A Guide to Patents: Patent Protection

Steps to obtain patent protection
The preliminary search
Canadian Patents Database on-line
Searching at the Patent Office
Full searching of patent documents using TechSource
Searching at a public library
Preparing a patent application
Assisting your patent agent
Filing your application
Requesting examination
Filing prior art and protests
Advanced examination

Steps to obtain patent protection

The preliminary search

The first step your agent will likely recommend is a preliminary search of existing patents. This will determine if your door lock, or a similar one, has ever been patented before. If so, there's no point in proceeding further, and knowing this beforehand can save you much time and money. Obtaining the information, however, is not as simple as it may sound. You must compare your invention to others and weigh similarities and differences. That's where you are wise to rely on the expertise of your patent agent.

Preliminary searches are not always successful. That is, sometimes the patent examiner finds prior patents or literature that did not turn up in the preliminary search. So don't count on obtaining the patent until it's actually in hand.

Canadian Patents Database on-line

By accessing the Canadian Patents Database, 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. Applications laid open for public inspection in Canada from October 1989 are also available. Searches can be conducted using key words in the title, the name of the inventor, owner or applicant, the international or Canadian Patent Classification, the Patent Cooperation Treaty (PCT) information, the abstract or claims text. It is also possible to search specific documents like PCT documents, non-PCT documents or licence availability.

Searching at the Patent Office

You can also conduct a patentability or infringement search on your own, without a patent agent, by visiting the Patent Office in person. However, you are strongly advised to engage the services of a patent agent or searching firm for this important work. Patent Office staff can direct you and give you useful information but will not do the search for you.

The Patent Office in Place du Portage I, Gatineau, Quebec, holds over 1.5 million Canadian patents. Patent documents filed prior to October 1, 1989, are classified according to the Canadian Patent Classification system. Patent documents filed on or after October 1, 1989, are classified and searchable according to the International Patent Classification (IPC) system.

In addition, there are about seven million U.S. patents classified according to the U.S. Patent Classification system that are accessible electronically in the Patent Office. As a first-time visitor, you may feel overwhelmed by the prospect of a search through so many patents. However, Intellectual Property Search Information Officers are available to help you with your search. The Client Service Centre is open from 8:30 a.m. to 4:30 p.m., Eastern Time, Monday through Friday, except on statutory holidays.

Full searching of patent documents using TechSource

TechSource is an electronic patent system which holds the scanned image of over 1.5 million patent documents dating back to 1920 and the text version of the documents from 1978. The imaging system enables users to view all parts of a patent document from work stations in the Client Service Centre. TechSource includes a search and retrieval component, called Inquire/Text which allows the searching of the patent database. This image and text retrieval capability is currently available at the Client Service Centre in Gatineau.

Searching at a public library

Some public libraries offer Internet access to the Canadian Patents Database.

Preparing a patent application

A patent application consists of an abstract, a specification and often drawings.

The abstract is a brief summary of the contents of the specification.

The specification comprises:

1. a clear and complete description of the invention and its usefulness;
2. claims which define the boundaries of patent protection.

Your specification must be so clear and complete that it will enable anyone with average skill in the technology to make or use the invention.

Information you specify as protected by your claims cannot be used freely (copied, manufactured or sold) by others until the patent expires. Information not protected by your claims can be used immediately by anyone.

The challenge is to draft the claims so that your invention is defined broadly enough to provide maximum protection against potential infringers, while at the same time being sufficiently specific to identify your invention and distinguish it from all prior inventions.

Appendix I shows an example of a patent application.

Assisting your patent agent

You can assist your agent to obtain the strongest possible patent and avoid unnecessary costs by providing him or her with the right information.

