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OVERVIEW |
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INTRO
WHY YOU NEED PROTECTION
- Without some form of intellectual property, pending or
registered, you risk that someone, some company, or some
country will appropriate your invention, and claim it as their
own.
- You could end up in court for years, fighting for what was
yours to begin with, only because you neglected to take the
necessary steps to stake your claim properly and as early as
possible.
- Due to our proximity to the US, Canadians think we know
what our law is based on US television. With respect to
patent rights, Canada is a first to file country, whereas the
US is a first to invent.
- This means that if you show your unprotected invention to someone who
knows that we are a first to file country,
they can legally file for a Canadian patent on your idea, and
you cannot
stop them. If someone tried that in the US, not only would it
be a felony, but if you could prove they willingly stole your
idea, they would be liable for triple damages. Canada does not
offer those kinds of protections.
- It is up to you to prevent unwanted disclosures, and to
make sure that you have at least some legal and
documented claim to your invention filed
as soon as possible. For a more detailed explanation of
the issues involved, view the
Protecting Your Invention 101
slideshow
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What protection is available?
- A patent certifies the inventor's exclusive
right to make, use, or sell a specific product or process.
Examples of patentable items include machines, mechanical
devices, methods of manufacture, matter, software algorithms,
etc. Patents are usually protected for 20 years.
- A design patent or industrial design certifies
the inventor's exclusive right to make, rent, or sell the
aesthetic qualities of a functional article. Examples of
designs include the shape of a bottle, the configuration of an
office chair, the architecture of a building, or the
ornamentation of a car. Designs are usually protected
for 10 years, and are less expensive to obtain than utility
patents.
- Preliminary patent pending status can be
obtained by filing a US provisional application for a
utility patent, or by filing an incomplete Canadian patent,
both which give the inventor up to a year before they must
complete their basic filing. There are no preliminary forms of
patent pending status for design patents or industrial
designs.
Click here for a USPTO Brochure on Provisional Applications
- In Canada, an inventor can file a patent application
to protect any functional mechanism or process, and an industrial
design to protect any ornamental features of an item.
Click
here for a Guide to Canadian Patents.
Click here for a Guide to Canadian Industrial Designs
- In the United States,
one may file a utility patent for products or processes, and a
design patent to protect the ornamental features of that product. One may
also file a provisional application for a utility patent,
which permits up to a year patent pending status when a
utility patent application is filed before the provisional
expires.
Click here for a USPTO booklet on Utility Patents
Click here for a USPTO booklet on Design Patents
- Internationally, one may file a patent in each
country where they want to sell their product, but that is
very costly and time consuming to do nowadays. An international application
system now standardizes patent applications, and allows the
same document to be reviewed & submitted to multiple countries
for examination. Usually, a successful preliminary examination
and search can expedite national filings.
- For more detailed
information about international filings, go to the
NEXT STEPS page.
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Roadblocks to
protection
- Your invention must be new, theoretically
new in the entire world, but practically, new in the
jurisdiction in which the patent is filed. An invention
that is not new can be in the public domain, which means
anyone can produce it, or it can be owned by its patent
holder, which means that you cannot get a patent for it, and
if you attempt to produce it without licensing, you can be
sued for patent infringement.
- Your invention must have utility, or be useful,
which means it must improve the state of a particular field,
and be capable of showing that it works as claimed.
- Your invention must be non-obvious, which means
that someone skilled in the same field would not declare it
obvious. This category is the most subjective, and the most
fought over, and is one of the primary purposes of a patent
specification, namely to make the case for an invention being
significantly inventive enough that it isn't obvious at first
glance.
Public Disclosure & Grace periods
- In some countries, patent rights may be immediately and
permanently lost if anyone makes any public disclosures
or publications of the invention without prior patent
registration.
- In Canada and the US, there is a grace period of up to
one year, which allows an inventor to disclose their product
to the public, but they must file for a patent before it
expires or forever lose the right to their invention because
it will have entered into the public domain.
- As discussed below, it is imperative that Canadians
file for some form of patent protection before disclosing
anything critical about their invention, or face the risk of
being scooped by someone who files a patent for their idea in
Canada.
- While Canada has a grace period, it also implies that
every effort is made by the inventor to file some form of
disclosure with a patent office as soon as possible. If
sufficient information is filed, via provisional (US) or
incomplete application (CA), then there is a record of who got
there first.
- The goal of public disclosure is to attract investors
and sales, but investors will not invest if you don't have the
intellectual property rights to your invention, and sales
could be seized if your are sued for infringement. The more
valuable your invention, the more you risk without protection.
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Canada vs. US
Filing Hazards
- A "First to File" country like Canada, and most of the
rest of the world, grants patent rights to those who apply for
the patent first. This may not be the actual inventor.
- A "First to Invent" country like the United States, grants
patent rights to those who can prove they came up with the
invention first.
- This means that a Canadian inventor who brags about
their idea to the wrong person might end up being sued by that
person because they now legally own the actual inventor's
idea.
