etc.

Methods: such as methods of manufacturing, methods of processing information, methods of building, methods of electronic communication, electronic processing, methods of waste treatment, chemical processing, therapeutic processes, etc.

It is possible that one invention may have more than one patent. For example, a new chemical compound may be patented as a drug and as a nutritional supplement. The method of manufacturing that drug and the method of purifying that chemical compound may be patented. Finally, if you invented a new machine for manufacturing the chemical compound, then the machine may also be patented.

It is also possible that a single patent may cover variations on a single invention. Therefore, if you patented the new chemical compound, the patent may also cover variations of that new compound. Also, there could be a few variations to the method of making that compound that could be covered by the method patent. Finally, the machine patent could cover the various different versions of the machine that manufactures the compound.

You can get a patent for an improvement over an existing device or thing. For example, if you have invented a new blender which is faster and more light weight, then you may be able to get a patent for the improved features of your invention. You can also get a patent for a new use to an old product. For example, your invention could be an existing chemical compound which you have found a new use for.

Requirements for a Patent

Not all "inventions" can be patented. For anything to be patented it must past several tests, the two most critical being;

Novelty: Your invention must be new. It must not have been disclosed to the public (either by you or by someone else). Telling your close friends or associates about your invention is not considered a public disclosure, provided the conversation was secret. However, sales, printed publications, public displays and Internet publishing may constitute a public disclosure. Selling your invention may constitute a public disclosure. Putting your invention on display may also constitute a public disclosure. Writing an article about your invention and having that article published may also constitute a public disclosure. However, if YOU are the one who publically disclosed the invention (either directly or indirectly), then you may apply for a Canadian or United States patent for your invention if you file patent applications within ONE YEAR of your public disclosure.

Obviousness: Your invention must not be obvious from prior existing inventions. If your invention would be obvious to someone who is skilled in that area of technology, then you cannot get a patent for your invention. For example, if your invention is an improvement over an existing machine, then you would not get a patent if the improvement was obvious. If your invention is simply a substitution of one material for another (for example making an aluminum ladder rather than a wooden one), then your invention would be considered obvious unless there was an unexpected benefit derived by substituting the materials. Deciding what is and is not obvious is not always clear to a lay person, and is best determined by an experienced patent lawyer.

How do You Get a Patent?

The first step in getting a patent is having a patent agent write up a patent application. The patent application is a legal document that contains information about what the invention is, how it is made, how it is used, how it works and what is new about the invention. The patent agent generally prepares the patent application with your guidance in order to ensure that all of the relevant features of your invention or disclosed in the application. Depending on how complicated your invention is, the patent agent may take between a few days to several weeks to prepare a patent application. When the application is completed it is filed in the appropriate patent office.

A while after the patent application is filed, the patent office reviews the application to see if it complies with the appropriate forms. The patent office then conducts a search of its records to find any similar inventions. The patent office then compares your invention to the previous inventions and applies the tests of novelty and obviousness. If the patent office believes your invention passes the two tests, then they will grant a patent for your invention. However, if the patent office believes your invention is not new, or if they feel your invention is obvious, or if they feel your application is deficient in some way, then they issue a report. If you respond to the patent office’s report in a timely fashion, and if your response either corrects the deficiency in the application or convinces the patent office that their analysis is wrong, then they will grant you a patent. Often times, the patent application has to be amended to correct deficiencies in the application or to overcome obviousness challenges by the patent office. This process of responding to patent office reports is referred to as prosecution. Generally, your patent agent is the person responsible for responding to patent office reports and amending the application.

Patent Pending

Depending on the type of invention you have, it can take two or three years to prosecute a patent application. Of course, as soon as your application is filed you can refer to your invention as having a "patent pending". While you cannot sue someone for patent infringement until you have a granted patent, you can have your lawyer send "Cease and Desist" letters to would be patent infringers telling them that you have applied for a patent for your invention and inform them that they will face a lawsuit unless they stop.

What’s in a Patent Application?

There are two basic parts to a patent application, namely the disclosure and the claims. The disclosure includes information about how the invention is made, how it works and how it is used. The disclosure often includes drawings, tables, graphs and several examples of different versions (embodiments) of the invention. The claims section of the patent application defines what parts of your invention you claim ownership of. For example, if you invented a hammer having a handle with a magnetic nail reservoir for holding a number of nails, then your patent claims would limit your ownership to the nail reservoir feature only.

