Gastle and Associates

WHAT IS A PATENT?
A patent entitles its owner a limited monopoly for the invention it claims, in return for the inventor revealing to the world how to carry out the invention. The monopoly is an ‘exclusive’ right to prevent others from making, constructing or using the invention. The monopoly is limited to the country that issues the patent. Patent rights do not, however, give the patent owner immunity from others who believe he infringes their patent rights.

HOW DO I OBTAIN A PATENT?
The first step is to file a patent application in the country where you are seeking patent protection. If you are seeking patent protection in three countries, you must file three patent applications. There are, however, several regional schemes, which allow you to pursue applications in a number of countries with one patent application.

WHAT IS A PATENT APPLICATION?
A patent application generally has three parts:
1) a "disclosure" which sets out the best mode of the invention in sufficient detail to allow a person skilled in the art to carry it out;
2) one or more claims which define the invention; and
3) one or more figures illustrating the preferred embodiment(s).

MUST I CONDUCT A "PATENT SEARCH" BEFORE I FILE?
It is not a requirement to perform a search prior to filing a patent application. However, it is always a good idea to search beforehand, particularly if you do not have experience in the area you are interested in. There are several ways to search, and a multitude of places to search, such as magazines, libraries, books and the like. However, we usually do our searches in patent related collections, many of which are now available online. Database searches are now available at the following links:
United States Patent and Trademark Office
Canadian Intellectual Property Office
European Patent Office
Online database searching may be supplemented with a manual search of the public records at the U.S. Patent Office. These collections are only a part of the "prior art" related to your invention.

WHAT CONCLUSIONS CAN I DRAW FROM A PATENT SEARCH?
None. Database searches are prone to error because they are limited by the words used in the search. Important "prior art" references can be overlooked, simply because their scribe chose words not considered for the database search. Manual searches are also prone to error. Patent Office records are public. A pertinent "prior art" reference can be overlooked because it is missing or misfiled from its proper location and therefore not seen in the search. Thus, other pertinent "prior art" may still be lurking undetected in the U.S. Patent Office, and indeed in the multitude of other areas where such relevant information may be stored in public libraries around the world. Thus a search will provide a "good" indication of the state of the art, not a "conclusive" one.

HOW DO I PREPARE A PATENT APPLICATION?
A patent application is a complex legal document and needs professional care. The Canadian Patent Office has a record of Patent Agents who are qualified to write patent applications and to represent inventors. A list of Canadian Patent Agents can be accessed at the following link: Canadian Intellectual Property Office

The patent application should be written with a close collaboration between the Patent Agent and the inventor(s) to be sure:
a) that the invention is adequately disclosed;
b) the preferred embodiment and the best mode of the invention is sufficiently described to allow a person skilled in the art to carry it out the invention without "undue experimentation";
c) the range of alternatives to the preferred embodiment are discussed as contemplated by the inventor(s).
The invention must be carefully claimed to provide the proper scope of protection. Inexperienced drafters of patent applications can sometimes overlook important approaches to claiming the invention.

WHO SHOULD BE NAMED AS INVENTORS?
Your application should be filed naming all the co-inventors of the invention as claimed. The co-inventors should include those who actively participated in the evolution of the invention, but not those who merely followed instructions in the building of the prototypes, nor those who merely confirmed what others had contributed.

WHAT KIND OF INVENTION RECORDS SHOULD I KEEP?
You should have a bound lab notebook in which you can record each development in the invention as they occur, by noting the date of the development and a description capable of being read by a person skilled in the art. You should include any test data that allows you to make the observation or form the conclusion. You should have each page witnessed by a third party who is capable of understanding what you have written.

HOW IS A PATENT APPLICATION "FILED"?
A patent application is delivered to the Patent Office Mail Room, for example at the Canadian Patent Office in Hull, Quebec or the U.S. Patent Office in Arlington, Virginia. The application is then given a serial number and a "filing date". The latter is extremely important.

WHEN MUST A PATENT APPLICATION BE FILED?
Among other requirements, you must file your Canadian patent application before the invention has been disclosed in a manner that made it available to the public in Canada or elsewhere. There is, however, a grace period of one year given to disclosures by the inventor and those who have derived the information from the inventor. Canada works in a "first to file" system this means that the first inventor to file gets the patent. Among other requirements, you must file your U.S. Patent application within one year from the "printed" publication anywhere in the world, within one year from the date that the invention was first "in use or on sale" in the United States.

WHAT DOES "PATENT PENDING" MEAN?
Strictly speaking, "Patent Pending" means that your patent application has been allowed by the Patent Office and a patent will issue. However, patent applicants have used the term once their patent application is ‘on file’. Inventors often mark their products or literature "Patent Pending" because they believe that it gives notice to the world that there are proprietary rights in the product and its owner is seeking patent rights. This is viewed by some as having certain deterrent value against potential competitors.

