The Benefits of Registering a Patent in Canada
By David Lotimer, February 22nd, 2017
Although we may not realize it, each day every one of us interacts with patented inventions. Our phones, cars, and computers contain hundreds of patented components. Even your favourite tent or sleeping bags have been protected by patents.
There are many benefits to registering a patent in Canada, and it is in your best interest to know these benefits.
A patent is an exclusive right of making, constructing and using an invention and selling it to others. In exchange for full disclosure on how to use the invention (the patent), the Canadian government allows a patent owner exclusive use of the invention for 20 years. The theory behind granting this limited term monopoly is that it provides the incentive for innovation.
This means a patent holder has 20 years of exclusive use of the invention they patent. For example, if you create and patent a new form of transportation, you will have exclusive rights to use that transportation in the way you so choose for the next 20 years.
This exclusive right to use may be very valuable. You will be able to sell these rights, license the rights or use them as assets to attract funding from investors. The exclusive right also prevents anyone else from from copying, manufacturing, selling or importing your invention without your permission. You are able to prevent other competitors from entering into the market.
Perhaps next time you hop on a chairlift, your mind will turn to the patent protecting the technology that gets you to the top of your favourite ski hill. It is that protection that allowed the chairlift inventor to design, manufacture and sell their invention without fear that they would be put out of business by someone copying their idea.
For more information please contact:
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Learning the Game – A Patent Process and Timeline
By David Lotimer, March 7th, 2017
Applying for and obtaining a Canadian patent is somewhat like learning how to play hockey - it can be a complicated process. Just as it takes years to understand the mechanics of the ice, it may take months to construct a patent draft that properly captures the inventive aspects of your invention. The extensive rules of hockey must be learned, just as there are several procedural formalities that must be followed during the patent filing stage. Finally choosing the right stick may be likened to the practical considerations necessary for an inventor, such as public disclosures, patent search reports, and jurisdictional differences.
Don’t let these complications overwhelm you - many people have learned how to play hockey, and you can learn how to file a patent.
There are three basic steps to filing a patent in Canada: (i) Drafting; (ii) Filing; and (iii) Prosecution.
(i) Drafting (4 – 16 weeks to complete) –
Drafting a patent may take days, months, or even years to complete. This timeline is highly dependent upon the complexity of the technology and the scope of the protection sought. It is usually an iterative process between the inventor and a patent agent during which several drafts and materials related to the invention are exchanged.
At the end of the process you will be left with a document containing a Background (address the current state of technology and problems to be solved); a Description (a full enabling disclosure, outlining the “best mode” of the invention); Claims (set the bounds of the legal monopoly, essentially outline the fence of what others are restricted from doing); Figures (drawings or graphs or visual aids to help explain the invention); and an Abstract (brief technical description of the invention).
(ii) Filing (1 day - 1 week) –
After the patent has been drafted, the document must be filed with the Canadian Intellectual Property Office (CIPO). This will involve the submission of administrative information about the inventor or agent (details such as name, address, etc.). Certain government fees must also be paid to CIPO at the time of filing.
Once the application has been submitted, CIPO will process the application and send confirmation of receipt. Upon an examination request, CIPO will commence an extensive examination of the patent to determine if the patent should be granted.
(iii) Prosecution (12-16 months) –
During the prosecution step, an examiner will decide if your patent application meets the patent requirements under law. For example, he or she will judge if your invention is new, useful and inventive, and whether or not your patent is similar to other patents and technical documents.
The examiner will write and issue a report about their findings, which will include any changes they want you to make within the patent. The report will also contain a response timeframe. Only once you obtain a final approval from the examiner at CIPO will a patent be issued.
As an inventor there are other practical considerations that should be at the forefront of your mind. First of all do NOT publically disclose any inventive concepts related to your invention without safeguards in place. Public disclosure may significantly alter the patent rights you are able to obtain. Non-disclosure agreements can be a good tool to avoid such a disclosure.
Also, you may want to undertake a prior art search to make sure that your inventive idea does not already exist. There are public resources available for searching such as the CIPO Patent Database and Google Patents.
Finally, patent protection is territorial; therefore, an issued patent is only valid throughout the country in which it is issued. If you wish to patent an invention in another country, you may apply separately in each country or through certain regional convention offices, established under international treaties or conventions.
For more information please contact:
T: 613.801.1063
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CASL Warning! Private right of action is coming
By Randy Marusyk and Lauren Blaiwais, March 27th, 2017
In 2014, Canada adopted an anti-spam law based on the opt-in model. Enforcement was predominantly the responsibility of the Canadian Radio-Television and Telecommunications Commission; along with the Competition Bureau and Privacy Commissioner. However, as of July 1st, 2017, Canada’s Anti-Spam Legislation* (CASL) will enable a private right of action. This means that individuals and organizations that are affected by a violation of sections 6-9 of CASL will have access to commencing an action before the courts. Additionally, claims may be brought for violations of section 74.011 of the Competition Act (false or misleading electronic messages) and sections 7.1(2) and (3) of PIPEDA (e-mail harvesting).
Sections 6 to 9 of CASL stipulate the restrictions for the emission of commercial electronic messages (CEMs). Unsolicited CEMs are prohibited unless the person to whom the message is sent has consented to receive it – consent may be express or implied. The message must comply with the prescribed requirements and must identify who sent the message; provide contact information to readily contact the person who sent the message, and include an unsubscribe mechanism.
The maximum statutory damages that the court may order for a contravention of s.6: $200 for each violation, up to $1 million/day; for ss. 7 and 8: $1 million/day that a contravention occurred; s.9: $1 million/contravention. As such, this is a call to businesses to ensure that your current consents, unsubscribe methods, electronic communication practices and marketing strategies are in order.
taken from: http://www.crtc.gc.ca/eng/internet/infograph.htm
For more information please contact:
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Lauren Blaiwais, Articling Student
T: 613.801.1057
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* An Act to promote the efficiency and adaptability of the Canadian economy by regulating certain activities that dis courage reliance on electronic means of carrying out commercial activities, and to amend the Canadian Radio-television and Telecommunications Commission Act, the Competition Act, the Personal Information Protection and Electronic Documents Act and the Telecommunications Act, SC 2010, c 23.
Government Funds to Good Use: Helping Small Businesses with First-Time Patent Costs
By Randy Marusyk and Deborah Meltzer, April 3rd, 2017
The Quebec government pioneered its “First Patent Program”, which was launched in July 2015, in order to encourage small to mid-size businesses to protect their intellectual property. Under this program, certain businesses will be eligible to have the provincial government subsidize part of the incurred expense from acquiring their first patent. This initiative is extremely promising, particularly in supporting the growth of young corporations. In fact, a US study conducted by the Office of Chief Economist of the USPTO demonstrated a positive economic impact on startup companies that were given an allowance for their first patent. The results included a 52% increase in sales and a 36% increase in employment.
Other provinces have followed; the Government of Ontario intends to finance their new Scale-Up Voucher Program to facilitate the growth of high-impact companies. Notably, one of the possible uses of these vouchers is to fund protection of intellectual property. British Columbia offers an International Business Activity tax refund for International Patent Businesses, but has yet to implement a supporting program that effectively targets first-time corporate patentees.
The Intellectual Property Institute of Canada encouraged the federal government to fund a program similar to that of Quebec. In fact, this was one of the recommendations made in the December 2016 Report of the Standing Committee on Finance. Hopefully small and medium-sized businesses all over Canada will soon be able to benefit from federal intellectual property protection services for first time patentees.
For more information please contact:
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Deborah Meltzer
T: 613.801.1077
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