Patents

A patent is a form of intellectual property granted by a government that provides the exclusive right to an invention for a period of up to 20 years. A patent is only valid in the country where it is granted.

To obtain a patent, an invention must meet specific criteria. It must be:

• Novel – the invention must be new and not previously disclosed to the public.
• Inventive – the invention must not be an obvious improvement or an obvious combination of existing technologies to a person skilled in the relevant field.
• Usefulness/utility – the invention must have practical use and must work as described.
• The invention must also fall into one of the eligible or “patentable” categories, which varies from country to country.

Many processes, machines, manufactures, and compositions of matter, as well as improvements of these, are eligible for patent protection in most jurisdictions. The invention must be more than a mere idea or theory and should have a practical application.

Different jurisdictions have different requirements for patentable subject matter. For example, although methods of medical treatment are patentable in the U.S., they are not patentable in Canada. However, there are ways in which this subject matter can still be protected in Canada. We can help you navigate the different jurisdictional requirements to protect your invention.

• Abstract Ideas
• Scientific Principles and Theorems
• Mathematical Algorithms
• Artistic/Aesthetic works

There may be other forms of intellectual property that can be used to protect patent-ineligible subject matter. MBM can help you explore your options in this regard.

Applying for a patent can be a strategic decision for individuals, companies, universities and research institutions and may be driven by the potential to capitalize on innovation and protect investments. Here are several reasons why to pursue patent protection:

• Protect your market share and competitive advantage:  Patents allow the patent holder to prevent others from exploiting the patented invention without permission.
• Increase your Business Value and Attract Investment: Investors and venture capitalists are often more interested in companies with a strong IP portfolio, as it signals innovation, competitive edge, and the potential for future profits.
• Generate Revenue: Patents can be licensed to other businesses, generating revenue through royalties or licensing fees. Alternatively, the patent is an asset that can be sold.
  Enhance Market Position and Branding: Having patented products can enhance a brand’s reputation for innovation, helping to position the business as an innovator. The “patented” label can be a valuable marketing tool, signalling to consumers that a product or technology is unique and innovative.
• Potential for Cross-Licensing and Collaborative Opportunities: Patents allow companies to engage in cross-licensing agreements with other companies, facilitating collaborations, technology exchange, or access to additional IP that they need. Cross-licensing can also help avoid litigation between companies with overlapping technologies.

Engaging an experienced Patent Agent will help you navigate the complexities of the patenting process and can help you maximize your patent protection.

MBM’s Patent Agents are well-versed in various technologies and patent law, ensuring that your patent is robust and comprehensive. They also offer strategic advice to maximize patent protection and ensure it aligns with your overall business goals. By leveraging their expertise, inventors can significantly increase their chances of obtaining a strong patent that not only withstands potential legal challenges but also effectively safeguards their intellectual property.

Certain public disclosures of your invention may impact your ability to pursue patent protection. Some countries, including Canada and the U.S., have a 12-month grace period for certain public disclosures.

If you have publicly disclosed your invention, please get in touch with MBM to discuss the impact of the specific disclosure on your ability to obtain patent protection.

Obtaining a patent is a complex process that involves several steps. Engaging an experienced licensed Patent Agent is just the beginning of the process. Below is the outline of the process:

