Our firm has extensive experience in helping clients with patent needs. We understand that your patent needs ultimately serve your business needs and we tailor our patent services to your needs.
If you are wondering what a patent is and why you should obtain a patent, please see our discussion.
We provide extensive patent services in Canada. As a registered patent agent at the United States Patent and Trademark Office (USPTO) for Canadian applicants, we can also help Canadian applicants obtain patents in the United States. With our trusted global associates, we will be able to help you with your patent needs around the world.
Some of the primary patent services are described below. For more information, contact us for a free and confidential consultation.
Applying for Patents:
Applying for a patent is a complex and time-consuming process, and there is no guarantee that a patent will be issued. We advise you and update you with the status of the process every step of the way so that you can make decisions that best fit your needs.
Obtaining patents primarily includes the following processes:
For a more detailed description of the processes and associated costs, please click here.
Patentability Opinion (optional)
Obtaining patent rights could be expensive. Ideally, you will want to have your invention evaluated to assess your chance of obtaining patent rights before having the patent application prepared.
A patentability opinion is based on the results of a patent search. The prior art references found in the patent search, for example, publications such as patent and patent applications that are already published, are reviewed and compared to your invention. An evaluation is of the chances that a patent can be issued for your invention is made.
If the evaluation is not favorable, you can save the costs of drafting the patent application and the subsequent prosecution of the patent application.
If the evaluation is favorable, we will able to tailor the scope of protection to seek for the patent application, which will help us draft patent claims that are more likely to be allowed. This could help you obtain patent rights more quickly and save the costs in obtaining the patent rights.
However, patentability opinion is not required before preparing and filing your patent application, although it could be beneficial. Keep in mind though, the patentability opinion is only a factor to consider for you to make the ultimate decision whether to try to get patent rights for your inventions. Firstly, it is impossible for the patentability opinion to be bulletproof. It is improbable, if not impossible, to uncover all prior-art related to your invention, and the patent offices may interpret the prior-art differently. Secondly, if you believe that your invention is critical to your success, you may want to take the chance and apply for patent anyway even if the patentability opinion is not favorable. In any case, the prior art references could provide inspiration for you to further improve your invention.
Preparing and Filing Patent Applications
A robust patent requires good drafting. In drafting patent applications, we work with you to tease out the essence of the invention so that your invention can be effectively protected in a manner tailored to your needs. A common misunderstanding by the inventors is that only the particular product or process as developed can be protected by a patent, which is not the case. We will help you reasonably broaden the scope of protection such that the resulting patent is not limited to protect only your particular product or process, while also is supported by the disclosure in the patent application. If a patentability opinion is conducted, the prior art will enable us to tailor the patent claims such that they are likely to be allowable in view of the prior art.
Before starting preparing the application, we will also discusses with you so that you can make an informed decision whether to file the patent application initially in Canada, the United States or as a Patent Cooperation Treaty (PCT) patent application at the World Intellectual Property Organization (WIPO). We will take into account the particularities of the requirements in your desired jurisdictions in drafting the patent application. After we draft the patent application, we will send it to you for review and approval.
Many Canadian patent practitioners will recommend you to file a provisional application for patent in the United States first, and then file a patent application in Canada, in the United States, and/or as a PCT patent application based on the provisional application for patent. However, this route of filing the patent application may not be suitable for your business needs. Ultimately, you need to make the decision based on your business needs. For example, if you are a small entrepreneur and only intend to practice your invention in Canada, it may not make sense for you to file the provisional application for patent in the United States first.
On the other hand, if you have an urgent need to stake a claim to your invention, for example, you are going to display your device shortly, it would be preferable to file a provisional application for patent in the United States first to get the filing date. The provisional application has a lower requirement to receive a filing date. For example, a formal patent claim or an oath or declaration is not required for a provisional application for patent. Thus, a provisional application for patent can be more quickly filed for a lower cost.
If you decide to initially file the patent application in Canada, within one year after filing the patent application in Canada, you can file a patent application in the United States or a PCT patent application based on the patent application in Canada, just like you could file patent applications based on the provisional application in the United States. Furthermore, unlike the provisional application in the United States, you are not required to file a nonprovisional application to eventually obtain patent rights.
Canadian Intellectual Property Office has a detailed comparison between the provisional application for patent in the United States and the patent application in Canada, which may be helpful to you. One advantage of the provisional application for patent that may be important to you is that you essentially have up to one additional year to test the market or to seek funding because the patent term is calculated from the filing date of the nonprovisional application for patent.