Carefully prepare a statement covering the following points:

1. Subject-matter of the invention.
2. A broad description of the invention.
3. Objectives of the invention — its main practical advantages over existing practices or products.
4. The "preferred practice," that is, the most appropriate use of your invention, giving details of at least one practical application. (For example, if you invented a new knitting machine, you should specify what items, such as stockings, sweaters, bags, etc., the machine makes best. You should also mention normal variations to be expected, e.g., how many stockings in a batch of 10 000 knitted by your machine will be defective.)
5. Features of the invention that are new and distinguish it from what has come before. State these features regardless of whether they may be patented.
6. The scope of the invention — the materials, compositions, conditions, etc., used to obtain good results.
7. Limitations. Can one obtain satisfactory results throughout the given range of the invention, or are there exceptions?
8. Results of laboratory or commercial tests illustrating both preferred practice and the conditions under which one could expect unfavourable or hazardous results.
9. Lists of relevant patents or technical articles you've already found in any literature search, including full details such as name of inventor, number of patent, country and date of issue, or name of periodical and date. Indicate the similarities and differences of practices or products relevant to your invention.
10. An indication of any disclosure you have made.
11. Your name, address and citizenship.
12. All countries in which you would like to file for a patent.

Filing your application

Filing a patent application means preparing a formal application and asking the Commissioner of Patents to grant you a patent.

To receive an official filing date in Canada, you must submit no less than the following:

1. statement that a patent is sought;
2. document describing an invention;
3. name of the applicant;
4. address of the applicant or the applicant's patent agent; and
5. prescribed filing fee.

If you do not supply a proper description of the invention, the Patent Office will not give you a filing date and will return the papers you have submitted and refund the filing fee, less $25.

Bear in mind that a complete patent application further includes the following:

1. formal petition (see Appendix II);
2. abstract of the invention;
3. claim or claims to the invention;
4. any drawings mentioned in the description;
5. paper and computer-readable copies of nucleotide sequence listings, if applicable; and
6. appointment of a patent agent or representative when required.

It is in your best interest to file as full a description of your invention and as complete an application as possible right at the outset. Any of items A to F not supplied at the time of filing may be submitted, without charge, within 15 months after the priority date (see Convention priority), or the filing date if there is no priority date. However, if your application is still incomplete after 15 months, you will be notified by the Office, and you will then have to pay a completion fee and complete the application within a prescribed time which will be indicated in the notice.

Don't submit models or specimens of the invention unless the Commissioner requests them.

Once accepted for filing, your application is assigned a number and filing date, and you will be informed of these. This is no guarantee of a patent. It simply means your application is pending. The application will be laid open to public inspection 18 months after the filing date or priority date.

You may request to have your application laid open earlier, if you wish.

Requesting examination

Your application will not automatically be examined simply because you've filed it. You must formally request examination and attach the examination request fee. This request must be made within five years of the Canadian filing date, otherwise your application will be considered as abandoned. If this happens, you may request reinstatement through a letter to the Commissioner of Patents and the payment of the prescribed fee.

Why would you file an application and not automatically request examination? Perhaps you need time to assess the feasibility or marketability of your invention. Filing gives you some protection for your invention without having to fully commit yourself to the patent procedures. Your competitors will likely be wary of infringing on your invention after your application is published because you could seek retroactive compensation in the event that you are granted a patent.

However, if you do not request examination within the five-year period, anyone will be able to freely make, use or sell the products or processes described in your application.

Once you've requested examination, you'll probably be eager to see results quickly. Remember that the Patent Office receives some 30 000 requests for examination a year, and that patent examiners consider cases in the order in which they are received. The examination process may take two to three years.

Filing prior art and protests

Patent applications are made public 18 months after their Canadian filing date, or an earlier foreign filing date, if applicable. Anyone else may raise questions about the patentability of your invention or one of its claims by filing what is known as "prior art" — information that might cause the patent examiner to object to one or more of your claims. The prior art can be patents, patent applications which have been open to public inspection, and published material that has a bearing on the case. An explanation of how the information is pertinent is also required.

Anyone may also file a protest against the granting of a patent. Such protests will be made public.

Advanced examination

Perhaps you have special reasons for wanting an early examination of your application. You expect imminent competition or you hope to establish a business once you've received protection for the invention. If your case is exceptional in this way, you may ask for advanced examination.

Note, however, that an "advanced examination" request will not be considered unless the application has been laid open to public inspection and a request for examination has been made.

A Guide to Patents
| Table of Contents | Patent Protection |
| Patent Information | Appendix I - Format of the Application |
| Appendix II - Filing an Application | Glossary |