IPPatentSolutions – Your Intellectual Property matters.
Patents are often a client’s most valuable asset and may be critical to a client’s success. Our patent lawyers 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. A patent can be obtained for most useful inventions such as machines, processes and compositions of matter. In Canada the term of a patent is 20 years from the date of the filing of the application. Most other countries have similar patent terms.
In order to obtain a patent, a person must file a patent application with the intellectual property office of the country in which patent protection is sought. 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. Patent searching can be accomplished over the Internet at various intellectual property office sites, including the USPTO and EPO. If the results of a comprehensive search indicate that a patent would likely issue, the next step is to prepare the patent application.
The cost of preparing and filing a first patent 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 the invention is more complex than in the typical case. In addition to the preparation and filing costs, there are further costs after filing that are incurred for additional steps taken before the patent office in moving the patent application towards allowance. This phase of the patent application process is referred to as the “prosecution” phase. During prosecution, an examiner will conduct a search to locate prior patents or printed publications that are material to the patentability of the claimed invention. If such material “prior art” is found, then the examiner issues a report setting out rejections of one or more claims in the patent application based on that prior art. It is then necessary for the applicant or the patent attorney to respond to the examiner by amending the application and/or arguing against the reasons for rejection. There may be more than one response required to overcome all objections during prosecution. In additions, most patent offices charge annual fees to maintain the patent application in goods standing, and if the case is allowed, there will be final issue or grant fees payable. Accordingly, additional funds should be budgeted for such costs incurred during the prosecution phase of the patent application. The amounts of such prosecution costs vary from case to case, but are typically in the range of $4,000-$7,000.
Rather than filing a regular patent application, one can file a provisional application in the U.S. or an informal 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 that 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 United States 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 States where infringement has often put large companies into bankruptcy.