A patent is a legal document which gives the patent owner an exclusionary right to prevent other people from using the invention claimed in the patent. Or in other words, it can prevent other people from using the claimed invention. In particular, patents are available to protect ideas which have not been published, or incorporated into a previously sold product (novel) and which would not be obvious to people working in the field of the invention (non-obvious).
Obtaining a patent requires submission of a formal patent application along with the subscribed fees to the relevant patent office(s) of each country that you wish to obtain patent protection(s) in. This procedure may differ, as further formalities/legal requirements would have to be complied with as required by the designated country.
Where there is a desire to file in multiple countries, you may wish to utilize the provision of the Patent Co-Operation Treaty (PCT), which allows for a single application to secure the priority date and, upon filing further fees, to file into any signatory state. This option provides a convenient and economical method to secure your first filing while allowing for the possibility of filing in other countries at a later date.
Before filing a patent it is generally advisable to conduct a prior art search. This involves identifying the nature of the invention, and then conducting a review of the published literature and or patents in that field.
A prior art search helps to define the nature of the invention, which can assist in drafting the application. It can also identify whether the invention lacks novelty or obviousness, by comparing the invention to what others have done in the same field. If the search determines that the invention is not novel, or is obvious, then the time and expense of preparing a patent application can be avoided.
Before beginning a prior art search we would work with you to identify the scope of the search sought. We will then provide you with an estimated cost based on hourly work, as well as the option of choosing a fixed cost for the search.
Patent drafting is a technical field requiring a combination of scientific knowledge in the field of the invention and legal knowledge on how patents are interpreted by the patent offices, and later by the court system. The patent agent works with the inventor to convert the inventors initial description of the invention into the legal language required to protect the invention.
When preparing an application we use our network of foreign associates to identify a patent agent in the jurisdiction that the patent will be filed in, who has the necessary legal and scientific knowledge to prepare a quality patent application for the invention in question. We then work in conjunction with the patent agent to ensure that the patent is drafted to meet the legal requirements of that jurisdiction while also best meeting your business objective. We also work with you to determine if there are plans to file in other jurisdictions, and if so, to ensure that those future requirements will also be met.
Patents are powerful legal tools. However a strong patent can take several years and significant investments of time and money to obtain.
Costs for preparing a single patent, filed in Canada or the US, will generally range from 8,000 to 12,000 dollars. However, as the cost of preparing a patent is highly dependent on such factors as the complexity of the invention, the clarity and depth of the initial disclosure by the inventor, and the amount of protection that is being sought, it is hard to estimate exactly the costs for preparation of a patent application without first reviewing the invention disclosure. Most work on patents is charged on an hourly basis, unless there are large numbers of patents being filed on behalf of a single client.
Beyond the cost of preparing the application, there are also significant government fees for filling the application, and for the subsequent steps that may be required to obtain the patent (examination of the patent, responding to any examination reports, issuance fees, etc.) These fees depend primarily on the jurisdiction(s) that the application is being filed in and can range from a few thousand dollars for filling in a single, lower cost jurisdiction, to over a hundred thousand dollars if seeking to obtain patent protection in every major country in the world. Why the large range?
- Each Country charges a separate filing fee, often of several thousand dollars per patent. Various other government fees are also charged (examination fee, issuance fee, etc.)
- Most jurisdictions charge maintenance fees on each active patent or application, usually several hundred dollars per year per patent per jurisdiction.
- Many countries require the filing of the patent application to be done by a local patent agent on behalf of a foreign corporation. Even when not required, it is usually a good idea to have a local agent review the patent to ensure the full scope of enforceability under local law.
- Patents generally must be translated into the local language for each major jurisdiction. This is costly, as the quality of the translation must be very high, as patents are full of technical language and legal jargon.
Given the time and costs involved in obtaining patent rights, the most important step in the process is usually deciding whether to file the patent application in the first place, and into which jurisdictions.
We work with you to understand your current and anticipated business situation. We then assist in determining if a given invention is a) patentable b) enforceable against your likely competitors or others c) worth while economically given your business situation. (c) economically suitable in consideration of your business situation
While patents can be valuable business tools, it is often advisable to maintain the invention as a trade secret instead. For more information on trade secrets see here.
One important aspect of preparing patent applications that is often overlooked is the need to ensure that the applicant own the invention. In some jurisdictions the employer will own the invention developed by their employees, but this is not universally the case, and there may be conflicting circumstances. We can work with you to review your employment agreements and ensure that the agreements are effective in vesting ownership of the inventions developed by your employees to the company. For further information on employee agreement review see here.
Patent applications are required to be published, generally 18 months after they are filed. Reviewing the patents and applications filed by others in your technological space can provide important competitive information about your competitors. We can assist in providing a review of either a single known competitor’s patents and applications, or a more general review of an industry or technological field.
We believe that each patent landscape project is unique and to be effective must be tailored to the individual clients’ need. Whenever we develop a landscaping project for you, we will work with you to determine what knowledge you are seeking, and the most cost-effective way of obtaining it.
Patents are generally treated as property rights, which can be assigned from one person or company to another. The owner of a patent can also license the patent to others, which allows them to practice the invention claimed by the patent, so long as they remain in compliance with the requirements set out in the license agreement.
We can work with you in preparing inventor assignments from the initial inventor to the employer, for preparing any licensing or assignment agreements, and for registering any of the above with the national patent office when required or desirable.
We are happy to customize our basic assignments and licensing agreements for your situation for small fixed fees (generally 500 dollars for the first agreement and 250 dollars for each subsequent agreement).
For more unique situation we provide drafting at our hourly rates. We would be happy to provide you with an estimate prior to beginning any project.
Patents contain one or more claims, which describe in legal terms the portion of the invention for which the holder of the patent has a right to exclude others from practicing. If there is an unlicensed product which falls within the scope of a valid patent claim it is said to be infringing, and the patent holder can obtain legal remedies against the infringing product, such as an injunction (preventing further sales) and damages for past sales.
Interpreting the scope and validity of patent claims can be factually and legally complex, resulting in part on the high costs of patent litigation.
Patent opinions are legal analysis conducted generally before any litigation begins or at the very early stages of litigation, which are used to asses the legal scope of a patent and usually whether a given product or method infringes any claims of the patent.
Patent opinions may be used by patent holders to determine if a competitor’s product(s) are infringing their patent. Likewise they can be used by a manufacturer to determine if a product they are selling or intend to develop would infringe someone else’s patent.
Patent opinions can provide valuable insight as to whether there is a potential for infringing other parties patents, in which case it may be possible to license the patent, avoiding the cost and risk of future litigation. Patent opinions can also be used to help develop products which avoid those features that would lead to infringement of the patent claims.
Having worked on a number of patent opinions for both patent holders and those accused of infringing, we have the experience needed to provide you with a focused and practical opinion addressing legal concerns you may have with regard to your own or a competitor’s patent.
We have experience with patent ligation on behalf of patent holders and those accused of infringement at a national and international level. Should you suspect someone is infringing one of your patents, or have been accused of patent infringement, please feel free to contact us to arrange a free consultation. For further information on our litigation experience and approach please see here.