Frequently Asked Questions (FAQ’s)

1. What is a patent?
2. How much does a patent cost?
3. What is a provisional patent application?
4. Can I get an international (i.e. worldwide) patent?
5. Why is a search done before preparing a patent application?
6. What are the requirements for patentability?
7. How can I help my patent agent?
8. What is freedom to operate?
9. How can I find potential buyers for my invention?
10. Can brainstorming sessions increase my company’s patent portfolio?
11. What are the differences between an assignment and licensing?
12. May I tell others about my invention?

1. What is a patent?
A patent grants its owner a legal right to exclude others from making, using or selling the invention to which the patent relates for a specific period of time. A patent may be obtained for new, useful and unobvious products, processes and devices. The term of a patent is 20 years from the date of filing. Once the 20-year term is expired, anyone can freely practice the invention. Separate patent applications must be filed in each country in which protection for the invention is sought. For example, a patent granted in Canada provides rights in Canada only and a patent granted in the United States provides rights in the United States only.

It is important to note that a patent does not provide a right to make, use or sell an invention. For example, it is possible for someone to own a patent for an invention and, at the same time, infringe someone else’s patent by making, using or selling the same invention.

2. How much does a patent cost?
The cost of preparing and filing a patent application includes fees for the patent agent’s time for preparing the application plus applicable government fees payable to the Patent Office(s). For preparing an application and filing it in the United States or Canada, the cost is rarely less than around $8,000 for a relatively simple mechanical invention and is more often around $10,000-$15,000. More complicated inventions typically require more time for preparing a patent application and can incur higher fees.

Once filed at a Patent Office, a patent application is placed in a queue and awaits examination by a patent examiner. The applicant may choose to further delay examination in some countries to defer costs. It typically takes a minimum of 18 – 26 months before an application is picked-up by an examiner. The application is examined to ensure that the claimed invention is new, unobvious, useful and meets all other requirements in the Patent Act and Patent Rules. An application is rarely allowed immediately without any objections by the examiner. Accordingly, there is usually a dialogue required between the patent examiner and the applicant (and patent agent) to place the application in condition for allowance. This dialogue is referred to as “prosecution” of the patent application. Prosecution costs can vary and are rarely less than around $1000 to overcome minor objections from the examiner.

Regular maintenance fees are also required in many countries to maintain an issued patent, and, in some countries, to maintain a pending application. In Canada, maintenance fees are required annually beginning at the second anniversary of filing. Maintenance fees in Canada start at $100 and increase to $450 closer to the end of the 20-year term.

3. What is a provisional patent application?
A provisional patent application provides a lower-cost first patent filing in the United States, establishes a first filing (priority) date for an invention and provides a “patent pending” status. A provisional application is not examined and therefore will not issue to a patent. A formal (i.e. non-provisional) application which does get examined must be filed within 12 months from the provisional filing in order to benefit from the earlier provisional filing. Unlike formal applications which get published at 18-months after filing, a provisional application does not automatically get published.

Since the application does not get examined, there is no specific format that must be followed. Therefore, it is possible to submit any type of document (e.g. drawings, sketches, photos, marketing brochures, technical papers/articles, presentation slides…etc.) in a provisional application. An objective of the provisional application is to establish a filing (priority) date for the invention so it is important to provide a complete and detailed description of the invention. We generally recommend that a provisional application should look like a non-provisional application as much as possible.

An advantage of the provisional application is that a lower-cost provisional filing may provide time to an inventor to further develop the invention, study the market, identify potential buyers and/or raise capital before proceeding with the expense of preparing and filing formal patent applications in multiple countries.

4. Can I get an international (i.e. worldwide) patent?
No, there is no such thing as an international patent. Separate patent applications must be filed in each country in which protection for the invention is sought. For example, a patent granted in Canada provides rights in Canada only and a patent granted in the United States provides rights in the United States only.

The Patent Cooperation Treaty (PCT) provides for an international patent application to be filed but an international application will not issue as an international patent. The filing of a PCT application establishes a filing date for over 140 countries in one instance. Within 30 months from a priority date of a PCT application, the PCT application must generally enter the national phase (i.e. be re-filed) in each country in which protection for the invention is sought. A PCT application is examined by an International Searching Authority which provides search results and a preliminary opinion with respect to the patentability of the invention. Results of the PCT examination may be valuable information necessary for making a go/no-go decision about filing in multiple countries. The PCT also provides a means for deferring the cost of translating and filing patent applications in multiple countries.

