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Novelty,
Utility, Ingenuity
Novelty
To be granted a patent you must be the original inventor of your door
lock (or the assignee of the inventor). And it must be the first such
door lock in the world.
What's more, you cannot obtain a valid patent in Canada if your invention
was made public before you filed the application. There is, however,
a one-year exception. If you, or someone who learned of the invention
from you, discloses it publicly, you can still file in Canada within
the year following that disclosure. (This applies to Canadian patents,
but not necessarily to foreign ones.)
Utility
A valid patent cannot be obtained for something that doesn't work, or that
has no useful function. If your door lock does not work, it will fail
the utility test.
Ingenuity
To be patentable, your invention must be a development or an improvement
that would not have been obvious beforehand to workers of average skill
in the technology involved. You can't offer an electric door lock that's
merely a bit faster or stronger than others and that any door lock designer
could easily come up with. Your door lock must elicit a "why-didn't-I-think-of-that"
reaction from other designers in the field.
You may obtain a patent for an improvement to an existing patented invention,
but keep in mind that the original patent may still be in force. Hence,
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.
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Registered
patent agents
Preparing and prosecuting—following through on—a patent application
is a complex task. Prosecution involves corresponding with the Patent
Office, making any necessary amendments to the application, and fixing
the legal scope of the patent protection. All this requires broad knowledge
of patent law and Patent Office practice—knowledge that you can
expect from a specialist known as a registered patent agent. A trained
patent agent will ensure that your application is properly drafted so
that your invention is adequately protected. Hiring such an agent is
not mandatory but is highly recommended, and most inventors do so.
Registered patent agents must pass rigorous examinations in patent law and practice before they may represent inventors before the Patent Office. 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.
Patent agents' fees are not regulated by the Patent Office. You and your agent should agree on fees before work on your application begins.
Once you've appointed a patent agent, the Patent Office will correspond with no one else about the prosecution of your application. You may, however, change patent agents at any time.
The Patent Office can provide you with a list of registered patent agents, but cannot recommend any particular one to you.
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When
to apply for a patent
In Canada, patents are given to the first inventor to file an application.
Therefore, it's wise 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 conceive of the invention, you lose
the race if a competing inventor files before you do.
On the other hand, filing too soon, while you're still developing your invention, may mean omitting essential features from the application. You may then have to reapply, adding to your expenses and risking possible patent disputes.
It's imperative, also, not to advertise, display or publish information on your invention too soon. Public disclosure of your invention before filing will make it impossible to obtain a valid patent. There is an exception in Canada if the disclosure was made by the inventor, or someone who learned of the invention from the inventor, less than one year before filing. Most other countries require filing before use or written disclosure anywhere.
Next
steps: the prosecution
The examiner's task
The patent examiner will assess your application to determine whether
it's in the proper format. The next step is a study of the claims and
a search among prior patents and other technical literature to find what
is most closely related to the features covered in your claims. The examiner
will object to what is old, obvious or improper in your claims through
a report to you or your agent.
Patent
Office letter of objection
The examiner's search often results in the objection to some claims.
This is the result of patent agents drafting broad claims in an attempt
to obtain the fullest possible protection. The examiner may discover
previous patents or publications which show every feature of one or more
claims in your application. Or the examiner may judge some claims to
be obvious to a person having ordinary skill in the field. The examiner's
objection will be in a report or letter called a "Patent Office
Action."
The Action may object to your whole application or only some claims,
or it may request other changes in your application.
Responding
to examiner's objections
If the examiner objects to some of your claims, don't
despair. You may respond to the objections as long as you do so within
the period specified in the Patent Office Action. Your patent agent
must send the response, called the "amendment letter," to
the Commissioner of Patents.
The response may ask the Commissioner to amend your application by changing or cancelling some claims, or adding new claims. You must meet or overcome each objection raised by the examiner.
Helping
your agent with amendments
Your agent will carefully study the Patent Office Action to help you
decide whether to abandon your application now, thus avoiding further
expense. If you decide to continue, you may be able to help prepare the
amendment letter. You are in the best position to know the practical
details of your invention, and can point out its novel features and advantages,
as compared with others cited in the Patent Office Action. If you want
to make changes to your invention, inform your agent promptly. He or
she may recommend filing a new application, in accordance with Patent
Office rules, to obtain the full protection you need.
Reconsideration
by the examiner
On receiving your response, the examiner will study it and prepare a
second Office Action. This may be a "notice of allowance" telling
you that you will be granted a patent. Or it may be a call for further
amendments. This exchange of Office Actions and responses may be repeated
until the examiner allows your application or states that the Action
is final.
Appealing
If the examiner makes a final objection to your application, you still
have the right to appeal to the Commissioner of Patents by requesting
that the Commissioner review the examiner's objection. The review is
conducted by the Patent Appeal Board, a special committee of senior
Patent Office officials. If you wish, you can appear before this board.
If the Commissioner objects to your appeal and refuses to grant a patent,
you may take your case to the Federal Court of Canada, and from there
to the Supreme Court of Canada.
Re-examination
of a granted patent
Great! You've been granted a patent. But you still may have hurdles to
overcome. After issue, the Commissioner of Patents or a third party may
ask that one or more claims of your patent be re-examined. This can happen
at any time during the term of your patent. The request must be based
on "prior art" documents, i.e., written descriptions of the
invention that are available to the public. The Commissioner of Patents
may appoint a re-examination board which will issue a certificate cancelling,
confirming or amending your patent claims as appropriate. You may appeal
decisions that cancel or amend claims to the Federal Court of Canada.
You cannot, however, appeal the Commissioner's refusal to set up a re-examination
board.
Reissue
and disclaimer
If you own a patent that inadvertently contains omissions or mistakes,
you may apply to have it reissued within four years of its issue to broaden
or amend its claims, or you may apply for a disclaimer any time after
issue to narrow the scope of some or all of the claims of your patent.
Check
your e-mail tomorrow for Part 3 of the
Guide to Patents in Canada.
If you can't wait to learn
about patents in Canada, you can order
the entire Guide to Patents and download it right now for $9.95 plus tax.
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