Lets assume that you are interested in patent protection for a device
of some sort, like a garden tool, primarily in Canada and the US, and perhaps elsewhere.
A patent is a grant of exclusive rights in an invention. To be patentable in most jurisdictions, including Canada and the US, an invention must be useful and proper subject matter. In addition, it must be novel and inventive.
Proper and useful subject matter generally includes most vendible, utilitarian products, as well as processes for making or treating vendible products. The Canadian Patent Act defines "invention" as any new and useful "art, process, machine, manufacture or composition of matter", or an improvement to any of these categories of subject matter. A garden tool should be proper subject matter for a patent. However,
it is possible that some other form of intellectual property protection may also be appropriate, such as design protection or trade mark protection for the name under which the tool is to be marketed.
An invention is considered to be novel if it was not previously disclosed or known to the public anywhere in the world. An invention is inventive if it would not be obvious to an average person working in the field to which the invention relates, taking into consideration the state of the art on the day you file your patent application (and in some cases on the date of invention).
Most countries other than Canada and the US require that a patent application be filed before the invention is made public through disclosure to third parties or through use. Canada and the US both have independent grace periods which permit an inventor to file an application up to one year after the inventor has publicly disclosed the invention.
Hence, to obtain patent protection outside of North America, it is necessary to file a patent application before there has been any public disclosure of the invention anywhere in the world, although there are exceptions to this in some countries. To obtain patent protection only in Canada and the US, filing of the application may be done up to one year after public disclosure of the invention, although it is preferable to file an application as quickly as possible and before any disclosure of the invention.
To determine whether a particular idea is patentable, I suggest having a patentability search carried out in the US Patent Office records. My fee for having a search conducted by an experienced searcher, my analysis of all located patents and providing a patentability opinion is usually in the range of
$1500 to $2000. These fees may be higher for a complex invention or if a large number of relevant prior patents are located. If you do not require a patentability opinion letter nor a detailed analysis of located patents, then a less expensive "pre-screening" computer based search of selected Canadian, US and European patent databases may also be arranged.
Although a search is not a pre-requisite to filing a patent application, the cost of a search is considerably less than drafting and filing a patent application. Accordingly, if a search reveals that an idea has been disclosed in a prior reference, performing the search will save the expense of preparing and filing a patent application for an invention for which patent protection is no longer available.
The cost to draft and file a first patent application in Canada or the US depends on the complexity of the invention, but generally the cost for filing in the US starts at about $5000
for a very simple apparatus. The cost may also increase if the application requires numerous revisions to incorporate on-going improvements and modifications.
A subsequent application in the other of either Canada or the US would cost much less. For example, filing a Canadian application after a US application has been prepared and filed should currently cost
in the range of $1000 for an individual or a small business.
Several years ago "provisional" patent applications were introduced as a cost effective interim measure for seeking rights in an invention. Such an application merely requires a document which describes the invention, without the need for claims or other formalities. The provisional's description must be sufficient to provide support for the claims of the subsequent complete application without the addition of "new matter". A complete patent application will usually be prepared within 12 months if foreign filings are desired (see below). Provisional applications have limitations and may not always be suitable. The cost of filing a Canadian provisional application depends on the amount of my involvement you desire in preparing the provisional document. In
some cases the cost starts at about $1200.
Please note that patent applications for all countries in which patent protection is desired need not be filed right away in many cases. Often, after filing a first application, you may take advantage of a one year period within which to file patent applications in other countries. The costs of filing overseas vary considerably from country to country.
After filing a patent application, there are normally further costs associated with guiding the application through to the patent grant stage, such as convincing a Patent Examiner that the application is one for which a patent should issue. This procedure is referred to as
"prosecution" of a patent application. The prosecution costs will depend on the number of objections raised by the Patent Examiner and the difficulty encountered in overcoming these objections. Also, once a patent
application is allowed in Canada or the US (and in other countries) there is a final issue fee to be paid.
Finally, for Canada and some other countries, annual government maintenance fees must be paid to prevent an application or issued patent from expiring prematurely . In
Canada, for example, the current cost during the first few years of a Canadian
application is $50 (the annual government charge for an individual or a
small business) plus my nominal fee and
It should be noted that the time span between preparing and filing an application and obtaining the grant of a US patent is often at least two years, and
longer in Canada. Hence, the above costs are not incurred all at once.
In order to prevent others from exploiting your idea prior to you seeking patent protection and to preserve your rights to pursue patent protection outside of Canada and the US, it is advisable that you refrain from disclosing your invention's design to anyone prior to the filing of a patent application. Any disclosure you make of your idea to other parties should be protected by a formal confidentiality agreement.
To determine whether your device might infringe someone else's device, I suggest having an infringement type search carried out in either the Canadian or US Patent Offices, or both. My fee for having the search conducted and providing a preliminary opinion regarding infringement starts at $2000, depending on the complexity of the matter and where the search is conducted.
Patents obtained for clients of Patents Canada™
For even more free information about patents see:
My article titled "Protecting Business Innovation - The Patent Advantage"
The "Guide to
Patents" from the Canadian Intellectual Property Office.