How to get a patent

Example of a patent

Most consumer and industrial products are protected by patents. For example, smart phones are protected by thousands of patents on various features, from the way the touchscreen works to the batteries and charging systems.

Even hockey sticks, skates and pucks have been given patent protections. For example, there are patents for:

• how carbon fibre is laminated on top of the wood of the hockey stick, and how the blade attaches to the shaft
• how the boot portion of the skate is molded for the user’s comfort and stability. (The materials that are used to construct the skate and the skate boot itself are also areas where there are significant amounts of research and development—and patents.)
• how the puck is designed, with its beveled edges that help reduce injuries when a puck strikes a player.

“The companies that are making products have invested significant amounts of money in research and development efforts—and a business is there to make money, so they want to recoup that investment in terms of profitability,” Gravelle says.

How to file a patent

1. Find out if you are eligible for a patent

To apply for a patent, a patent application needs to be filed with the patent office. The patent application is then examined by patent examiners.

Gravelle says there are three main criteria for a patent to be granted:

• The invention must be new. There can’t be anything like it elsewhere in the world. Extensive research is often required to determine this.
• The invention must be useful. To meet the criteria of utility, there needs to be economic value. Someone should be willing to pay money for this new product.
• An invention should not be obvious. Does knowledge in the field already allow a person to readily solve the problem that this invention aims to correct?

Take the example of shampoo. Related patents can be granted for the:

• product—such as a new type of shampoo bottle
• composition—for the compound or molecule that reacts with, say, curly hair
• machine— to make shampoo bottles
• process—for making shampoo
• improvement—to any of these

2. Complete a patent search

“In order to determine whether the invention is new and non-obvious, the examiners at the patent office will do a search of previous patent applications and granted patents around the world to see if someone else might have filed an application that is either the same or close to it,” Gravelle says. While a search is not required before filing an application, it is recommended to perform one.

These searches are completed in databases such as:

• Canadian Patents Database
• PATENTSCOPE
• United States Patent and Trademark Office patent database

3. Determine if you need to hire a patent agent

Most people with a promising discovery will hire a patent agent, to help them navigate what can be a difficult and complex process. While some will go it alone and forego the patent agent, there are times when you are actually obliged to hire one.

You must hire a patent agent if:

• the application has been filed by someone other than the inventor
• there is more than one inventor, and the application has not been filed jointly by all of the inventors
• a transfer of the application has been recorded with the office

What does a patent agent do?

A patent agent is trained to understand the law surrounding patents and the patent process for their client. It is not compulsory for a patent agent to be a lawyer, but many of them are. Canadian patent agents need to complete two years of training and then pass a set of exams before obtaining their certification.

A patent agent:

• understands the rules and regulations of patent law
• assists inventors with preparing the patent application
• argues for the patentability of the client’s invention
• helps secure the invention’s legal protection by tailoring the claims to meet the required criteria
• helps demonstrate why the client is entitled to a patent
• attends to the formalities surrounding the filing of a patent application, including paying fees and ensuring deadlines are respected.

You can find a patent agent on the College of Patent Agents & Trademark Agents (CPATA) website.

4. Gather your information

To file your patent, you will need to provide the following information:

• the field of your invention
• a broad description of your invention, including a description of:
  • the main advantages of your invention over existing products or processes
  • details of appropriate use and practical applications
  • new and distinct features
  • scope and limitation in the use of the invention
• any test results you may have already completed
• a list of relevant patents or technical articles
• a list of people who know about your invention
• your personal information

5. Create your patent application

With your information in hand, you’ll be ready to complete your patent application on the CIPO website.

You’ll be asked to pay a patent application fee when you file your application. A list of application fees can be found on the CIPO website.

The patent filing certificate

If your application meets the filing requirements, CIPO will send you a filing certificate that includes your filing date and patent application number.

According to CIPO, you should receive a filing certificate within 15 business days of their receiving your application. Getting your filing certificate means your application is pending; it doesn't guarantee that you'll be granted a patent.

The patent filing certificate marks the date from which certain protections are extended to the invention.

6. Request examination

According to CIPO, you can request an examination when you file your application. Otherwise, for most applications, you have up to four years from your filing date to make a request for examination. If you never make the request, the application will be deemed abandoned.

