Patents

Patents are documents which, once issued by the government of a country, govern and describe the rights granted by the government to the inventors or otherwise to the owners of the patents.

A patent is obtained by applying to the patent offices of the countries where protection is desired for such protection.  It is very common for Canadian inventors to file patent applications not only in Canada, but in the United States as well.  This way, the inventors are able to obtain "patent pending" status in both countries.  Approximately between 10 to 20 percent of these patent applications are, in our experience also filed as international patent applications which potentially provides patent pending status in well over 100 countries ( that is most of the industrialized world and then some).

In every country or region (some type of patent applications cover entire regions, such as in Europe or Africa), and with the exception of South Africa, a patent application is reviewed by a government patent Examiner to see if the patent application describes and claims patent protection for an invention, that it is for a useful apparatus, process, method, composition, etcetera which is new and unobvious when compared to what has previously been made known to, or would have been obvious to, those "skilled in the art" ( that is, to a reasonably skilled technician in the relevant technology having  knowledge of prior art elements and their conventional uses and the predictable results of such uses when used in combination, to over simplify the law).

If the Examiner assigned to the application agrees that the invention as claimed is patentable, whether initially or after a negotiation process known as prosecuting the application, then upon paying the required government fees a patent will then issue.  The issued patent will grant the claimed protection for a period of 20 years counting from when the application was first filed.  This, again, is over simplification of what can be a convoluted lengthy and costly procedure.  For example, the same patent application does not have to be filed at the same time in all countries or regions of intent, but may be delayed for up to 2 ½ years after filing a first patent application (for example in Canada and/or the United States).  Further, Examiners in the various patent offices apply different standards when determining whether or not to allow a patent application.  The standards vary between countries, and also often vary between individual Examiners in any particular patent office as the legal tests to be applied are subjective and at the initial patent application a single Examiner is often both judge and jury.  In the United States Patent Office, the current mandate, based on our experience, appears to be to set the barriers to obtaining a patent ever increasingly higher.  The Examiners in the United States are rejecting more patent applications than ever before by subjectively applying the legal tests set out in increasingly hostile Court decisions, including those of their top Court.  The result is, that for many inventions, more than one round of negotiations with the Examiner is required and due to frustration with this process, many inventors choose to walk away from their patent applications which patent applications, only years ago, would likely have resulted in issued patents in a relatively straight-forward manner.

There are many, many procedural and timing complexities involved with the patent prosecution (from filing through to granting of the patent) and maintenance processes, as well as numerous deadlines to be monitored and attended to as they come due.  As just one example, even after patents have issued, periodic payments known as maintenance fees must be paid to the relevant patent office in order to keep the patent alive.  In most countries this is done every year on the anniversary of filing the patent application.  In the United States, the maintenance fees are paid at three regular intervals once the patent issues.

Although in the past we have had a success rate in obtaining issued United States patents which has been much higher than the historical United States average which we understand to have been around 60 percent (that is, until recently the United States patent office has allowed approximately 6 out of 10 patent applications), overall success rate has dropped along with the drop in the average allowance rate.  The present average rate of allowance of United States patent applications is reportedly about 40 percent (only 4 out of 10 are allowed), and may drop further if the trend continues.  Our success rate, however,  remains above what used to be the average rate of allowance.

The way we presently, and have in the past, maintained a high rate of allowance is to do our homework before we present a patent application to the United States Patent Office, or for that matter any patent office.  This entails firstly familiarizing ourselves with the invention – how it works, why it is an improvement or what problem it solves, why there may be commercial need or acceptance, how it has been attempted in the past (by the inventor or by others), and what are similar or competitor technologies.  Next, a thorough patent search is conducted, evaluated and our opinion as to patentability provided to and discussed with the inventor.  The inventor is also encouraged to independently search for publications (such as on the internet) relevant to the invention in order to more completely evaluate whether the invention is patentable.

With the patentability having been discussed, including the validity of the patent application due to any premature disclosure of the invention to the public, proper subject matter for patent, proper inventors named, etcetera, then the inventor decides whether or not to proceed with having us prepare, file and prosecute a patent application.

Patent services traditionally include:

(1)        the investigation, including patent searching of inventive ideas, concepts and prototypes and reporting our patentability opinions to our clients;

(2)        the preparation of patent applications including informal and formal drawings as required, textual content including the field of the invention, a background of the invention, a brief description of the drawings, a detailed description of known   embodiments, and claims defining the monopoly being sought;

(3)        the filing of the patent application with the patent office(s) in the country or various countries or regions as desired in order to obtain patent pending in those countries or regions;

(4)        negotiations with the various patent offices, through foreign associates as required, in order to establish patentability under the laws of the various countries or regions;

(5)        obtaining allowance and issuance of the patents upon successful conclusion of the negotiations with the patent offices;

(6)        tracking all deadlines in relation to the above and providing timely warnings in advance of upcoming deadlines so that the appropriate steps may be taken to successfully obtain the patents; and

(7)        tracking on-going deadlines, including the typically yearly requirement to pay so-called maintenance fees to the patent offices in each country.