A patent gives the patent owner the exclusive right, in the country in which the patent is issued, to make, use and sell the invention defined by the claims for the term of the patent. Unlike copyright and trademarks, patents must be applied for and approved by the government.
Not all companies will benefit from a patent. The process of obtaining a patent is expensive and time consuming. Typical costs for obtaining a patent will be from a rock bottom $10,000 to $20,000 per country and are often more.
This article will explore general issues relating to obtaining a patent from the pre-filing stage through to issuance. A checklist of important questions is provided at the end of the paper.
Race to the Patent Office
The right to file a patent application in most countries can be lost by prior public disclosure or sale of the invention, or filing of a patent application in that country by another person. The rules vary from country to country, and they are far more complicated than expressed in the preceding sentence. They are best summarized by the statement that: Rights may be lost by delay.
One issue that many companies face is how soon to start the patent process. It is not necessary to have built or experimented with the invention. It is enough to understand the invention and how it will work sufficiently to describe the invention in a patent application. The rule is simply that the invention must be described in such a way that a person of average skill in the art can make and use the invention from reading the patent specification.
However, while filing a patent application early provides an early priority date against others, if necessary details are missing from the application as filed, it may fail to protect the full scope of the invention. One possibility is to file a provisional patent application, which need not have claims if filed in the United States. However, a provisional patent application does not provide a short cut because it has exactly the same disclosure requirement as a non-provisional. See the article on Problems with Provisionals.
If the invention was disclosed more than a year ago in a way that it became available to the public, it is too late to file an application for a patent in Canada and in most other countries. Generally, it is a good idea for a person to consult a patent lawyer as soon as they have conceived of an idea that they think will make money. See the article on Value Added from Patent Lawyers.
Who Owns the Invention
The law presumes that the inventor is the owner. For someone else to be the owner of an invention, either there must be a contract displacing the presumption, or the circumstances of the inventor’s relationship with another party must displace the presumption.
One common issue is whether an employer owns an employee’s invention. Companies should ensure that their employees have signed employment agreements that include confidentiality provisions and an obligation to assign all inventions to the company. If such a written contract does not exist, the employer may still own an invention made by an employee particularly where the duties of the employee included making inventions or improvements that would benefit the employer.
Since the inventor is presumed to be owner, if a company contracts work to another company or contractor, the contractor may own any invention that the contractor makes, even if the invention was intended to benefit the company that hired the contractor. The right of the company hiring the contractor may only be a limited right, such as a non-exclusive license. A simple confidentiality agreement that can be signed with any prospective contractor can stipulate that any improvements to the information supplied under the contract that are made by the contractor belong to the company.
Confidentiality of company information can be important to preserve company assets and protect against loss of patent rights by public disclosure of an invention. Employees and contractors may be asked to sign confidential disclosure agreements. See our article on Confidential Disclosure Agreements.
In some situations, however, a company might decide to publicly disclose an invention as a defensive measure. Due to the expense of obtaining, maintaining and defending patents, a company might just decide to prevent others from obtaining a patent on the invention. If a company uses a secret process for years, then someone else obtains a patent for the process, the company might be barred from using the process even though they have used it for years. By publicly disclosing the invention, others are prevented from obtaining a patent for it.
Confidentiality can also be detrimental in other ways. If a company is trying to promote a product, maintaining secrecy may prevent the spread of public knowledge about its benefits. It might actually be better to have other companies talking about the product.
To be patentable, an invention basically needs to be the world champion in the field: no-one else can have done it before. How can you know this? Even though some companies know their business well, the world is a big place and often an invention has been done before. Patentability searches are used to find this out.
All patentability searches are inherently inexact. Certainty increases with amount spent. The lowest cost searches are carried out using keywords in online databases, such as the USPTO and other national patent office databases, and on the internet. These searches are not good at accessing information that pre-dates the online databases, and are heavily dependent on the key words used. Frequently, these low cost searches will not be useful if they find nothing relevant, and may be limited in utility to finding what they find. General conclusions may not be able to be made from limited searches of this nature.