What happens if a patent application is turned down?

Not all applications are approved. If the patent office turns down an application, the person who applied for the patent then has the opportunity to respond, and may, for example, argue that the examiner is incorrect.

“This is what we call the examination process. There are typically two, three or four examination reports, which are ultimately trying to achieve a point where the invention is worthy of the grant of the patent in the eyes of the examiner,” explains Gravelle.

7. Receive your patent

Your invention is now officially patented. Prior to your receiving the patent, it would have been considered patent pending. With that patent being granted, you are now able to sell the patent or license it. It also means your consent is needed for anyone to produce or sell the invention.

Filing an international patent

Filling for a patent in Canada will not protect your invention in another country.

To receive international protection for your patent, you will either need to file your patent in several jurisdictions or file a patent application through the Patent Cooperation Treaty (PCT), which allows you to defer decisions for the countries in which you will eventually file. The PCT allows you to file for a patent in as many as 153 countries through a single application filed in Canada.

The PCT application filing process is similar to the Canadian one. There is an initial international patent search to determine whether the invention meets the basic requirements of patentability. At the end of the PCT process, you will then need to file and pay fees in every country or region where you want to obtain protection. Depending on the requirements of a given country, your documents may need to be translated to allow the national patent offices to review them. Every state will then review your application according to its own laws.

You can learn more about filing patents internationally on CIPO’s website.

What is the business case for getting a patent?

As the global economy shifts to a knowledge base, the value of companies appears to be moving from buildings and equipment to intellectual ideas, including the knowledge that resides in the employees.

“Intangible assets, like patents, trademarks, industrial designs and copyright, create value for a company. In this shift towards a knowledge economy, it becomes much more critical to be able to protect those intellectual assets by leveraging the intellectual property laws that exist around the world,” says Gravelle, whose practice focuses on patent and technology law, particularly in obtaining and leveraging intellectual property rights for start-ups.

For example, when Nortel went bankrupt a few years ago, it left behind a significant patent portfolio, which was extremely attractive to investors.

“There were about 6,000 patents that covered telecommunications technology, especially mobile phones, and they were auctioned for $4.5 billion,” he says.

Gravelle also says having patents may help to attract investors.

“If you are an up-and-coming business, you want to file a patent application to increase the value of your company,” he says.

“Investors want to see that you take your research and development efforts seriously, and that you take the necessary steps to protect that investment in research and development. Patents have value, so being able to demonstrate that you have proceeded with the filing of patents means that there’s greater value in your company.”

Gravelle, who is also past president and chair of the board of the Intellectual Property Institute of Canada, says businesspeople in Canada are increasingly seeing the value of patents.

“Companies based in the U.S. are ahead of us in Canada. U.S. companies that invent something rush to the patent office without even questioning it. Canadian companies still struggle with being able to justify the investment in a patent application because they don’t see the value—although that is gradually changing.”

How do you protect against patent infringement?

There has been a patent infringement when someone makes, uses or sells your invention without your permission in a country that has granted you a patent.

You have the right to sue for damages if you believe your patent has been infringed. It is best to contact a patent lawyer to help identify the best course of action.

How much does it cost to get a patent?

The price of getting a patent, beyond the research and development costs, varies widely because there are so many different elements.

Just as buying a new car could cost anywhere from around $20,000 to more than $100,000, the price of a patent depends on many factors.

“Engaging in the patent process is a long-term process, and it often takes between three and five years to get a patent. It’s not unusual to have a patent that’s going to cost anywhere from $15,000 to $20,000 per country. So, if we’re talking about three or four countries, you’re looking at $60,000 to $80,000 for one invention, which might be spread out over three to five years,” says Gravelle. Entrepreneurs should consult various patent lawyers, as prices will differ from one company to another. Ultimately, Gravelle says a business will have to determine if applying for a patent makes good business sense.

“A patent should be thought of as a return on investment, and something that will generate revenue. A patent has to be evaluated like any other kind of investment. Is there an opportunity for the business to have a return on its investment? If so, then investing in the patent process makes sense.”

Next step

Try BDC’s free Intellectual property strategy assessment to determine whether your company’s intellectual property strategy is robust enough to help support your growth.