- If a Canadian files a US provisional, or an incomplete
Canadian patent, and discloses their idea to someone who tries
to file for their patent, eventually the perpetrator will be
caught.
- US citizens have right to sue anyone who knowingly
steals their ideas for triple damages, and the crime is a
felony. In Canada, we have less proactive intellectual
property enforcement.
Non Disclosure Agreements (NDA)
- If an inventor actually needs to disclose their
invention to another person, and there is no implied
expectation of confidentiality, such as when an inventor hires
a designer or draftsman, then it is critical that a
non-disclosure agreement be signed by the person prior to viewing the
invention.
- If an invention, or any information about said invention,
is to be known as confidential, it should be labeled as such.
A person can rightly claim that they didn't know that
something was confidential, or another's trade secret, if
there was no way they could have known.
- Require that everyone who has access to an invention or
valuable trade secrets, know that they are confidential and
proprietary, and should not be disclosed to anyone without
written clearance.
- In Canada, a non-disclosure agreement is governed by
commercial contract laws, and any breaches are penalized by
the assessed value that has been lost by the breach.
- In the US, a non-disclosure agreement is governed by
Trade Secret legislation, and violations are charged as a
felony crime.
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Invention Marketing Fraud
- Basic information about the patenting process is seldom
taught in high school, and is only briefly ever described in
technical, engineering, or business school.
- It is no wonder that there are so many people who believe
in the claims of invention marketers, as they have little
access to the proper information.
- Invention marketers offer to evaluate, protect, and
market your invention for fees that are at least as high as
legitimate patent agents and lawyers.
- The problem is that they do not actually do patent
searches, file applications, do any marketing, and often
cannot even properly grasp the workings of the inventions
submitted to them.
- The US Federal Trade Commission has many pending
lawsuits against invention marketing promoters, but these
cases take so long that the companies being sued just
change their names and continue to defraud people. See a
list of current complaints
here. Scam brochure
here.
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timing
Patent Costs vs. Sales
Income
- Two questions inventors seldom ask themselves are:
Why do I want a patent? Is this the right invention to patent?
- Do you just want to be able to brag that you're an inventor
because the patent certificate says so?
Or do you actually
want to put a product on the market that both generates sales
income above the costs of patenting and maintenance fees, and
improves the state of the art in some significant way?
- If your invention is something that will likely be in a
dollar store in six months, you won't be able to afford the
patenting costs, even when substantially lowered by employing
Inventive Solutions.
- If, however, your invention solves a problem that is
normally expensive to work around, and other solutions are
more costly or difficult to implement, then you will likely
have a market where you can generate sufficient revenue to
justify the difficulties and challenges. Discussion Paper
here.
- Inventors should consider these long-term issues before
they commit to a particular invention. They may discover that
a different invention more realistically justifies all
the effort and expense they will need to protect, manufacture,
market, and sell it.
When should you
start a patent
search?
- Once an inventor has developed an idea far enough that
it can be described clearly and concisely, it is time to
decide whether it is valuable enough to take to market. Market research is the responsibility of the inventor, and
they are usually best suited to decide if their product is the
best solution for a particular field.
- One way to tell what your competitors are doing is to
look at the patents they've filed. A significant portion of
market research information can be generated from a Patent
Search Report (PSR), but the inventor should do the
preliminary market evaluation before the search.
- Market research is looking at competing products, and
comparing your solution to their market share. Will your
new product be able to overcome a customer's natural
resistance to trying out something untested, and capture some
of that market share from other products?
- If you are secure that you have a market for your
product, because you have done the honest evaluation that is
needed to predict that your product may be successful, then it
is time to see if it is original. Only then, should you ask
Inventive Solutions to begin a patent search for you.
- Another timing issue is whether you are ready to
proceed with filing an application soon after the results of
the search are available. If you delay for even a few months
after the search, there is a possibility that new inventions
might be filed that will eventually invalidate your
application.
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When should you file an application?
- You have had a thorough patent search done for the
jurisdictions where you intend to sell, and the report shows
nothing close to your idea. How quickly do you need to
file an application?
- When to file depends on whether you've made any public
disclosures and when, whether you plan to make any public
disclosures soon, your ability to pay for patent services &
filing fees, whether a competitor is planning a similar patent
filing, and whether your product is fully developed yet.
- Usually, it is best to document and file for some form
of protection as soon as possible. But sometimes it is good
strategy to wait until your product has proven itself before
filing because a patent application is usually posted to the
public database 18 months after filing. (6 months after a
provisional term expires)
- These are the kinds of decisions that need to be made by
an inventor and trusted advisors, or a company board of
directors with their technology development management.
Knowledge of the prior art of competitors is sometimes only a
part of the information available to decision-makers.
- The advantage of filing provisional applications or
incomplete applications is that during the year you still have
time to develop your product, and if you come up with
additional ways to solve the same problem, or better ways to
achieve your aim, you can still file this information without
losing your place in the line for the original filing. For
related details, see the
DOCUMENTS page.