Low cost searches can yield sufficient information to support a decision on filing a patent application in some situations, such as when (A) the technology is one in which specific key words are used and used only in that technology, or (B) the knowledge of an experienced researcher in the area or of an expert knowledgeable about technology in the area is available.
Moderate cost searches may use a variety of online information and are carried out to the point where it is not expected that useful information can be found in an online search. If there may be relevant references that pre-date the database, such searches may include or be supplanted by manual searches in the USPTO or another patent office. Manual searches may also be useful where viewing images is more efficient than keyword searches.
Moderate cost searches will typically support a decision to file a patent application.
More expensive searches will start with thorough online searches, and may use manual searches in a patent office, but more importantly will exhaust a variety of sources including experts in the area. Such searches are recommended where a significant business investment is to be made in a technology, and obtaining a patent is a vital part of the business plan.
What is PatentableTo be patentable, the basic requirements are that the invention be new and unobvious. Although an invention must also be useful, that is a given for most inventions. New means that exactly the same thing has not been done before. Unobvious means that, although the invention is new, the invention must not be something that a person of average skill in the art, in light of the general knowledge available to them in the art, would have come to directly and without difficulty. Due to recent case law, the standard of obviousness is probably lower in Canada than in the United States. In Canada, the standard is a “scintilla of inventiveness”. In the United States, a recent decision of the US Supreme Court has made it clear that not every advance is patentable, and that there must be an undefined something more than a combination of prior art techniques whose combination is motivated by the problem at hand. A list of factors supporting patentability is set out in Appendix A. Although there is a lot of talk about software and business methods not being patentable, the basic exclusions are:
- Abstract ideas are not patentable anywhere.
- Methods fo medical treatment are patentable only in the United States
- For software and business methods to be patentable, they must be framed at least as part of an overall physical process that has a practical application.
- Printed matter is not patentable, unless it has a practical application.
Right to Use Searches
None of these searches will provide a clearance search, that is, one from which an opinion on whether the searched technology infringes a patent may be obtained. Non-infringement searches must be carried out in each country of interest and are expensive. Costs will be higher for complex technology, and will also be higher if a close patent is found where the infringement issue is not clear on a first read of the patent's claims.
FILING AND PROSECUTING A PATENT APPLICATION
If a person has:
- Identified an invention that might be worth patenting;
- Assured its ownership of the invention;
- Assured the confidentiality of the invention; and
- Decided that the invention is sufficiently likely to be patentable to be worth the investment required to file a patent application;
then a patent agent should be engaged and the application written up. An inventor can help with the patent application process. See our article on How to Instruct a Patent Lawyer.
When the application is drafted, a choice has to be made about where to file the patent application, usually between filing a Canadian, United States or international patent application under the Patent Cooperation Treaty. See our article on Patent Application Filing Options for Canadian Inventors for factors that determine where to file first.
An initial filing in one of Canada and the United States creates a right to file in countries that are members of the Paris Convention on Industrial Property within a year without loss of priority. An international filing under the Patent Cooperation Treaty can extend this right for a further 18 – 19 months, to give 30-31 months from the initial filing in which to decide where else to file the patent application. Thus, the main focus of the initial filing is to obtain a priority date.
During this priority window (12 to 30 months long), the inventor or owner of the invention should be attempting to exploit its invention.
Eventually, the patent application will be examined and a patent examiner in each country will decide whether to grant a patent for the invention. An appeal lies to an appeal board if the examiner refuses the application.
In some cases, the prosecution process can cost tens of thousands of dollars, and six figure expense is not impossible. The process can take years.
During the prosecution process, the inventor or invention owner should be aware of considering whether to patent further improvements to the invention, particularly improvements suggested by practical experience with the invention. While it is not possible to add new matter to a patent application after filing, a further application could be filed for important improvements. It is not unusual to have a string of patent applications.
