- A Patent is a monopoly ‑ a sole right to control the manufacture, sale, or use of the invention.
- A patent does not protect a Trade Mark.
- A patent does not protect a book, play, song etc
- A patent does not protect the shape, decoration or “design” of an article.
- A patent does not protect a concept or an idea, These cannot be protected.
If you make a public disclosure before filing in the U.S.A. or Canada, no patents can be obtained outside the U.S.A. and Canada.
U.S. maintenance fees are payable at intervals of 3 1/2 years, 7 1/2 years and 11 1/2 years, after issue. In Canada maintenance fees are payable annually. If a maintenance fee is not paid, the patent expires, and your rights are lost.
APPLYING FOR A PATENT
Before filing a patent application, a search should be made.
The U.S. Patent Office has, as of 2003, 6.5 million U.S. patents available for searching. Most inventors rely on a manual search of U.S. patents made by an experienced searcher in Washington.
A US patent application consists of
- A Declaration signed by the inventor;
- The Specification, (a written explanation);
- Drawings, to illustrate the invention;
- The Claims, (legal definition clauses);
- Abstract. A brief summary of the invention;
- A Filing Fee.
- Information Disclosure and patent copies from your search.These papers should always be drafted by a Patent Agent.
You must explain all modifications and aalternatives.f you wait until after the application is filed in the Patent Office, then it is too late to include them. On filing, the Patent Office issues an Official Filing Receipt.
In the U.S., and Canada, the application is examined by an Examiner.
In the U.S., examination takes place relatively soon after filing, i.e., 6 ‑ 18 months. In Canada the inventor must pay an examination Fee.
The Examiner makes a search of earlier patents and publications, known as the “Prior Art,” to determine whether or not the invention is new and unobvious.
He then sends a report (an Office Action) objecting to the application.
Almost all applications in the U.S. are initially rejected on the grounds that they are “obvious” in view of two or more prior art patents. You have to answer the Examiner’s objections within a time limit. In the reply, your Patent Agent usually amends or narrows down the claims in an attempt to define the invention more precisely and narrowly. He will also file arguments.
In US, Canada, and most other countries, applications are published by the Patent Office, eighteen months after filing.
Eventually the Examination ends either by Allowance and Issue of a patent, or by the Final Rejection of the application. A fee, called the “Issue Fee” must then be paid to the Patent Office, within a time limit to issue the formal “Letters Patent”.
Maintenance fees are payable
1.) In Canada within 2 years after FILING, and annually thereafter
2.) In USA after ISSUE at 3 1/2, 7 1/2, 11 1/2 years.
PATENT PENDING AND PROCEEDINGS
While the application is pending, the invention may be copied by anyone.
In some cases, it is possible to request “acceleration” of an application, on proper grounds. After the patent has issued, the inventor can then, take proceedings to stop further production, but until the patent has issued he can do nothing.
In Canada, an inventor can claim “compensation” for any infringements made before the issue of the patent.
When the patent has issued, articles are usually marked “Patented 19__”, or with the actual patent number.
Where the application is pending but the patent has not yet been granted, the usual marking is “Patent Pending” or “Patent Applied For.” In this case, the application number is not revealed since it is secret, at least until the publication of a Canadian application.
A false claim that a patent exists can be illegal. Before marking articles, consult a Patent Agent.
If anyone is infringing an issued patent, the inventor will have to take legal action in the Courts against that person or company and prove that what is being done is within the scope of the claims of his patent.
The Patent Office does not police patents.
In such Court action, the Defendant may be found liable and ordered to cease manufacture and sale and may also be ordered to pay to the inventor damages for infringement, and legal costs. Infringing products may also be seized and destroyed. Damages are usually calculated as a percentage of the price at which the product was sold by the Defendant, usually between 3% and 7%. The Defendant may be a manufacturer or an importer, or a distributor, or a retailer, or even the end user, of the product, or in some cases all of these parties may be sued as co‑defendants. Damages may also be calculated on the basis of “an accounting of profits” made by the Defendant. Consult your lawyer before commencing legal action. Not all law suits are successful. In some cases, the Defendant may prove that he does not infringe the scope of the patent claims. The Defendant may prove that the patent is invalid, by producing evidence not available to the Patent Office. If the inventor loses, he is usually ordered to pay the legal costs of the Defendant and the Court may also declare that the patent is invalid.