The cost of filing a PCT application is typically around $5000 in addition to the cost of preparing the application.

5. Why is a search done before preparing a patent application?
A preliminary patentability search is generally recommended before proceeding with the preparation and filing of a patent application to assess whether the proposed invention is new and unobvious. While one cannot predict what a patent examiner might find in his/her search, a preliminary search often provides a good indication as to whether a patent application directed to the proposed invention will be accepted by the patent office and also of the scope of protection that can reasonably be expected. This information may be useful in determining whether or not to proceed with preparing and filing a patent application.

In some cases, inventors may be aware of the state-of-the art and of what their competitors are doing so a preliminary patentability search may not always be necessary.

Inventors may also wish to conduct a preliminary search on their own using the websites listed on our useful links page.

The cost of a patentability search and having your patent agent review and report on the results is typically around $650 – $1500.

6. What are the requirements for patentability?
There are three (3) requirements for patentability; Novelty; Utility and Inventiveness.

NOVELTY -  In order to have novelty, the invention must not have been disclosed publicly anywhere in the world. The novelty of an invention is lost on a first sale. Only two countries in the World give the inventor a grace period of 12 months to file a patent application after the novelty of the invention has been lost. These countries are Canada and USA. All other countries require absolute novelty. Some countries do not even allow “secret use” of the invention before the filing date.      

UTILITY – A patentable invention must have commercial utility.  The invention must be related to a field of technology; “the branch of knowledge dealing with engineering or applied sciences”. The invention must be more than a mere scientific principle or an abstract theorem.  The invention must have a practical or practicable form.  The invention must have one or more physical elements.       

INVENTIVENESS – The biggest test of all is perhaps the test of inventiveness. The question to be asked is whether or not there is teaching, suggestion, or motivation in the prior art that could have led a person of “ordinary skills” and “ordinary creativity” to modify or to combine the teachings in the prior art to arrive at the claimed invention. The test goes further by asking whether the claimed subject-matter is obvious because the route to the invention, ( the inventor’s approach), would have been “obvious to try“. Ref: (KSR Int. v. Teleflex Inc. USA 2007) and (Apotex Inc. v. Sanofi-Synthelabo Canada, Inc. 2009.)    Inventiveness also means that the invention has a new and unexpected result. A patentable combination gives a result which is more than the sum of the individual elements.      

7. How can I help my patent agent?
The preparation of a patent application requires collaboration and a dialogue between the inventor and the patent agent. As an inventor, you will be asked to provide as much detail as possible about the invention, its uses, the preferred way (best mode) of implementing the invention and any foreseeable modifications/alternatives. A working model or prototype can be very useful in explaining your invention to your patent agent. You may download a sample invention disclosure form to see what type of information is required from the inventor(s). Based on this information, your patent agent will prepare a draft patent application and request that you review it and provide comments.

Do not try to make the information that you provide look like a patent application and do not worry about drafting claims. Your patent agent will take care of this part. It is more important that you, as an inventor, provide a complete description of the invention to help your patent agent understand the inventive concept(s) in your invention.

You may also wish to conduct your own preliminary search using the websites listed on our useful links page. You should provide your patent agent with any prior art that you are aware of that is similar to your invention and also highlight the advantages that your invention provides over what has been done before and/or what is currently being done.

8. What is freedom to operate?
Freedom to operate (FTO) is also sometimes called “right to manufacture” or “patent clearance” and refers to whether a particular action, such as making, using or selling a product, can be done without infringing intellectual property rights of others.

FTO searches can be done within patent databases and can provide an indication as to whether a particular activity infringes any valid patent claims in a specific jurisdiction (country). While no FTO search can guarantee that an activity is cleared of all patent rights of others, they can sometimes prevent costly infringement issues.

9. How can I find potential buyers for my invention?
For various reasons, some inventors may wish to sell or license their patent rights to others. The best potential buyers for your invention may be manufacturers or sellers of similar products who know the market and know the value of a patent in this field. The best buyers may be those who already have one or more patents in a related field. Patents are classified in groups according to their structure and functions so that all inventions relating to similar products can be found in a same location (i.e. classification) in patent databases. Hence, manufacturers/sellers of products in the same technical field as your invention may be identified from other patents in classifications to which your invention pertains.

