How to patent your invention

So, you’ve invented something that’s new, useful, and innovative (the criteria for patent protection). And it’s not yet another app. It’s actually a real world thing.

Let’s say it’s an improved circuit for a power converter controller. Because you’re confident that companies will want to use this advance, you need to patent the design, allowing them to license it and you to profit. But you also know that filing for a patent is complicated and once you do it, your intellectual property will be public.

Who do you call?

Intellectual property lawyers

The experts

Mark P. Roach, registered patent agent, Hicks and Associates Intellectual Property

Doak Horne, registered patent agent and partner at Gowlings LLP in Calgary; and Mechanical Engineer

What they say

Mark Roach:

With the help of a patent agent, you should consider if it meets the three criteria of usefulness, newness, and inventiveness:

1. The “usefulness” criterion is satisfied if your power converter controller performs a useful function in the real world.

2. Determine if the invention is both new and inventive by performing a prior art search. Your agent may review published patent applications, issued patents, scientific and technical journal articles, and public disclosures at conferences and trade shows. A cost-effective way do to a prior art search is through the records of the U.S. Patent and Trademark Office, since it’s the world’s largest market.

If the search finds that your invention already exists, you shouldn’t apply for a patent.

A patent gives you the exclusive right to make and use your invention, as well as the right to license it to others. This right exists to a maximum of 20 years from the date of submitting a patent application, after which the invention reverts to the public domain.

Be wary of starting the patent process while the invention is in the early-to-mid stages of development. The invention could still evolve, and that previous patent wouldn’t protect it. Yet waiting too long means someone else could beat you to filing. You may also be in the early stages of discussions with potential business partners or licensees, so you might want to proceed slowly while refining the invention and ironing out the business strategy.

Here are steps you can take:

1. Provide information to your patent agent that describes how to best make and use your invention. This can include a physical demonstration of a working prototype, photographs, sketches or shop drawings, or a written description.

2. The patent agent will then prepare and file a U.S. Provisional Patent Application to the U.S. Patent and Trademark Office. This lets you claim patent-pending status and will hold your place for one year. Additional provisional patents can also be filed during this period if you develop new features. If you want patent protection in the U.S., you’ll have to file a non-provisional patent application.

3. By the end of the one-year period, regular patent applications must be filed in every country where protection is desired, including Canada.

The cost of obtaining U.S. and Canadian patents for a relatively simple invention is usually $25,000 to $35,000 and disbursed over a two- to three-year timeframe.

Doak Horne:

If you’re already in licensing negotiations with third parties and those potential licensees are large entities in Canada (with more than 50 employees) or the U.S. (with more than 500 employees), you need to file as a large entity. If you misstate yourself as a small entity, that could invalidate the patent.

If you file in more than four countries, it could be more cost-effective to file the Patent Cooperation Treaty application. A PCT application gives you the right to file in member countries (most industrialized countries) within 31 months.

If you file for PCT through Canada’s receiving office, the government fees would be about $4,000. Lawyers charge an additional $1,200. If you’re filing in Canada only, you have to pay the government $1,200.

Typically, the Canadian office takes 18 months to examine an application, but you can request faster examination.

You can only sue someone for infringing upon a patent once the application has been submitted. It takes about three months to review and approve an expedited examination.

Finally, you may prefer to use a lawyer who’s also an electrical engineer, or who understands your technology.