Regardless of whether or not the inventor makes a dollar from his patent, seventeen years after issue in the U.S.A., and twenty years after filing in Canada, his patent expires and the invention becomes public property. The inventor has no further rights.
Anyone can use it ‑ free.
THE PATENT OFFICE AND PATENT AGENTS
The Patent Offices publish various information booklets at nominal cost or, in some cases, free of charge. Lists can be obtained on request to:
The Commissioner of Patents
The U.S. Patent Office
Washington, D.C. 20231 U.S.A.,
The Commissioner of Patents
The Canadian Patent Office
Ottawa, Canada K1A OE1
The Patent Offices maintain Search Rooms open to the public. You may make your own searches if you wish.
Public Libraries in major centers may carry a limited Patent Library but are not suitable for searching. Searches should always be made in the Patent Office itself.
Effective searching requires expertise, but your own personal search is a valuable experience.
The terms “Patent Agent” and “Patent Attorney” are essentially synonymous.
In Canada and the U.S.A., Patent Agents are required to pass rigorous examinations set by the Patent Office itself. When they pass, they are registered as Patent Agents with the Patent Office. Such registration may be canceled by the Commissioner of Patents for misconduct.
Lists of Registered Patent Agents and Attorneys are available from the U.S. and Canadian Patent Office.
The patent laws in Canada and in the U.S.A. provide that patent applications may be filed only by:
- a) the inventor himself, or in some cases the assignee or legal successors, or,
- b) a Patent Agent appointed by the inventor, or by an assignee of the inventor.
The cost of applying for a patent varies considerably. An application for a simple invention with only a single drawing, a few pages of the description will cost less than a complicated application with six or seven drawings, twenty to thirty pages of description, and twenty to thirty claims.
Patent Agents usually charge on the basis of the time they spend. Normally, the Agent provides an estimate for preparing and filing the application and a further estimate for preparing and filing responses to Patent Office objections, and payment of the Issue Fee.
Before visiting your Patent Agent, your information should be as complete and detailed as you can prepare. You should also supply all the information you have from leaflets or samples of other products and technical specifications.
If any information is held back, you may be asked to pay additional charges for extra work later.
Even if you do not patent your product, before you make it, you should search patents of others which have not expired.
It is no defense for you to plead ignorance of another patent. If a patent covers your product and has not expired, you infringe and may be sued.
It is no defense for you to say that the owner of the patent should have given you notice ‑ or should have marked his product with the patent number. He does not have to. Pending applications in the U.S. are secret until granted, and in Canada, are secret up to eighteen months after filing. They cannot be searched.
Consequently, even though you make an infringement search before going into production of your product, it is still possible that a patent may issue later.
This is most unusual however there is a common myth that you can protect your invention by writing out a description of your invention and making sketches and mailing this to yourself by registered mail.
This is nothing but folklore. There is no substitute for filing a patent application.
A patent or even an application for a patent may be sold outright for a lump sum. The document, usually known as an “Assignment”, which transfers the ownership of the patent to another party, should be recorded in the Patent Office as soon as possible.
A patent, or application can also be licensed.
In licensing, the inventor remains the owner of the patent and licenses a manufacturer to make the invention in return for royalty payments for each article sold. Such contracts should always be drafted and checked by a lawyer experienced in patents and licensing.
An inventor may also set up a business, and manufacture and sell the own invention. The inventor, with associates, may incorporate a company and he may licence the company.
Whichever route you choose, be sure to take legal advice from a lawyer specialised in patent law, or possibly have you lawyer and Patent Agent consult together.
You have probably heard about some of them on U.S. T.V. news stories “Inventor gives life savings to broker and receives nothing”.
These firms are not registered in the Patent Office. They usually offer to accept ownership of a share of your invention in return for their services, on condition that you pay “one half” the cost of the service. Think twice before accepting this kind of “offer”.
Check with professionals before going ahead with one of these arrangements.
You don’t want to end up telling the story of your life savings, on T.V