A Guide to Patents: Part I (Page 2 of 5)
Understanding Patents - The Basics
Is your invention patentable?
In order to be patentable, your invention must show novelty, utility, and ingenuity.
- Novelty: To be granted a patent, you must be the original inventor of your door lock (or the assignee of the inventor), and the door lock must be the first of its kind in the world.
- Utility: A valid patent cannot be obtained for something that does not work, or that has no useful function. If your door lock doesn't work, it will fail the utility test.
- Ingenuity: To be patentable, your invention must be a development or an improvement of an existing technology that would not have been obvious beforehand to a person of ordinary skill in the technology involved. Your door lock must make other designers in the field say, "Why didn't I think of that"?
You may obtain a patent for an improvement to an existing invention, but keep in mind that the original patent may still be in force. If this is the case, manufacturing or marketing the product with your improvement would probably be an infringement. This situation is often resolved by agreement between the patentees to grant licences to each other.
When to apply for a patent
In Canada, patents are granted to the first inventor to file an application, so it's smart to file as soon as possible after completing your invention, in case someone else is on a similar track. Even if you can prove that you were the first to think of the invention, you lose the race if a competing inventor files before you do.
On the other hand, filing too soon, while you are still developing your invention, may mean missing important features from the patent application. You may then have to reapply, adding to your expenses and risking possible patent disputes.
Again, it is very important not to advertise, display, or publish information about your invention before you are ready to file for a patent. Public disclosure of your invention before filing may make it impossible to obtain a valid patent and jeopardize the possibility of you receiving similar rights in other countries.
What can you patent?
- new kind of door lock
- apparatus for building door locks
- process for lubricating door locks
- method of making door locks
- improvements on any of these
- E = MC2;
- Romeo and Juliet
What to consider before filing an application
Your research and development partner
With so much information stored in each patent, it's not surprising that the Patent Office has the largest collection in Canada of current technological know-how from around the world.
CIPO's data holdings contain more than 2 million Canadian patent publications (grants and open to public inspection applications), most of which are searchable on the website or by doing an in-person search in the CIPO Client Service Centre.
Some of these patents are for "end-of-the-line" improvements, but many are important, pioneer inventions that open up whole new fields in technology. Electronics, for example, started with a patent on a vacuum tube.
The information in these patents not only covers every conceivable field, but is possibly the most up-to-date information available as patent applications are generally made public 18 months after filing.
One of CIPO's goals is to make patent information available to Canadian industries, universities and research centres, to help them keep abreast of innovations. The resources are especially useful to small and medium-sized businesses, allowing them to conduct their own research and development easily and inexpensively.
Not taking advantage of CIPO resources could cost you time and money, especially if you end up "reinventing the wheel." A significant amount of all research and development in Canada does just that, by duplicating patented technology. A search of the patent literature may prevent this kind of wasted effort.
Learning the existing solutions to certain technical problems can also give you ideas for better inventions. In almost any field, some work has already been done somewhere. Perhaps the solution to the problem exists in a foreign patent, and you may be able to use it freely here in Canada.
Patent documents can also reveal trends and sources of new products, show what the competition is doing at home and abroad, and help you find new suppliers, markets or know-how that you can use under licence.
Keep in mind that Canada is a net importer of IP, including patents. Of the more than 6.3 million patents in force worldwide in 2007, approximately 122 000 are Canadian and all are available for you to review. Most of the state-of-the-art technology from highly industrialized countries such as the United States, Japan, or Germany comes to Canada via the patent system.
Summary of benefits of a patent search
If you are a business person, researcher, engineer or student, a search through patent documents can help you:
- identify trends and developments in a specified field of technology;
- discover new product lines which you can license from the patentee or use without needing a licence;
- find information that prevents duplication of research;
- identify unproductive avenues of enquiry by reading about the current state of the art;
- keep track of the work of a particular individual or company by seeing what patents they have been granted;
- find a solution to a technical problem; and
- gain new ideas for research in a particular field.
Your competitors may be using the information in patent documents to their advantage. Can you afford to ignore it?
The preliminary search
A good first step is to undertake a preliminary search of existing patents. This will determine if your invention, or a similar one, has been patented already. If so, there is no need to proceed further.
Preliminary searches can be done by accessing the Canadian Patents Database on the CIPO website. Interactive and easy to use, the Database will allow you to do simple but powerful searches on Canadian patent information from the comfort of your home or office, free of charge.
A more sophisticated search can be conducted in person at CIPO's Client Service Centre. For additional information about services available at the Client Service Centre, please see the section “Searching at the Patent Office,” below.
Searching the Canadian Patents Database online
By accessing the Canadian Patents Database online, you can do a preliminary search of patent bibliographical information since 1869 and have access to descriptions and drawings on issued patents in Canada since 1920.
Searches can be conducted using key words in the title, the name of the inventor, owner or applicant, the International Patent Classification, and more.
Searching at the Patent Office
After searching online, if necessary, you can also take advantage of additional functionality and extended data coverage by visiting CIPO's Client Service Centre in person. It's a good idea, however, to consider engaging the services of a registered patent agent or searching firm for this work.
The CIPO Client Service Centre, located in Place du Portage I, Gatineau, Quebec, is the central point of contact for clients wishing to communicate with CIPO. It supplies, free of charge, information on a variety of subjects such as: procedures for filing patent applications and for registering trade-marks, copyright, industrial designs and integrated circuit topographies.
Intellectual property search information officers provide numerous services, including:
- relating to:
- IP legislation and regulations;
- procedures for filing;
- electronic searching tools (IP databases); and
- products and services.
- guiding clients with IP searches through various IP databases, including:
- Canadian Patents Database;
- Canadian Trade-marks Database;
- Canadian Copyrights Database;
- Canadian Industrial Designs Database;
- U.S. Patent Database;
- U.S. bibliographic data; and
- European bibliographic data.
As a first-time visitor, you may feel overwhelmed by the idea of searching through so many patents. IP search information officers are available to help you with your search (however they cannot do the search for you).
Consider using a registered patent agent
Preparing and prosecuting (following through on) a patent application is a complex job. Prosecution involves corresponding with the Patent Office, making any necessary changes to the application and fixing the legal scope of the patent protection. All this requires a broad knowledge of patent law and Patent Office practice — knowledge you can expect from a registered patent agent.
A trained patent agent will make sure your application is properly drafted so your invention is adequately protected. Hiring such an agent is not mandatory, but is highly recommended.
Registered patent agents are specialists who must pass a rigorous examination in patent law and practice before being allowed to represent inventors before CIPO.
Once you have appointed a patent agent, the Patent Office will correspond with no one else about the prosecution of your application, including you. You may, however, change patent agents at any time, or choose not to have one anymore. Patent agents' fees are not regulated by the Patent Office; you and your agent should agree on fees before work on your application begins.
The Patent Office can provide you with a list of registered patent agents, but cannot recommend any particular one to you. For a list of registered patent agents, visit the CIPO website.
Beware of unregistered patent agents.
They are not authorized to represent applicants in the presentation and prosecution of applications for patents or in other business before the Patent Office.