A Guide to Patents: Patent Protection

Non-resident applicants
Applying for a patent outside Canada
Convention priority
The Patent Cooperation Treaty
What does "protection" mean?
Patent infringement
Protection before grant
Trade secrets
Patent marking and "patent pending"
Fees
Maintenance fees
Marketing and licensing
Marketing your invention
Help with marketing
Financial Assistance
Abuse of patent rights
Corresponding with the Patent Office
Electronic services

Non-resident applicants

An applicant for a patent who does not appear to reside or carry on business at a specified address in Canada shall, on the filing date of the application, appoint as a representative a person or firm residing or carrying on business at a specified address in Canada.

Applying for a patent outside Canada

Obtaining a Canadian patent does not protect your invention in another country. If you wish such protection, you will have to apply for foreign patents. Suppose, for example, 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 so on, wherever 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 (PCT), 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.

In some countries, for example, you lose the right to a patent if your invention is disclosed before the filing date. (Remember, in Canada and in the United States there is an exception. This is not the case in most other countries.)

Many countries require that your patented invention be manufactured or otherwise worked in that country within a certain period, usually three years. In some places you may have to allow some other company or individual to manufacture your invention. (This is called granting a compulsory licence.)

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 1, 2004, you could file up to one year later in most countries (January 1, 2005) and still be accorded the same 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 four 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 that being granted a patent in one country may bar you from obtaining one in another if you delay 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.

Under the current Act it is now possible to claim priority based on an earlier filed Canadian application.

For addresses of foreign patent offices write to Canada's Commissioner of Patents. The Commissioner's staff will supply you with any addresses that are available.

The Patent Cooperation Treaty

Application for a foreign patent within Canada is made possible through a treaty called the Patent Cooperation Treaty (PCT), administered by the World Intellectual Property Organization, in Geneva. It provides a standardized international filing procedure, which 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 133 member countries through a single application filed in Canada. This procedure is simpler than filing separate applications and enables you to defer costs. For example, instead of filing in the language of each country and paying, within a year of first filing, all translation, filing and agent's fees, you can file in one language and have up to 30 months to pay some of these fees. This gives you more time to raise capital, conduct market studies, etc.

When you file under the PCT, you will receive an international search report, which checks your international application against other applications and patents, and an initial opinion on the patentability of your invention. You then have the option to engage into a dialogue with an examiner with the possibility of amending the application, and ultimately 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 they often accept the international examination report. This means you will receive a fairly reliable indication of whether it's worthwhile to seek 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 provide for translation into the languages of the designated countries if you choose to continue in those countries. Eighteen months after filing, 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 if you have designated Canada.

What does "protection" mean?

Patent infringement

Patent infringement would occur if someone made, used or sold your patented door lock without your permission in a country that has granted you a patent, during the term of the patent.

If you believe your patent is infringed, you may sue for damages in the appropriate court. The defendant may argue that infringement did not occur, or may attack the validity of your patent. The court will determine who is right, basing its decision largely on the language of the claims. If what the defendant is doing is not within the wording of any of the claims of your patent, or if the patent is declared to be invalid for any reason, there is no infringement.

Protection before grant

When you obtain a patent in Canada, you will be able to sue infringers for all damages sustained after the grant of your patent. Also after grant, you may sue for reasonable compensation for infringements that occurred in Canada from the date your application was made available for public inspection (18 months after filing) to the date of grant.

Trade secrets

You may be tempted to protect your creation by simply keeping its information secret and selling it to a willing buyer. The information is then known as a trade secret. You will run into problems, however, if another person independently invents or discovers the subject matter of the trade secret. There is nothing to prevent that person from using it, applying for a patent or publishing the information.

Patent marking and "patent pending"

The Patent Act does not require that patents be marked as "Patented." However, marking an article as patented in Canada when it isn't is against the law.

You may wish to mark your invention "Patent Applied For" or "Patent Pending" after you have filed your application. These phrases have no legal effect but may serve as warnings to others that you'll be able to enforce the exclusive right to manufacture the invention once a patent is granted.

