A Guide to Patents: Part III

Part III: Patent Information – Beyond The Basics

Applying for a patent outside Canada
Convention priority
The Patent Cooperation Treaty
Marketing and licensing
Marketing your invention
Help with marketing
Abuse of patent rights
Financial assistance
Websites of interest

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Applying for a patent outside Canada

Obtaining a Canadian patent does not protect your invention in another country. If you want this protection, you will have to apply for a foreign patent.

For example, suppose you've invented a mountain-climbing snowmobile and hope to corner the market in countries where the machine may be in demand: You'll probably want a patent not only in Canada, but also in the United States, Austria, Germany, and wherever else a mountain-climbing snowmobile could be used. You might also want a patent in Japan, where many snowmobiles are manufactured. Otherwise, someone in one of those countries might copy your invention and market it in competition with you.

You may apply for a foreign patent either within Canada, via the Patent Office under the Patent Cooperation Treaty, or directly to the patent office of the foreign country concerned. But no matter how you apply, you will have to abide by the patent laws of that country. Bear in mind that these laws may differ from Canadian laws.

Convention priority

Many countries, like Canada, belong to the Paris Convention for the Protection of Industrial Property, a treaty that allows you to invoke what is called "convention priority." This means that your filing date in one member country will be recognized by all the others provided you file in those countries within a year of first filing. For example, if you filed in Canada on January 2, 2004, you could file up to one year later in most countries (January 2, 2005) and still be given the same filing rights as if you had filed there in 2004.

Under the Paris Convention, you can file an application abroad, and then in Canada. The Patent Office will recognize the earlier filing date as your convention date if you claim "convention priority" within 16 months of the Canadian filing date. The Canadian filing date must be within 12 months of the convention date. However, your application will be published 18 months after your convention date, not your filing date in Canada.

Note: Being granted a patent in one country may prevent you from obtaining one in another country if you wait too long in filing for the second patent. That is, if your invention is patented and therefore public in Sweden, it will not be considered "new" in Canada, and vice versa. You must file your various applications all within one year in order to receive the benefits of "convention priority" in the other countries.

It is also possible to claim priority based on an earlier filed Canadian application.

Addresses of foreign patent offices are available on the CIPO website (www.cipo.ic.gc.ca/patents).

The Patent Cooperation Treaty

Application for a foreign patent from within Canada is made possible through a treaty called the Patent Cooperation Treaty (PCT), administered by the World Intellectual Property Organization in Geneva. The PCT provides a standardized international filing procedure that is shared by our principal trading partners, including the United States, Japan, and most of the European community.

Under the PCT, you may file for a patent in as many as 137 member countries through a single application filed in Canada. This procedure is simpler than filing separate applications and can give you more time to raise capital, conduct market studies, etc.

Many countries have online patent information. Links to these websites are available through the CIPO website (www.cipo.ic.gc.ca/patents).

When you file under the PCT, you will receive an international search report, which checks your international application against other applications and patents, as well as an initial opinion on the patentability of your invention. You will then have the option of corresponding with an examiner about the possibility of amending your application, and, ultimately, you will receive an international preliminary report on patentability. This is no guarantee of a patent; local patent offices in the countries to which you apply reserve the right to conduct their own examinations, but some accept the results of the international preliminary report on patentability. This means you will receive a fairly reliable indication of whether it's worthwhile to file for multiple patents in foreign countries before fees are due.

Your application for foreign patents filed under the PCT through the Patent Office must be in English or French. You may also be required to pay for translation into the languages of the designated countries if you choose to continue in those countries. Eighteen months after filing (or after the priority date, if there is one), your application will be made available to the public.

Only nationals and residents of Canada can file under the PCT in Canada.

Your application made in Canada under the PCT automatically qualifies for a normal national filing for a Canadian patent application.

Marketing and licensing

Marketing your invention

Now that you've taken steps to protect your creation, you'll want to decide the best way to market it and turn a profit. You have a number of options including going into business yourself, licensing the invention or selling your patent.

Setting up your own business allows you to retain full control of your invention, but means you assume all the risks.

With a licence, you grant one or more companies or individuals the right to manufacture and sell your invention in exchange for royalties. The licence can apply nationally or to only a specific geographic region.

By selling your patent, you give up all rights as inventor, but you could gain an immediate lump sum of money without having to worry about whether the product is a commercial success.

Help with marketing

The Patent Office cannot help you with marketing, but you can receive assistance from other federal or provincial agencies.

Names of Canadian manufacturers who might be interested in a new invention are available from a number of sources, including the Canadian Trade Index, issued by the Canadian Manufacturers' Association. Other sources of names are Fraser's Canadian Trade Directory and The Thomas Register of American Manufacturers. These publications are usually available in public libraries, and many are also available online.

If you wish to make your patent available for sale or licensing, you can publicize your intentions through the Canadian Patent Office Record (CPOR) and the Canadian Patents Database on the Internet. This is a good way to reach potential investors, since many business people, researchers and others consult this publication to keep in touch with new technology. You may place a sale/licence notice in the CPOR and the Canadian Patents Database on the Internet free of charge, if you make your request when you pay your fee on the grant of your patent. At any other time, you must pay a fee for this notice.

The Patent Office has no control over private organizations that promote inventions, and cannot advise you about them. Seek guidance from the Better Business Bureau of the city in which the organization is located, from your registered patent agent, or from the provincial department responsible for industry or consumer affairs.

Abuse of patent rights

Patent rights are considered abused when an owner fails to make the invention available in Canada on a commercial scale without adequate reason.

Financial assistance

The Canadian Intellectual Property Office cannot assist inventors, financially or otherwise, to develop and market their inventions. However, other sources of financing, small business advice and support services are available on Industry Canada's website at www.ic.gc.ca or by calling 1-800-328-6189.

In addition, you may wish to consult the Canada Business website at www.canadabusiness.gc.ca. This organization provides assistance to small businesses at every stage of business or product development. You may also visit the website for information on small entrepreneurship at http://infoentrepreneurs.org.

Websites of interest

The following are just a few additional websites you may find helpful:

Canada Business

www.canadabusiness.gc.ca

Canadian Patents Database

www.cipo.ic.gc.ca/patents

European Patent Office

www.epo.org

Japan Patent Office

www.jpo.go.jp

United States Patent and Trademark Office (USPTO)

www.uspto.gov

WIPO Intellectual Property Digital Library

http://ipdl.wipo.int/en

WIPO International Patent Classifications (IPC)

www.wipo.int/classifications/en

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A Guide to Patents
| Table of Contents | Understanding Patents – The Basics |
| Patents – Getting Started | Patent Information – Beyond The Basics |
| Appendix A - Format of the Application | Appendix B - Filing an Application |
| Appendix C - Small Entity Declaration | Glossary |