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Do you need a prototype?
- Inventors no longer need to submit prototypes of their
inventions, as any patent disclosure should be detailed enough
that anyone experienced in the same field could recreate the
invention based solely on the disclosure.
- However, prototypes can be useful to help the inventor
refine their product, convince investors to part with money,
and to help the inventor communicate their idea more clearly.
- Whether you need a prototype is more about what your
product is, and how it will be used. It is impractical for the
inventor of a nuclear power station to make a prototype, but
the key novel features of a less ambitious product may be
instructive to build, just so you have the peace of mind that
the basic design isn't fundamentally flawed in some way.
Now is a good time to invent!
- The recent downturn in the economy has led to layoffs
and reduced productivity, but not all is lost.
- When companies have little to do, but some in house resources,
they can invest in research & development with the aim to
inventing new products so that when the economy recovers, they
will have a head start on their less foresighted competitors.
- When individuals inventors are learning that people are
having to make do with less, the ones that find cheaper
solutions to age old problems, can still turn a profit.
Necessity is still the mother of invention. For more, see
recent press release
here. Focus on the solutions, not the problems.
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process
Free Confidential Consultation
- For any detailed discussions or email disclosures of an invention, a
mandatory Non-Disclosure Agreement (NDA) must be signed first. We will need
basic contact info about the inventor, and a general description of the field of
the invention to put on the NDA. Copies available to both parties.
- Free confidential consultations can take place by phone, email, in person,
or at one's place of business if necessary. If travel is necessary, it will
usually depend on availability and other commitments. Onsite interviews are
necessary if that is the only way to assess the scope of the invention, and when
email disclosures are insufficient to tell the entire story.
- Minimum information for a productive consultation should include enough
detail about the invention for a preliminary obviousness evaluation, and to
prepare an estimate of the search.
Estimate, Agreement &
Deposit
- During, or soon after the consultation, Inventive
Solutions will give the prospective client an estimate of the
duration of the project, based on the information provided.
For a patent search, estimates commonly range from 6 to 10
hours, while a provisional with drawings commonly take from
between 15 to 30 hours, depending on how much information the
inventor supplies, and its quality. Duration of patent
searches for multiple jurisdictions does not multiply by their
number, but is usually a matter of a few additional hours,
depending on complexity of the invention.
- Once a verbal agreement is made, a project agreement is
drawn up which includes the estimate, the work required,
jurisdictions searched, filing fees included, etc. and must be
signed & dated by both parties to be valid.
- With new clients, a deposit is mandatory, and the work
does not begin until it is received in full. Also with
new clients, final search reports and documentation will only
be released upon full payment of outstanding invoice. With
repeat clients in good standing, a deposit is waived, and
invoices are sent upon project completion, and are due in 15
days.
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Information Required
- For an NDA, basic contact info about the inventor or
company, and a general description of the field of the
invention. (no detailed disclosures until NDA signed by both
parties)
- For a Patent Search, we will need a detailed
description of key functional elements of the invention,
information which may be disclosed by phone discussion, email,
or onsite interview. Any relevant patent numbers or
information about competing products may also be useful.
- For a Provisional application, we will need as much
current information about an invention as is known to the
inventor. If the product is still in development, it might be
best to postpone writing until the optimal version is
discovered. But if time is a factor, or there are multiple
related solutions, then complete information on each variation
should be available. As discussed in that section, drawings
already available to the inventor can be used as the
foundation for patent drawings, and will need to be available
before the writing process begins.
Documents & Services available
- As described in detail on the
Documents page, Inventive Solutions can document
various patent, provisional and design applications and
reports for an inventor or inventive company.
- As described in detail on the
Services page, Inventive Solutions can also
provide patent and design searches as well as drawing and
graphic services.
- As described in detail on the
Next Steps page, various filing options and strategies
are available to the inventor.
- For more information
about the process of inventing, marketing, investors, R&D, business issues,
etc., go to
the
Resources
page.
- For a better understanding of the
terminology used by patent practitioners and the basic
language used in protecting inventions, go to the
Glossary page.
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Who we can help and how
-
Independent
inventors
who need a more economical and reliable way to protect their ideas
while seeking financing, investment partners, licensing
arrangements or starting production.
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Companies that invent
new products and find they don’t have the time, manpower or
resources to document their intellectual property, until their
competition sues for infringement. (In Canada, patents go to the
first inventor to file, not the first to invent)
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Patent attorneys/agents
who prefer to focus on the more interesting aspects of patent work,
and who appreciate the increase in quality and comprehensiveness
when a patent paralegal with technical experience does the preliminary documentation.
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Venture Capitalists
who need to understand a new invention for marketing or licensing
presentations, as well as to protect their investment by ensuring
the most economical means of infringement protection.
- Inventive Solutions can help the independent inventor or inventive company
protect their invention by providing provisional
application documentation & filing services that
are approximately one fifth that charged by traditional patent
practitioners.
Go to
Documents or
Services pages for more info.
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