• Patent Application Preparation: Your Patent Agent will conduct inventor interviews to obtain the necessary information regarding your invention and will prepare a patent application describing your invention in compliance with the regulations. The patent application must clearly describe the invention, including its components, how it works, and its potential applications. The patent application preparation is collaborative and involves extensive back-and-forth with your Patent Agent.
• Filing the Patent Application: The filing of the patent application requires the preparation of certain jurisdiction-dependent filing documents. Your Patent Agent will ensure that the patent application is filed properly, all required documents are included, and any necessary government fees are paid. MBM Patent Agents will coordinate with trusted foreign associates for the filing of applications in other jurisdictions outside of Canada.
• Patent Application Examination: A patent application is examined by the respective patent office to ensure compliance with local patent laws. The examiner checks if the invention meets patentability criteria, such as novelty, non-obviousness, and utility. This phase can involve several rounds of correspondence between the patent offices and your Patent Agent.
• Patent Grant: If the examiner finds the application meets all requirements, the application will be allowed, and the patent will be granted after the required government fees are paid.
• Maintenance Fees: Government maintenance fees must be paid annually to keep a patent in force for its full term.
• Enforcement and Protection: The patent grants the patentee enforceable rights to exclude others from making, using or selling the invention. It is the patentee’s responsibility to monitor the market for potential infringements and take the necessary action to enforce their patent rights. MBM can guide you in exercising these rights.

In Canada, it normally takes 2-7 years to obtain a patent, depending on technology. There are steps that can be taken to expedite the process if necessary.

If the patent is granted and annual maintenance fees are paid, the patent term is 20 years from the filing date.

Patent prosecution refers to the stage of examination during the patenting process, where there is back-and-forth interaction with the patent office to resolve any objections or requests for additional information raised by the examiner with regard to your patent application in order for it to be granted. These objections and requests for additional information are called “Office Actions”, and your Patent Agent will submit responses to these objections to the Canadian Intellectual Property Office (CIPO). The Office Action responses normally include arguments, amendments to claims, or other changes to the patent application to address the examiner’s concerns. This phase may involve several rounds of office actions and responses between CIPO and your Patent Agent and may take months.

Patent Prosecution can be a complex process as it requires an in-depth understanding of the technology being patented, the complexities of the Canadian patent law and the nuances of the application procedure.

In the context of patenting, Prior Art search refers to any publicly available information that is relevant to determining the novelty and inventiveness of an invention. Prior Art includes publications, published patent documents, public talks/demonstrations, tradeshow displays, or any other form of publicly disclosed information that existed before the earliest filing date of your patent application. Your Patent Agent can discuss the merits of conducting a patent search with you.

Yes, a patent issued in one country does not provide protection in other countries. To obtain patent protection in multiple countries, one must file for a patent application in each country of interest. Your Patent Agent can help you streamline the process of obtaining patent protection in multiple countries.

A PCT (Patent Cooperation Treaty) application is an international patent application filed under the provisions of the Patent Cooperation Treaty. The PCT is an international treaty administered by the World Intellectual Property Organization (WIPO) that provides a streamlined process for filing patent applications in multiple countries.

The PCT application does not result in the grant of a worldwide patent. Instead, it provides a simplified filing process and additional time to make decisions regarding the invention’s commercial viability before incurring the additional expenses of filing individual applications in each country of interest. Each country then examines and grants patents based on its own laws, which may have unique standards and requirements.

The European Patent Convention (EPC) enables inventors to file a single application with the European Patent Office (EPO) to obtain patent protection in multiple European countries.  MBM has trusted European Associates for your European filings.

Patent infringement refers to the unauthorized use, manufacture, sale, or importation of a patented invention without the permission of the patentee in a jurisdiction where the patent is valid. For more information, please see our litigation page.

A Freedom to Operate (FTO) analysis and opinion is a legal assessment that determines whether a product, process, or technology can be made, used, or sold in a particular jurisdiction without infringing on the existing patents of others. This opinion helps companies and individuals evaluate the risk of patent infringement before launching or investing in a new product or technology.

FTO opinions are jurisdiction-specific because patent rights are territorial. An FTO opinion that clears a product for one country does not apply to another, as different patents may exist in each region.

“Patent pending” is a term used to indicate that a patent application has been filed with a relevant patent office but has not yet been granted or issued as a patent. It serves as a notice to the public that the inventor or applicant is seeking patent protection for their invention.

It’s important to note that the use of “patent pending” does not provide any legal protection itself. It simply notifies others that a patent application is pending and serves as a cautionary message. Once a patent is granted, the patent holder can pursue legal action against anyone infringing on their rights.