Processing an intellectual property patent

Your client’s daughter, Ashima, is a budding inventor. She’s just devised an improved circuit for a power converter controller, and has already determined it’s new, useful and inventive (the criteria for patent protection).

She wants to patent her design, because she’s confident several companies will want to license it. But she’s hesitant, because a patent would make her intellectual property public. She’s also unfamiliar with the legal process.

Who do you call?

Intellectual property lawyers.

What they say

Mark Roach:

Let’s assume Ashima uses the services of a patent agent. The agent would confirm the invention is both new and inventive by performing a prior art search. He may review published patent applications, issued patents, scientific journal articles, and public disclosures at conferences and trade shows.

A cost-effective way to do a prior art search is through the records of the U.S. Patent and Trademark Office. It’s the world’s largest market, so chances are an inventor would choose to file there. If the search determines Ashima’s invention already exists, she should not apply for a patent. If it doesn’t exist, the best way to protect her intellectual property is by obtaining a patent.

A patent gives Ashima the exclusive right to make and use her 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.

Many independent inventors initiate the patent process while the invention is in the early to middle stages of development. But the invention could still evolve, and that previous patent wouldn’t protect it. And yet, waiting too long means someone else could beat her to filing.

Here are steps Ashima can take:

• She should provide information to her patent agent that describes how to best make and use her invention. This may include a physical demonstration of a working prototype, photographs, sketches or shop drawings, or a written description.
• The patent agent will then prepare and file a U.S. Provisional Patent Application to the U.S. Patent and Trademark Office. This lets her claim patent-pending status and will hold her place for one year. Additional provisional patents can also be filed during this period if she develops new features. If she wants patent protection in the U.S., she’ll have to file a non-provisional patent application.
• By the end of that one year, she should file regular patent applications 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. Those costs are disbursed over a two- to three-year period. Costs for other jurisdictions may be higher.

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; mechanical engineer

Doak Horne:

Ashima is in licensing negotiations with third parties. If the licensee is a large entity 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 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 a Patent Cooperation Treaty (PCT) application. This application gives you the right to file in member countries—most industrialized countries—within 31 months.

If you file a 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. And, 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. Ashima may prefer to use a lawyer who’s also an electrical engineer, or who understands her technology.

Download a sample patent questionnaire form here >

What you learn

Ashima should begin the patent process once her invention’s nearly finalized. The American market is most important to lock down, due to its size and scope.

Evelyn Juan is a Toronto-based financial writer.