Preliminary Patent Search

The first thing you should consider before proceeding with your project is determine if your invention has already been patented. This is where a preliminary Patent Search comes in. As we mentioned above, to get a patent, your invention has to be new and it cannot be obvious. A preliminary patent search can help you decide if you should invest in a patent application. While a truly comprehensive patent search (i.e. a search of all the patent offices and libraries in the world) would be time consuming and expensive, a preliminary patent search can be conducted in a short period of time and for a reasonable fee. The patent search should be conducted by an experienced patent searcher and the search results reviewed by a patent lawyer.

When Should You Apply for a Patent?

It is possible to apply for patent protection (in Canada and the United States only) after you have publically disclosed your invention, provided your applications are filed within one year of your public disclosure. However, it is advisable to apply for patent protection before you actually make a public disclosure. Firstly, you cannot apply for valid patent protection in many countries after you have publically disclosed your invention. Also, as soon as you publically disclose your invention, you trigger a one year time limit for filing your Canadian and United States patent application. Since it is quite possible to make an error as to the exact date of your public disclosure, it is possible that you may miss your one year deadline without even knowing it. Finally, by publically disclosing your invention, you are advertising to the world that you have invented something of value. Potential competitors may decide to file rival patent applications ahead of you in order to either frustrate your efforts or gain a foothold in the market. Even if these rival applications fail for lack of novelty, they can still pose considerable difficulties to the success of your project.

International Patent Protection

As mentioned above, patents are national in scope. Therefore, if you want patents in several countries, you need to file patent applications in all of those countries. In most cases, a patent application is filed in one country first, and subsequent corresponding applications are filed in other countries within 12 months of the first filed application. Under an international patent treaty, these subsequent applications can claim the benefit of the first filing date. For example, lets consider an inventor who wanted patent protection in Canada, the United States, Japan, the United Kingdom and Germany. The inventor’s patent agent prepares a patent application and then files it in the Canadian patent office on November 1, 2000. The patent agent then receives instructions from the inventor telling him to file a patent application in the United States. The patent agent takes the same application, makes a few alterations to conform that application to United States law, and then files the application in the US patent office on January 12, 2001. The effective date of the US patent application is the date of the first filed application (i.e. November 1, 2000). In September of 2001, the inventor instructs the patent agent to file patent applications in the United Kingdom, Germany and Japan. The patent agent then retains patent agents in each of the counties, arranges for appropriate translations, and then has his foreign patent agents file the applications on October 10th, 2001. These applications also have an effective filing date of November 1, 2000.

It is also possible to file patent applications in several different countries simultaneously. The Patent Cooperation Treaty (PCT) permits an applicant to file one application in the Canadian Patent Office which designates several countries. Practically every major country in the world is a signatory to the PCT, so a PCT application can designate practically every major country in the world.

The Costs of Filing For Patent Protection

The costs of filing for patent protection vary greatly depending on the complexity of your invention, the complexity of the patent prosecution process and the number of countries patents are being applied for.

The costs of a preliminary patent search vary from a few hundred dollars to less than two thousand dollars depending on how thorough a search is desired. Of course, the more thorough a search and the more complex the invention, the higher the cost. At Kozlowski & Company, you tell us what your budget is for the search, and we will tailor the most cost effective search for your budget.

The costs of filing a patent application include the costs of the government filing fee ($150.00 Cnd for Canada and $355 US for a United States application - as of March, 2001), the costs of preparing informal drawings (between a few hundred dollars to over a thousand dollars depending on complexity) and the patent agents fee for preparing the application. The patent agent’s fee varies considerably depending on the complexity of the invention. At Kozlowski & Company, we prepare patent applications on a block fee basis - we review your invention and then give you a firm quote as to the cost of filing the patent application (including applicable taxes).

The costs of prosecuting a patent application through the patent office also varies depending on complexity of the matter. The cost of responding to patent office reports can vary from a few hundred dollars to less than two thousand dollars depending on the complexity of the matter. Also, there are additional government fees (examination fees, maintenance fees and issue fees) which will have to be paid. Finally, there is also the costs of providing the patent office with formal drawings. It is very difficult to accurately predict what the final costs of prosecuting the application will be, but at Kozlowski & Company, we can give you quotes for responding to patent office reports as they occur.

How To Get Started

Give us a call. The first step would be to talk to us briefly about your invention and retain Kozlowski & Company to conduct a preliminary patent search on your behalf. While we can tailor a search to meet your budget, we suggest ordering the most thorough search you can fit in your budget. The better the search, the more relevant patents we will find, and the more you will know about the chances of patenting your invention. We can generally get the search results back to you in about two weeks.

After reviewing the search results, you should consider your next step. We can work with your budget and set out a patent strategy. We can prepare, file and prosecute patent applications on your behalf. We can also prepare and negotiate confidentiality agreements, license agreements, investor agreements and other commercial agreements on your behalf.