GENERAL INFORMATION ON PATENTS

Transcription

1 GENERAL INFORMATION ON PATENTS Why obtain a patent? Apatent is proof of the rights that one has in an invention. The rights provided by a patent constitute an exception to free market principles by granting to the owner a temporary exclusive right during which time the invention cannot be manufactured, sold, imported or used without the owner's consent. In general, this exclusive right cannot be extended beyond a twenty year period after the filing date of the patent application. During this period, the owner of the patent is the only person who can exploit the invention and thereby profit from the investment of time and money required for its development. Who can obtain a patent? A patent can only be obtained by those who are the true inventors, or by the persons or the legal entities to which the true inventors have assigned their rights. Anyone who attempts to appropriate another person's invention by filing a patent application commits an act of criminal fraud, and if convicted of such, may be liable to imprisonment. What is patentable? Patents are used to protect inventions in almost all fields of technology. For an invention to be patentable, it must be new, not only in Canada or in the United States, but everywhere in the world. Furthermore, an invention is not patentable if it is a simple and obvious modification which could have been easily made by a person working in the field of the invention. Is an idea patentable? An idea is not patentable per se. However, a concrete embodiment of an invention resulting from an idea may be patentable. The inventor must be able to explain at least one way of carrying out and putting into practice the invention. However, it is not necessary to provide a prototype, except in certain cases. Page 1 of 7

2 What is the difference between a patent and a patent application? A patent is not obtained by merely submitting a description of the invention to the government. A patent results from a patent application which has been reviewed by an Examiner at the Patent Office. The main role of the Examiner is to ensure that the application satisfies certain formal and substantive requirements, particularly those of novelty and non-obviousness. An invention cannot be considered as patented unless it has successfully completed all the stages of the examination process and has issued as a patent. When an invention is the subject of a patent application and has not yet issued as a patent, it is said to be "Patent Pending". In French, this expression is translated as "brevet en instance". What is the role of a patent agent? The patent agents at ROBIC are highly qualified professionals who act as consultants to help their clients obtain patents. They bring together all of their combined experience and knowledge in the patent field in an effort to obtain the best possible protection for their clients' inventions. They are registered with the Canadian Intellectual Property Office and the United States Patent Office. All of ROBIC's foreign associates are also professionals who are registered with their respective governments. However, it should be noted that patent agents are professionals in the private sector, and not employees or representatives of the government. Can I disclose a confidential invention to a professional at ROBIC? All information that is transmitted to us is automatically considered and treated as confidential. Confidentiality is essential to our work and we make every effort to maintain our excellent reputation in this area, which has been acquired over more than a hundred years of business practice. What are the steps required to protect an invention by way of a patent? The patentability of an invention is always judged by comparing the invention to previous knowledge in the relevant field. The first step is thus usually to conduct a search in order to verify the criteria of novelty and non-obviousness. This search helps to evaluate the chances of success of a potential patent application, providing a general indication as to whether or not it is worthwhile to go ahead with its filing. This search is usually conducted at the United States Patent Office due to the great amount of documents and search facilities associated with it. However, it should be pointed out that regardless of the outcome of a patentability search, the final decision to grant a patent is exclusively up to the Examiners, and, if applicable, to the Courts of the country where the patent application has been filed. Page 2 of 7

