IPPatentSolutions – Your Intellectual Property matters.
Patents are often a client’s most valuable asset and may be critical to a client’s success. At Nexus, we recognize this fact and apply a pragmatic business approach to each client’s patent issues to obtain results consistent with the client’s business circumstances and needs.
Our patent practice encompasses mechanical, electrical and computer technologies, business systems, and biotechnology and chemical technologies.
We offer our clients a wide range of services, including:
Prior art searches
Patentability, infringement and validity opinions
Preparation, filing and prosecution of patent applications in Canada and internationally
More on Patent Law
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 significant cost of 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 $5,000 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 120 different Treaty countries. Such applications, if first filings, can be deferred for up to 30 or 31 months (depending on country) and, if second filings, for up to 18 or 19 months. Presently the cost for filing a PCT application already prepared are approximately $4,200. At the end of the PCT application, the application must be entered into whichever countries the applicant 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.