Vermette & Co.

Patent Information

A patent is an exclusive right granted by the government to prevent others from manufacturing, using or selling a claimed invention. In Canada the current monopoly is 20 years from the date of the filing of the application, as it is in the U.S. and in most other countries of the world. A patent can be obtained for most commercially useful inventions such as machines which carry out useful functions, processes and compositions of matter. However, processes which depend on artistic or personal skills, and methods of medical treatment are not patentable in Canada.

A patent application consists of a complete written description of one or more preferred embodiments of the invention, a set of claims which define the boundaries of the claimed invention, drawings of the preferred embodiments, and certain formal documents. Prior to proceeding with a patent application it is strongly recommended that a thorough search be conducted, to determine if the invention is novel. Such a search reduces the risk of rejection of any application filed on the basis of prior patents or printed publications disclosing the same or a similar invention. A good search is additionally of great assistance in focusing the claims of an application. A search may include both a computer search and a manual search of the records of the United States Patent and Trademark Office (USPTO). However, the cost of about $3,000 for such a combination is often a deterrent. Computer searching can be accomplished over the Internet at various sites including the USPTO site. The risk with a computer search is the ease with which relevant patents can be missed by simply failing to select an appropriate key word. One could also conduct a manual search in Canada and other jurisdictions as well, however, usually cost constraints intervene to limit the search to the U.S.

Once a search has determined that a patent would likely issue, it is necessary to prepare the application. An inventor is well advised to prepare a complete written description of how the invention works including the main advantages of the invention over predecessor devices or processes. Preferably, informal drawings of one or more preferred embodiments of the invention should be provided. It is useful to include various alternative embodiments.

The cost of preparing and filing a first application in either Canada or the United. States. is typically in the range of $6,000 to $10,000, not including disbursements. This amount can increase if, for any reason, more time is required because, for example, the invention is complex or difficult to describe in precise detail. In addition to the preparation and filing costs, there are further costs after filing which are incurred for prosecution of the application before a patent examiner. Once examination commences, an examiner will read the application and do a search to try and find prior patents or, in some cases, printed publications, which can be applied against the application. The examiner then issues a report in which he may, and usually does, reject one or more claims of the patent. It is then necessary for the agent to respond to this report by amending the application and/or arguing against the reasons for rejection. There may be more than one response required to overcome the objection. Approximately $4,000-$5,000 should be budgeted for the cost of preparing such responses and paying the final printing and issuing fee.

Rather than filing a regular patent application, one can file a provisional application in the U.S. or a regular Canadian Patent Application, which can be treated as a provisional. The U.S. Provisional Application expires after a year and does not get examined. The latter application can be replaced within a year with an updated application, which can claim priority on the first filed application. There are advantages and disadvantages to each procedure. A provisional filing is typically upwards of about $3,000.

After filing a first application, it is possible to defer filing further corresponding applications in other countries for up to one year while maintaining the right to claim priority based on the filing date of the first application. The cost of such foreign applications is highly variable depending on the countries in which such applications are to be filed. It is usually recommended that a first filing be done in the United States as this country often provides a first Official Action within a year (although this is changing) and thereby provides a good indication as to whether an application would likely issue before having to file expensive foreign applications. The United States also allows the introduction of new matter in the event the invention changes from the date of initial filing.

Under Patent Cooperation Treaty a Canadian resident can file a single application and designate it to be effective in over 100 different Treaty countries. Such applications, if first filings, can be deferred for up to 31 months and, if second filings, for up to 19 months. Presently the cost for filing a PCT application already prepared are approximately $4,000 but within about 7 to 10 months a further $3,000 is payable for electing to have a preliminary examination report provided. The further costs involved in preparing the application are generally between about $5,000 to $7,000. At the end of the PCT application, the application must be entered into whichever countries the owner of the patent wishes. Costs for national entry are comparable to those for direct national filings.

Patent applications take about 1 1/2 to 2 years to issue to patent in the United States and, in Canada, take at least 3 years after a request for examination has been filed. Once a patent issues an inventor or assignee is responsible for policing his/her own patent by, for example, suing infringers in court. Such lawsuits can be very expensive. However, often the mere possession of patent rights will be enough to intimidate potential competitors from infringing, particularly in the UnitedStates where up to treble damages may be awarded for wilful infringement. Fortunately, the patent systems in both the United States and Canada have been strengthened over the past two decades, particularly in the United S States where infringement has often put large companies into bankruptcy.

Trade-marks may be either registered or unregistered. Registration of a trade-mark gives its owner the exclusive right to the use of that trademark for the wares/services for which it is registered throughout Canada. Applications for registration of a trade-mark in Canada may rely on any one of four different bases. These are proposed use, prior use, mark being well-known, or registration of the same mark in a foreign jurisdiction. One can register a mark in block letter form (i.e., as done with capital letters on a typewriter) or in combination with a design. Alternatively, a design alone may be registered.

Since trade-marks are registered only in respect of specified wares/services, a complete specification of these wares/services must be provided in ordinary commercial terms with any application. In Canada one can specify as many different wares/services as desired in a single application. Other countries have a classification system in which a single application is limited to one class of wares or services. An application in Canada must indicate the date of first use of the mark for each of the different wares/services or, if there has been no such use, the application for those wares/services is based upon proposed use or on a foreign registration. Although uncommon, an application in Canada can also be based upon the mark being well-known in Canada.

Use of a trade-mark in Canada is achieved if the wares in association with which the mark is used have the trade-mark marked on them or on packaging containing the wares at the time of transfer of property in or possession of the wares, in the normal course of trade. Normally, use occurs at the time the goods are sold but could also be deemed used at the time of transfer of possession even if the sale occurs later. For services, a mark is deemed used if it is displayed in either the performance or advertising of those services.

Registration of a mark in Canada takes between 1 and 2 years. After an application is filed the application is classified and given a file number. A filing receipt is sent to the Applicant's agent at that time - about 6 -10 weeks after filing of the application. After about 1 year the examiner does a search to determine if the subject trademark is likely to be confused with an existing registered trade-mark or a mark for which application has been made. In addition the Examiner may consider that there are formal defects in the application. All of the Examiner's objections are set down in an Examiner's Report and sent to the agent of the Applicant. The Applicant then argues against the objections or amends the application to comply with them. This process may occur more than once. Finally the application is approved for advertisement in the Trade-marks Journal. If within 2 months of the date of publication there is no opposition by third parties, the opposition period expires and the application is subsequently allowed. A registration fee of $200 is then requested. If based upon proposed use a Declaration of Use by the applicant is requested together with the $200 registration fee and the application then proceeds to registration.

While patent and trade-mark protection are the most common, copyright and industrial design protection are sometimes sought. Alternatively, an individual may decide to keep a commercial advantage a trade secret if use of the trade secret does not require disclosure. More details on these other forms of protection will be provided upon request. While patent and trade-mark protection are the most common, copyright and industrial design protection are sometimes sought. Alternatively, an individual may decide to keep a commercial advantage a trade secret if use of the trade secret does not require disclosure. More details on these other forms of protection will be provided upon request.