If you want to obtain patent rights in multiple jurisdictions, for example, Canada, United States, the Europe Union, and China, you should consider filing a PCT patent application with WIPO, which can be the initial patent application or an application based on a provisional application for patent in the United States or a Canadian patent application.
For more information about PCT patent application, please check here. If you do not want to enter so many jurisdictions, you may consider entering the jurisdictions under the Paris Convention, which requires the subsequent patent application to be filed within one year after the filing date of the initial application.
We can file the patent application directly in Canada, the United States (for Canadian applicants), or as a PCT patent application. We can arrange and supervise filing in other jurisdictions.
Filing patent applications in Canada through PCT National Entry or under the Paris Convention
For foreign associates and clients, we help you file the patent applications in Canada either as PCT national entry or under the Paris Convention, after which the application is treated the same as other Canadian patent application.
If you have any questions, please contact us for a free and confidential consultation.
Prosecuting Patent Applications
Typically, a patent is not directly issued from a patent application without some communications between the patent office and you. For example, you may receive communications from the patent office stating that your patent application cannot be allowed to issue as a patent because it is not new, or is obvious, or is not useful, etc. We help you respond to the communications from the patent office by making arguments and/or amending the patent application to persuade that the patent application should be allowed to issue as a patent.
However, please note that there is no guarantee that a patent application will be issued as a patent.
We can prosecute the patent application in Canada, the United States (for Canadian applicants), or at WIPO. We can arrange and supervise the prosecution of the patent application in other jurisdictions.
Helping You Avoid Infringing Patent Rights
You do not want to spend the time and money to develop and market a product only to withdraw it from the market, or worse, be sued for damages because it infringes existing patent rights. You should have your contemplated product analyzed to see if it is likely to infringe existing patent rights early in the development process.
In addition, patent rights enable you to exclude others from making, constructing, and using the invention and selling it to others to be used, but having patent rights does not shield you from infringing another party's patent rights. As such, it is advantageous to analyze your patent to assess if your patented invention is likely to infringe the patent rights of others if your patented invention is practiced.
We can provide you with freedom to operate opinions regarding Canadian patents and cooperate with our trusted foreign associates to provide such opinions in foreign jurisdictions. You can then determine whether to proceed with making, constructing, using, or selling your invention in Canada.
We can also help you respond to cease and desist letters from your competitors alleging that your product infringes their patent rights.
Helping You Stop Others from Infringing Your Patent Rights
Once you obtain the patent rights, you may want to monitor the market for anyone that infringes your patent rights. If you suspect that someone is infringing your patents, we can provide you with opinions regarding whether a suspected product or process is likely infringing your patent rights. We can also prepare cease desist letters for you to such entity alleging patent infringement and respond to cease and desist letter you receive.
Patent Due Diligence
If you are buying or selling a company involving IP rights, we can provide due diligence on the IP rights involved.
Managing Patent Portfolio
It could be advantageous to coordinate your patent strategy and your product strategy and maximize the value of your patent rights. For example, you may not want to keep paying the maintenance fees for the patents that cover products or processes no longer of value to you. We can provide you with practical strategies for the management of your patents and patent applications. We will also utilize our extensive experience in various jurisdictions and work with our trusted foreign associates to provide you with optimized solutions for your needs internationally.
Monitoring and Analyzing Patents and Patent Applications
While you are doing research and developing new and interesting product or process, your competitors are not standing still. As such, you may want to monitor the patents and patent applications of your competitors or in the technical field of your interest.
Monitoring the patents and patent applications of others could help you make sure that you do not get blindsided by the patents and patent applications of others.
When you find a patent application from others that could pose a threat to your business, we can help you find prior art references and submit a protest to the patent office to prevent the patent from being issued, or at least make it harder for the patent application to be allowed to proceed to a patent. Remember, the patent rights usually only lasts 20 years from its filing date, and any delay before the patent is granted could be beneficial to you.
The patents and patent applications of others may also provide inspirations to your future products and processes.
From the latest patent applications and patents, we can help you analyze the published patent applications and patents to show you the trend in the field of your choice. You can then determine whether you should also develop products and/or processes that follow the trend depending on your area of expertise and budget. We can also provide you analysis based on applicants so that you know who is your most significant competitor.
Ready to start? Contact us for a free and confidential consultation.