Home  |  Profile  |  Patents  |  Trademarks  |  Industrial Designs  |  IP News  | Resources & Links  |  Contact Us

 
   

We Provide Patents, Trademarks, and Industrial Designs in Australia, China, New Zealand, Singapore and Internationally

 
 
Frequently Asked Questions
What is a patent? Territorial Scope
What can be patented and what cannot be patented? Premature disclosure can destroy patent rights
Non-Disclosure Agreement Who can apply for a patent?
First to file gets patent Patentability Searches
Information required to conduct search The patent application and claims
Examination by the Patent Office International considerations and Patent Cooperation Treaty

 

What is a patent?

A patent enables its owner to exclude others from making, selling or using an invention. Patent protection lasts for the term of the patent, provided maintenance fees are paid as discussed below. In Canada, the United States and most other countries, the term ends 20 years from the patent application filing date.
Back to Top

Territorial Scope

A separate patent must be obtained in each country of interest. A Canadian patent protects an invention only in Canada. To protect the same invention in the United States, a separate United States patent is required.

There is no such thing as a "world-wide patent". In some cases, international treaties can simplify the foreign patenting process, as discussed below.
Back to Top

What can be patented and what cannot be patented?

Only "inventions" are patentable. An invention must be new, useful and involve an inventive step compared to the closest prior art. A new and unobvious product, process, apparatus or composition of matter will generally be patentable; as will a new, unobvious improvement to an existing product, process, apparatus or composition of matter. Most types of subject matter are potentially patentable, although some areas are excluded. Problematic areas include medical treatment procedures, marketing or business plans, teaching methods, cosmetic procedures, hair dressing, pedicure, flower arranging, painting pictures, playing musical instruments, etc. However, materials and instruments used in these arts may be patentable.

Special considerations may also apply in the case of some inventions such as computer software, games, living matter, and others.
Back to Top

Premature disclosure can destroy patent rights

In Canada, a patent application must be filed no later than one year after the earliest public disclosure of the invention. Public disclosure includes distributing samples of an article embodying the invention, selling or exhibiting such articles for sale, publishing details of the invention in advertising or other printed material of any sort, public use or testing of the invention, etc. Disclosure to just one person can constitute "public" disclosure in some circumstances.

The United States has a similar one year "grace period." Europe and many other jurisdictions have no grace period whatever. Any public disclosure of the invention, before filing a patent application, can result in loss of patent protection in such countries.
Back to Top

Non-Disclosure Agreement

To preserve potential patent rights, the invention should not be disclosed, prior to the filing of a patent application, to anyone who has not signed a properly drafted Non-Disclosure Agreement.
Back to Top

Who can apply for a patent?

The right to apply for a patent belongs initially to the inventor(s), although there are exceptions. If an inventor sells the rights to an invention to another party, then that party may apply for the patent. If an invention is made during the course of an inventor's employment the employer may automatically acquire the right to apply for the patent, although not always. If an inventor dies or is incapacitated, the right to apply may vest in the inventor's executor, administrator or other representative. In most countries, including the United States, the inventor's signature on the patent application is usually required.
Back to Top

First to file gets patent

If two or more parties apply to patent the same invention most Patent Offices will award only one patent. In Canada and most other countries, that patent will be awarded to whichever party files the first patent application, regardless of who made the invention first. It is therefore important not to delay filing a patent application.
Back to Top

Patentability Searches

Time permitting, it is always wise to conduct a search before applying for a patent. If the invention has been disclosed, anywhere in the world, in a previous patent or publication then the invention may not be patentable.

Worldwide searches are impractical, so a limited search is usually made in only one country. Normally, the search is conducted in the U.S. Patent Office, since it has a large volume of well classified prior art.  Computer databases can also be searched quickly and relatively inexpensively. Database searches are most useful in searching sophisticated inventions which can be described by precise, well known terms of art. They are much less useful in searching mechanical gadget type inventions. No search will "guarantee" the patentability of any invention. The object is to make a reasonable assessment of the prospects for obtaining worthwhile patent protection. Search results are also useful in preparing a patent application.
Back to Top

Information required to conduct search

To conduct a search we need a description, drawings or photographs of the invention, showing how it is made, operated and used. Also helpful are: details of any known prior art; a summary of the prior art's shortcomings; an explanation of how these are overcome by the invention; a list of any other advantages of the invention; and, details of any possible variants or modifications that could be made without departing from the general concept of the invention.
Back to Top

The patent application and claims

A patent application must provide a complete description of the invention (including drawings, where appropriate) sufficient to enable a skilled person to construct a working embodiment of the best mode of the invention known to the inventor.  The patent application includes "claims" to define the scope of patent protection requested. Several claims are typically included to protect different features or combinations of features of the invention. Claims must be carefully worded. Broad claim language is preferable so that competitors cannot avoid infringement by making minor changes to the invention. But, if claims are worded too broadly, they may be invalid; for example, if the claim wording covers not just the invention but also some prior art.
Back to Top

Examination by the Patent Office

Most patent offices employ technically trained examiners who scrutinize patent applications for novelty, inventiveness and compliance with formal requirements. Particular attention is given to the wording of the claims.

More often than not, examiners raise objections that are usually answered by amendment of the application, argument, or both. Sometimes, examiners' objections are fatal to the patent application, but in most countries various appeal procedures are available.  If the examiner is ultimately satisfied with the merits of the application, it is allowed and a patent grant fee must be paid. Grant of the patent usually follows within a few 2-3 months after the payment of the grant fee.  In most countries, it takes two or more years after filing to "prosecute" an application through to the grant of a patent.  Back to Top

International considerations and Patent Cooperation Treaty

Most countries belong to the "Paris Convention." This allows a patent applicant to claim priority in respect of an earlier filed patent application. Applications filed in such countries within one year of the filing date of the original application are treated as though they were filed on the original filing date.

As previously indicated, to obtain a valid patent in most countries it is essential to file a patent application before the invention is publicly disclosed. An important exception applies if priority can be claimed as above. It is normally sufficient to file priority-claiming applications in most countries within one year of the date on which the earliest application was filed, provided that the earliest application is itself filed before any public disclosure of the invention anywhere in the world.

A few countries, e.g. Afghanistan, Andorra, Ethiopia and Saudi Arabia, are not members of the Paris Convention, and special consideration must be given to filing applications in such countries to avoid loss of patent rights there.

The Patent Cooperation Treaty (PCT) provides a simplified procedure enabling Canadian citizens or residents to obtain patents in many countries. A single English language PCT application may be filed and assessed as to patentability on a preliminary basis, before the applicant has to decide whether to incur the additional cost of proceeding with individual patent applications in the various foreign countries of interest.
 Back to Top

 

 
 

| Home | Profile | Patents | Trademarks | Designs | IP News | Client Login | Resources & Links | Contact Us |

 

MACIPO & ASSOCIATES - AUSTRALIA & CHINA INTELLECTUAL PROPERTY LAW OFFICE

© Copyright 2005 by Australia - China Intellectual Property Office of MACIPO & ASSOCIATES. All Rights Reserved.

  Client Extranet Disclaimer Privacy Statement