3 The second step consists of the drafting of the patent application by the patent agent, in collaboration with the inventors. Working from the information and drawings provided by the inventors, the patent agent drafts a technical description of the invention and prepares drawings that are adapted to patent practice. The most important part of the application is the set of claims, in which the desired exclusive right is described in words. Once the patent agent has all of the required elements in hand, it will typically take at least six weeks before a first draft of the application is submitted to the inventors for approval. The third step is the filing of the patent application in each of the countries where protection is sought. The fourth step is the examination of the patent application by an Examiner from each of the countries in which an application was filed. In most countries, with the exception of the United States, one has to pay a government fee when requesting the examination of the patent application. The moment chosen for requesting the examination can vary according to the strategy established between the client and the patent agent. Also, one has to keep in mind that there is always a possibility that the application will be rejected because the Examiner determines that the invention is not new, or is obvious, or that the claimed exclusive right is too broad. The Examiner then issues a rejection, known as an Office Action, which must be addressed by modifying the application, if necessary, and by submitting arguments in order to convince the Examiner to reconsider the rejection. If no reply is submitted, the application is deemed to be abandoned. Finally, the fifth step comes about when the Examiner determines that the application meets all the established requirements. A Notice of Allowance is then issued and the patent is granted following the payment of a governmental issuance fee. In the United States, a patent is generally issued between two and four years after the filing of an application. In Canada, a patent is generally issued two to four years after the filing of the request for examination. Each of the above-mentioned steps involves expenses (see the appended table). The paragraphs above briefly outline only the main steps involved in acquiring a patent. Additional steps and more extensive delays may be encountered in some files. Most countries also require annual fees for maintaining patent applications and patents in force. Does one have to file patent applications in other countries to obtain protection there? A patent is only valid in the country in which it has been granted. It is therefore necessary to file a patent application in each country where protection is desired. However, when filing the first application covering a particular invention, it is possible to delay seeking protection in other countries for a period of up to twelve months, under certain conditions. The filing date of the first application will then be considered as the "priority date", which is the date from which the Page 3 of 7

4 inventor has reserved his rights in the invention. The specification and the drawings prepared for the first application can generally be used for subsequent filings in other countries, although translations and formal modifications may be required according to the patent laws in force in certain countries. How much does it cost to obtain a patent? The appended table provides a brief description of the costs associated with each of the abovementioned main steps in acquiring a patent. However, it should be noted that each patent application is unique, and that the time devoted to its preparation and its grant can vary greatly. The same applies to the costs for replying to Office Actions, which may vary according to the nature of the objections and the complexity of the required response. It is therefore impossible to accurately predict the total costs of obtaining a particular patent. Are there inexpensive ways of filing a patent application? It is possible to file an incomplete priority patent application quickly in Canada or in the United States. This procedure is less costly than filing a regular application, since the formal requirements are reduced to a minimum. Such an application is referred to as "informal" in Canada or provisional in the United States. By filing such an informal application, the applicant can obtain an application number for a patent pending, and a filing date which can eventually be used as an international priority date according to the Paris Convention, when regular applications are filed. A "regular" or "complete" application must be drafted and filed within 12 months of the filing date of the incomplete application in order to benefit from the priority filing date. What information is required to prepare an incomplete priority application? It is in the best interest of the applicant that the description include as much detail as possible, since the priority right that the applicant can eventually claim is limited to the descriptive elements contained in the incomplete priority application. It is also important that the best mode of the invention be described in as much detail as possible. Are there any risks associated with filing an incomplete priority application? Filing an incomplete priority application bears certain risks. For example, if the inventor discloses his invention after the filing of the incomplete priority application, but one important element disclosed by the inventor is missing from the incomplete priority application, the protection that the applicant can eventually obtain for this element is put at risk. Also, certain foreign countries require that the scope of a regular application claiming the priority date of an Page 4 of 7

5 incomplete priority application be limited to what is described in the incomplete application. It is therefore important that any new information about the invention which is not described in an incomplete priority application be kept secret until the filing of a regular application. Why file an incomplete priority application? Because of the drawbacks mentioned above, the filing of an incomplete priority application must be evaluated carefully. The filing of an incomplete priority application may be especially justified in cases where a public disclosure of the invention is imminent, and cannot be delayed, or in cases where the applicant wishes to disclose his invention to another person or company in order to obtain funds to develop the invention and eventually file a regular application to protect it. Is it possible to show or to sell an invention before filing a patent application? Some countries, such as Canada and the United States, provide a one-year grace period between the first sale or first public disclosure of the invention and the deadline for filing a patent application. However, it is essential to consider that in most other jurisdictions, notably in European countries, it is impossible to obtain a valid patent if the invention has been sold or publicly disclosed before the filing of a first patent application. Although this first patent application may have been filed in another country, it is absolutely necessary that the extension of the protection in such jurisdictions be made within one year, by filing a patent application that claims the priority of the first application. Does a patent automatically give one the right to exploit the invention without any problems concerning previous patents? A patent does not grant to right to exploit the invention. For example, it is possible to patent an improvement over a previous invention. However, if this previous invention is the subject of a patent that is still in force, it is necessary to obtain the approval of its owner in order to exploit the improved invention, or wait until the original patent expires. Conversely, the owner of the original invention cannot use the patented improvement without the consent of the owner of the latter. Does an international patent exist? There is no international patent as such, but there are several patent conventions between countries that allow a simplification of the initial filing procedures. One of these conventions, known as the PCT (Patent Cooperation Treaty), allows the filing of a single "international patent application", that may be transformed into national patent applications within 30 months of the Page 5 of 7