Fees

The patent process requires the payment of specific fees in order to obtain or maintain a patent or patent application. While there are three basic types of fees required to obtain a patent — filing fees, examination fees, and grant of patent fees — a fourth type, maintenance fees, is required to ensure that your patent application or patent remains current.

Maintenance fees

Maintenance fees encourage applicants and patent holders to re-evaluate the economic value of their applications and patents on a yearly basis. Owners of valuable patents who are benefiting from the patent system must pay these fees or their patent rights will expire before the maximum 20 years. On the other hand, owners of inactive patents may choose not to pay maintenance fees, thus letting the patents lapse and enabling others to use freely, at an earlier date, the technology described in those patents.

For applications filed after October 1, 1989, and for patents issued on these applications, maintenance fees are payable starting on or before the second anniversary of the application filing date; but for patents issued after October 1, 1989, as a result of applications filed before October 1, 1989, maintenance fees are payable starting on or before the second anniversary of the patent issue date.

In all cases, maintenance fees must now be paid on or before the starting date of the period covered, rather than before the expiry date of the period as was the practice prior to October 1, 1996. Failure to do so, will result in the abandonment of an application. However, reinstatement of the application is possible. For a patent, on the other hand, maintenance fees may be paid late within a one-year grace period, subject to a late payment charge, but failing this the patent will lapse with no possibility of revival.

You will find more details about fees in the How your Patent Application is Processed and Securing your Investment: Patent Maintenance Fees leaflets. You can also consult the "Tariff of Fees," Schedule II of the Patent Rules.

Marketing and licensing

Marketing your invention

Now that you've taken steps to protect your brainchild, 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. However, if you have not obtained protection in a certain country, your invention can be used freely by anyone there, even if you're protected elsewhere.

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.

It is important to keep your invention secret until your first patent application is filed, in order to preserve your rights to file later in most foreign countries.

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.

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 of reaching 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.

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 or by calling 1 800 328-6189.

In addition, you may wish to consult the Canada Business Service Centres. 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.

Abuse of patent rights

Compulsory licences may be granted to remedy what is called "abuse of patent rights." Such abuse can be considered only three years after grant. Hindering trade and industry is considered as an abuse. Abuse situations include:

• not meeting demand in Canada;
• hindering trade or industry in Canada by refusing to grant a licence (if such a licence is in the public interest), or by attaching unreasonable conditions to such a licence; and
• using a process patent to unfairly prejudice production of a non-patented product, or allowing the patent on such a product to unfairly prejudice its manufacture, use or sale.

If someone applies for a compulsory licence because they believe that an abuse situation exists, you may be required to prove that you are not abusing your patent. In making a decision about such a situation, the Commissioner tries to ensure the widest possible use of inventions in Canada, maximum advantage to the patentee, and equality among licensees.

You may appeal decisions by the Commissioner on abuse to the Federal Court of Canada.

Corresponding with the Patent Office

Business with the Patent Office is normally done in writing.

Correspondence procedures

Emergency procedures

If you are enquiring about the status of your pending application, give its serial number, your name and the title of the invention. If you've hired a patent agent, conduct all correspondence through that agent.

Arrange any personal interviews with patent examiners by appointment. This gives them time to review your application before seeing you.

The Office will respond to all general enquiries. The Office cannot, however:

• advise you whether to file an application;
• tell you whether your invention meets patentability criteria prior to your filing an application;
• tell you whether or to whom a patent for any alleged invention has been granted;
• advise you as to possible infringement of a patent; and
• act in any way as an interpreter of patent law, or as a counsellor, other than in matters directly related to processing your application.

Electronic services

With the latest additions to our electronic service delivery for patents, you can now, through a simple online transaction, file a patent application, register documents, pay various fees, exchange correspondence or request national entry for a PCT application. To perform one of these transactions via our website, simply fill out and send the appropriate form. You will also find instructions on use and even a tutorial about writing a patent application.

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