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Summary of steps to obtain a patent in Canada
- Find a patent agent.
- Do a preliminary search. (If there's an existing patent, consider ending the process now.)
- Help your agent prepare a patent application.
- File your application.
- Request examination.
- Examiner does search for prior patents and studies claims.
- Examiner either approves or objects to the claims.
- Respond to examiner's objections and requirements.
- Examiner reconsiders and either approves or calls for further amendments.
- If final
decision is objected to, you may appeal.
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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.
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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 123 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.
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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.
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Fees
There are three kinds of fees you must pay to obtain a patent: filing fees,
examination fees and grant of patent fees. Yearly maintenance fees
are required to maintain an application or a patent in force.
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.
Please note that payment may be made by credit card (VISA, Master Card or American Express), direct payment, deposit account, postal money order or cheque payable in Canadian dollars to the Receiver General for Canada. Do not add federal and provincial taxes.
Check
your e-mail tomorrow for Part 4 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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