6 priority date or the PCT filing date. PCT applications are often used by clients who wish to protect their invention in several countries around the world. Another such convention allows the filing of a European patent application, with the possibility of designating most of the West European countries. Further information on this subject can be provided upon request. What are the legal recourses against someone who copies an invention? Generally speaking, no infringement action can be taken before obtaining a patent. It is only when one has been granted a patent that judicial procedures can be initiated. In Canada, retroactive compensation for acts of infringement committed while the patent application was still pending is possible under certain conditions. What information is required to open a file? The following is a list of information which is generally required to open a file with a patent agent and begin the preparation of a patent application: + a description of the field to which the invention pertains; + a description of the technical problems solved by the invention; + a description of the differences between the invention and the articles, apparatuses, processes or compositions known to date for solving these problems; + a detailed technical description with drawings and photographs, if necessary, of at least one embodiment of the invention, comprising the minimum elements or steps necessary for its functioning; + a description of the technical characteristics of the essential elements or steps of the invention, stating how these elements or steps interact, and all the possible variations thereof; + a description of the optional elements or steps; + in the case of processes or chemical compositions, examples of the results; + a description of elements or steps which do not work or do not give useful results, as the case may be; + if applicable, the exact date and place of the first public disclosure, sale or offer for sale of the invention; and + a copy of the documents or descriptions showing articles, apparatuses, processes or compositions previously known and which are relevant to the invention, including all documents located during a previous novelty search. Page 6 of 7

7 Table summarizing the main costs to be expected in the course of acquiring a patent 1 Step 1 (Optional): Preliminary novelty search in the United States, including our written opinion (optional, but strongly recommended) Preparation and filing of an incomplete priority application (informal or provisional) (optional, may be carried out before or after a preliminary novelty search) Step 2: Preparation of the patent application Mechanical other $2250 or more $2600 or more $3900 or more $3400 or more if an incomplete priority application was previously prepared. Or $5400 or more otherwise. Costs may vary according to the extent of the drafting, the number of drawings required and the technological field. The same application may be used for more than one country. Further formal modifications and translations are required in some countries, and may entail additional costs. CANADA UNITED STATES Step 3: Filing of the patent application $900 or more $ or more Preparation and filing of official forms Step 4: A. Request for examination B. Reply to an Office Action (more than one reply may be necessary) Step 5: Issuance of the patent $400 or more $800 ($850 if requested after the filing of the application) $800 or more (per reply) $400 or more (none) $2500 or more (per reply) $745 About $3000 Preparation and filing of an assignment $585 or more $665 or more Maintenance fees Other work Payments are due each year after the filing of the patent application. $220 per year for the first five years; costs gradually increase thereafter. According to our hourly rates and disbursements Payments are due 3½, 7½ and 11½ years after the issue date of the patent. The fees are currently about $1300, $2100 and $3000, respectively. 1. All costs are in Canadian dollars. Please note that our fees and disbursements are subject to GST and QST, and these taxes are not included in the amounts above. The above-mentioned costs are only provided as an indication and are subject to change without prior notice. Furthermore, some of the above-mentioned costs only apply if the applicant qualifies as a small entity with respect to Canadian or American law, which is generally the case for an independent inventor or for a small business. If this is not the case, the government fees will be higher than those outlined in the above-mentioned costs. Payment by instalments is not accepted and a retainer is required before initiating any work. 2. May vary depending on the Canadian/U.S. exchange rate. Page 7 of 7