How To File A Patent In Canada

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Filing a patent in Ontario or anywhere in Canada is a process that requires diligence, attention to detail, and technical skills.

Before jumping into how a patent is filed, let’s review the purpose behind the patent system in Canada.

One of the goals of the patent system is to fuel scientific advancement, which in turn strengthens our economy. The economic benefits are intended to be an attractive incentive towards further research and development, which ultimately benefits all Canadians. Legal protection of patents allows individuals to feel safe investing time and money needed to create or develop new products and technology.

Once a patent is granted, the inventor has the legal right to stop others from making, selling or using the invention for a maximum of 20 years, calculated from the day after the patent was filed.

A full description of the invention must be provided in exchange for the advancement of technology and knowledge of all Canadian. Patents become available to the public 18 months from the filing date in Canada.

PATENT APPLICATION PROCESS

It is strongly advised to use a registered patent agent and/or lawyer with a relevant technical background. Once the representative is chosen, the Canadian Intellectual Property Office will communicate directly with them.

The representative generally charges by the hour or a flat fee for drafting the patent which ranges in the thousands of dollars depending on the subject matter of the patent application and length. Filing fees range between $200 and $400 depending on the size of the patent application.  Each page exceeding 100 pages costs an additional $6.

For the patient to remain in good standing there are also maintenance fees that range from $50 to $450 per annum. For the first four years of maintenance, the standard fee is $100 and in the following five years that fee doubles. Another $50 is added to the fee of $200 for the 10th to 14th annual anniversary dates of the filing. In the remaining five years, the fee jumps to $450 per year.

Lastly, there is a standard examination fee which is $800, which we will get to close to the end.

CONDUCT A PATENT SEARCH

It certain cases it can be valuable to conduct a patent search.  A patent agent or patent lawyer should be able to conduct that research for you on the national and international level, but there are also online resources available if you would like to do a preliminary search first. For example, a search within Google Patents can locate relevant prior art patents however it’s also important to consider journal articles and other sources of publications.

A preliminary patent search can help you identify trends in a specific field, discover new product lines, find information that prevents duplication of research, keep track of other similar patented technologies, find a solution to a technical problem, and gain new ideas for further research.

Even prior to hiring a representative it is advisable to do an online search via the Canadian Patents Database. If your invention (or one that is very similar) has been patented already, there may be no need to take further steps however it’s advisable to seek confirmation from a patent agent to be certain.

A more thorough search can also be done in person by visiting the Client Service Centre at the Canadian Intellectual Property Office. However, the former should be performed in very specific cases, as the office is located in Gatineau, QC and for Ontario residents such a search would be costly.

WHAT TO PATENT

To have patentability of a new technology, your innovation must meet three basic criteria:

Novelty – the invention must be the first of its kind in the world

Utility – while this may seem common sense, never the less your invention must have useful function(s)

Inventiveness – the invention must be a new development or an improvement of an existing technology that is not obvious to someone working in the same area of specialty

The invention can be a product, a composition, a process, a machine, or an improvement on any of the four. Finally, a patent is granted only to the physical embodiment of the idea, something that is tangible and can be sold.

PATENT ABSTRACTS, SPECIFICATIONS, DRAWINGS

A summary of the invention and its usefulness must be provided in the application. Also, claims that define the boundaries of the protection that your patent will give you must be included. Clarity in the description is key. A simple yet detailed report should be addressed to those in a similar field. Anyone in that field – reading the description – should understand it well enough to be able to put that invention to use.

The biggest challenge of drafting such a document is to define the invention broadly enough so it receives maximum protection while at the same time being specific enough so it is sufficiently different from previous inventions.

ASSISTING YOUR AGENT

To avoid unnecessary costs and hassles it’s best to prepare a statement responding to these 12 questions for your patent lawyer or agent. What is/are:

  1. Field of invention?
  2. Description of invention?
  3. Objectives of invention?
  4. Most appropriate use of your invention?
  5. Unique features of invention?
  6. Scope of invention?
  7. Limitations of invention?
  8. Results of laboratory or commercial tests?
  9. Relevant literature on the subject?
  10. Disclosure (anyone who you’ve shared the invention with)?
  11. Your name, address and citizenship?
  12. Countries you’d like to file for a patent?

WHEN TO APPLY

Canadian law stipulates that patents are to be granted to the first inventor to file an application, so it is important to file as soon as possible. Prior to filing a patent application, it is essential to keep all information pertaining to the invention in absolute secrecy. Public disclosure may jeopardize obtaining a valid patent internationally. In Canada and the US, there is a one-year grace period.

INVENTION OR IMPROVEMENT

According to the government of Canada 90 per cent of patents are for the improvement of existing patented inventions rather than unique inventions, which poses a potential for infringement if not dealt with correctly.

FILING YOUR APPLICATION

To receive an official filing date in Canada you must submit a statement that a patent is sought, documents describing the invention, your and your agent’s name and address, and the filing fee.

REQUEST EXAMINATION

It is very important to realize that the patent process does not end once a patent is filed. Your next step is to formally request an examination and pay the standard $800 fee associated with the request. The request must be made within five years, otherwise the application would be considered abandoned. Once the examination request is made you need to be patient. The examination process may take more than two years.

 

**The information provided herein is a general background of intellectual property law concepts, does not constitute legal advice, and should not be relied upon as legal advice. Bhole IP Law, and the author, make no express or implied representations or warranties in respect of the information, including but not limited to the accuracy of the information. Note that while Bhole IP Law is a firm of Canadian lawyers authorized to practice before the United States Patent and Trademark Office, we are not U.S. lawyers nor lawyers in any other jurisdiction. As such, other foreign counsel may need to be consulted for U.S. or foreign legal matters.**

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