For example, supposed that you have invented a “trailer hitch for a bicycle”. Trailer hitches for bicycles are classified in a US Classification 280 for “Land Vehicles”; subclass 292 for “Towing Attachments”. A search in the US Patent Database since 1976, using the expression; CCL/280/292 will yield at least 102 results. If you look at these results, you will find that 18 of these patents were assigned or sold before the patent was even published. A partial address including city and state is provided for each owner on the cover page of the patent. A further search using the Internet can provide you with the complete address for each assignee and a starting point for contacting potential buyers.

A similar search in appropriate patent classifications may also be conducted in the Canadian Patent Database.

Existing patent owners in a related or same field know the value and importance of a patent in the field of your invention because they already have purchased, funded or invested in at least one invention in this field. They may also be interested in adding to their patent portfolio. Therefore, patent databases may be a valuable resource to help find potential buyers and licensees for your invention.

10. Can brainstorming sessions increase my company’s patent portfolio?
Brainstorming is a powerful tool to develop new product ideas, solve problems in a manufacturing plant and/or increase sales for example. The power of multiple minds working together can be astonishing and can lead to development of patentable inventions. Every business should conduct brainstorming sessions with their employees on a regular basis. These sessions can promote innovation, self-esteem, bonding among employees and generally improve morale if conducted properly.

There are golden rules to be respected to obtain good results in a brainstorming session. The objective is to encourage the flow of ideas. Members of the group should be encouraged to suggest ideas no matter how unrealistic (i.e. crazy or stupid) they may sound and should not fear being ridiculed. A stupid idea is often a stepping stone to a great idea.

· Invite no more than 10 to12 people and make sure that invitees are aware of the topic(s) to be discussed in advance of the meeting. Ideally, the members should come with a few solutions/ideas to fuel the discussion.
· Appoint a facilitator to facilitate the meeting and make the rules known to everyone: every member is given a chance to talk; no idea is stupid, crazy or too small; and absolutely no judgment or criticism is allowed.
· Record all ideas on a chart for all to see and build on.
· Group similar ideas together to form idea concepts.
· Classify all idea concepts as “most feasible” or “fallback resources”.
· Schedule a follow-up meeting to discuss the feasibility of each idea concept.
· Develop an action plan to implement the most feasible idea concept.

Patentable inventions often stem from brainstorming sessions. Brainstorming sessions may be formal using the guidelines provided above or may be informal between colleagues during a lunch break for example. In any event, the names of anyone who contributed to the inventive concept(s) should be recorded. The information may then be used to determine who should be named as inventors on a patent application. Patent inventorship is an important legal concept. The incorrect naming of inventors on a patent application may be grounds for invalidating any patent that may issue from an application.

11. What are the differences between Assignment or Licensing of Patents
Assignment – An assignment is an outright sale of the patent to someone else or to a corporation. Once an assignment is made, the inventor has no more right over the invention.  An inventor can assign his patent by signing a document prepared by a patent agent.  The document must be registered with the Patent Office to be valid.  An assignment is normally accompanied by a monetary compensation given to the inventor(s).

Licensing – A patent can also be licensed to someone else, to a corporation or to several corporations.  A licensing agreement is like renting the patent to someone else, such as a franchise.  A licensing agreement is a contract executed by both the liensee and the patentee.  In a licensing agreement, the patentee remains the owner of the patent.  The patentee can decide to grant licenses or to terminate licensing agreements.  A licensing of a patent is normally done for a definite period of time, for a specific territory and for a certain royalty to be paid to the patentee for each unit manufactured and sold.  Common types of licenses are exclusive or non-exclusive. Typical royalties are 3%-7% of the retail price of the patented product.

12. May I tell others about my invention?
If you are considering obtaining patent protection, your invention should be kept secret until a patent application has been filed. In order to be patentable, an invention must be new and inventive. A seemingly harmless non-confidential disclosure to someone may be considered making your invention available to the public (i.e. destroying the novelty) and a bar to patent protection in many countries. If you absolutely must disclose the invention to someone before filing a patent application, you should do so under the terms of a suitable non-disclosure agreement (NDA).

However, if you have already disclosed your invention, you may still be able to obtain patent protection in some countries. For example, Canada and the United States both provide a 1-year grace period during which the inventor(s) may file a patent application after a disclosure has been made.