HOW MUCH DOES IT COST TO FILE A PATENT APPLICATION?
Costs to prepare a patent application can range from $3000 to $10,000 or more depending on a number of factors including the subject matter of the invention. A relatively straightforward and simple invention would typically fall on the lower end of that range and a relatively complex invention on the higher end.

Costs to file the patent application also depend on a number of other factors, including the particular country of filing. For example, you should budget a cost of about:

- $1500 to file in Canada;

- $3500 to file in the United States; and

- $6500 to file a PCT application.

WHAT FEES SHOULD I EXPECT TO SPEND AFTER THE APPLICATION IS FILED?
As a very rough guide, you might expect to spend about the same amount to see you through the examination of the application (see WHAT HAPPENS AFER MY FIRST APPLICATION IS FILED below), as you did to have your application prepared and filed. If the application is successful, you should budget a cost of about $500 to issue a Canadian Patent, $4000 and to issue a U.S. Patent.

IF I WANT PATENTS IN SEVERAL COUNTRIES, DO I HAVE TO FILE ALL OF THEM AT ONCE?
No. There are a number of world treaties that entitle you to a one-year grace period from the filing of your first patent application, in which you can decide which other countries to target your patent filing campaign. If you file in Canada today, you can file in U.S. and most other industrialized countries in the world within one year from today and those applications will be given "priority" to your original filing date in Canada. However, your priority to the original filing date may be of limited value to you if you have engaged in commercial activity prior to the filing of your application, particularly if that commercial activity has occurred in the United States. (See HOW DO I FILE IN OTHER COUNTRIES? below)

WHAT HAPPENS AFTER MY FIRST APPLICATION IS FILED?
The application is reviewed for "formalities". Each country has its own formality requirements and this usually means submitting extra documentation following filing to correct these.
The application is issued a Filing Certificate confirming the serial number and filing date.
The application is then given to a Patent Office Examiner who then conducts a search of the Patent Office Records related to your invention. This begins the "examination" phase where your Patent Agent negotiates on your behalf with the Patent Office Examiner. Your Patent Agent works toward the broadest possible scope available, while the Examiner will be looking for claims that are not unduly broad, given the state of the art.

WHAT DOES IT MEAN TO HAVE "PATENTABLE" CLAIMS?
The claims must define an invention that:
1) falls within the statutory subject matter as defined by the patent laws of the country in question. Generally speaking, most countries require that the invention must be an "art, process, machine, manufacture or a composition of matter".
2) is "novel";
3) is "useful"; and
4) is "inventive".

WHAT HAPPENS IF WE ARE SUCCESSFUL IN OUR NEGOTIATIONS WITH THE EXAMINER?
The Patent Office issues a Notice of Allowance, Issue Fees are paid and the Patent Certificate is issued.

HOW DO I FILE IN OTHER COUNTRIES?
You can file applications in each country of choice. This is appropriate if you are considering only a few English speaking countries. If you are considering a number of countries, you may want to make use of the international filing regime administered by the World Intellectual Property Organization, under the Patent Cooperation Treaty (otherwise known as the "PCT").

A PCT application can be filed in the Canadian Receiving Office of the PCT, designating up to 112 countries. The PCT application has two phases or "Chapters":

Chapter 1 involves an International Search (where a designated International Searching Authority searches your invention) and Publication (where your PCT application is published).

Chapter 2 involves a Preliminary Examination (where the designated International Preliminary Examination Authority examines your application for novelty, utility and inventive step).

The PCT application does not, itself, become a patent, but is useful to extend the one year grace period (see IF I WANT PATENTS IN SEVERAL COUNTRIES, DO I HAVE TO FILE ALL THEM AT ONCE?) by an additional eight months (for a total of twenty months from the priority date) if we choose Chapter 1, and an additional 18 months (for a total of thirty months from the priority date) if we choose Chapter 2.

MUST I INFORM THE PATENT OFFICE OF THE PRIOR ART I HAVE FOUND IN MY SEARCHES?
The U.S. Patent Office imposes a "Duty of Disclosure" on its applicants. The duty of disclosure may be discharged by filing the relevant prior art. Failure to comply with the duty of disclosure can result in any patent issuing from your patent application being declared invalid. The duty to cite prior art continues throughout the prosecution of the application and, in order to avoid paying a fee for an untimely-filed Information Disclosure Statement, you should forward the prior art to your Patent Agent, as it becomes known to you. Prior art is considered ‘material' if it, by itself or in combination with another reference, renders the invention unpatentable, or if it contradicts the statement by the applicant or his agent regarding the patentability of the invention. Prior art should be cited if an Examiner would be likely to consider it important in assessing patentability of the invention. The Canadian Patent Office will, in some cases, require that you supply the prior art that has been cited in other corresponding applications on file, for example in the U.S. Patent Office. No prior art needs to be submitted on a PCT application.

We hope that you find this information useful. Every effort has been made to ensure its accuracy. However, the article is of a general nature only. You are urged to seek specific advice on your particular concerns and not to rely solely on its content.

jgastle@gastle.com

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