ISSUANCE OF THE PATENT
Keeping Options Open
For some companies, the issuance of a patent is an important event. Many companies will issue a press release about the issuance of a patent.
The inventor or invention owner should periodically review changes to its product or process to ensure that these improvements are covered by the patent.
Information on competitors may be obtained to check whether what they are doing infringes the patent.
There is very limited scope to alter claims of a patent after issuance, and any right to change the claims may be limited in time. Hence, the claims should be carefully checked during the issuance process to ensure that they fully protect the invention.
Depending on the country involved, it may be desirable to file additional patent applications, called divisional or continuation applications, to protect additional inventions contained in the application.
In general, it is a good idea to keep an application pending, since a review of a competitor’s product might expose deficiencies in claims that might not be correctable in an issued patent.
Enforcement of a Patent
Patent litigation is complex and expensive. The downside for the defendant can be the loss of its business. The best defence will include a counterclaim, not only attacking the validity of the patent, which is usual, but also based on the defendant’s own patent. Obtaining patents to fend off aggressive competitors may be a worthwhile goal in its own right.
In Canada, since the Supreme Court issued its landmark patent infringement decisions in 2000 (Free World Trust v. Électro Santé Inc.,  2 S.C.R. 1024; Whirlpool Corp. v. Camco Inc.,  2 S.C.R. 1067), the courts have interpreted claims narrowly, making it more important to have broad and precise claims. If claims are incorrect, the court may not be sympathetic: it’s a self-inflicted wound. Contrast this with the position in the United States, where the United States Supreme Court was prepared to consider that operation of a chemical process at a pH of 5 infringed a patent claim to a chemical process operating at a pH of 6-9.
There are many ways to lose patent rights, from delay to failure to properly understand the scope of an invention. It’s very difficult to obtain a commercially important patent.
- Who made the invention?
- If the inventor is not the owner, has the owner obtained an assignment of rights from the inventor?
- Is there a licensee with an interest in the invention?
- Is the inventor or invention owner obligated to anyone to assign or license the patent?
- Has the right to file a patent application already expired anywhere by public disclosure, public use, sale or offer for sale?
- If no due dates arise from prior acts, is there an upcoming deadlne?
- Are there active competitors in the area?
- Has the inventor or invention owner been reminded that any delay may mean loss of rights?
Right to Use
- Does the inventor or invention owner need to establish or be satisfied as well as its budget can allow that no rights are infringed by practice of the invention?
Right to Patent
- Does the inventor or invention owner know the market well enough to render a patentability search irrelevant? If not, a patentability search is recommended, bearing in mind that a patentability search is not a substitute for a right to use search.
- Does the inventor or invention owner know that all patentability searches are inexact and that certainty increases with amount spent?
Financial Capacity of Invetor or Invention Owner
- Does the inventor or invention owner know that the cost of obtaining a patent is measured in the tens of thousands of dollars, and that there is no guarantee that a patent can be obtained?
- Does the inventor or invention owner know that the time frame for obtaining a patent is measured in years?
Factors That Support Patentability of an Invention
- Long felt but unsatisfied need for the invention while the needed implementing arts and elements had long been available;
- Appreciation that a problem existed and what the problem was were previously unseen by those skilled in the art;
- Substantial attempts by those skilled in the art to fill the need of (1) or the cope with difficulties arising from the failure to understand the problem of (2);
- Commercial success of the invention causally related to the invention itself rather than to factors such as advertising or attractive packaging;
- Replacement in the industry of the prior art devices by the patented invention;
- Prompt copying of the patentee's invention by competitors;
- Acquiescence by the industry to the patent's validity by honouring the patent through taking licenses or not infringing the patent, or both:
- The existence of prior art or knowledge teaching away from the technical direction taken by the patentee;
- Unexpectedness of the results of the invention to those skilled in the art; and
- Disbelief and incredulity on the part of those skilled in the art that the patentee's approach worked.