Business Beat: Understanding the patent process

By Medicine Hat News on July 25, 2018.

This is part 1 of the two-part column. Read part 2 here

Navigating the process to obtain a patent is complicated and so this month we invited Dan Polonenko to help answer some questions to help local entrepreneurs and business owners understand more about the patent process.

Dan is a registered Canadian and U.S. patent agent in Gowling WLG’s Calgary office with a practice that includes patent drafting and prosecution in the fields of health, medical devices, oil, gas, energy, environmental equipment and technologies, and process engineering.

What is a patent?

A patent is a legal grant of a commercial monopoly provided by a Government Patent Office.

An issued patent is valid and enforceable in the country wherein that country’s patent office issued the patent.

Is there a place that I can search to find out if my invention is unique?

Each country’s patent office makes its patent database available for searching. For example:

in Canada: http://www.ic.gc.ca/opic-cipo/cpd/eng/search/basic.html

in the U.S.: https://www.uspto.gov/patents-application-process/search-patents#heading-1

in the World Intellectual Property Office (WIPO): https://patentscope.wipo.int/search/en/structuredSearch.jsf

One of the best free patent search engines is Google patents:

https://patents.google.com/advanced

What is the process to get a patent and how do I determine if it is feasible to do so?

The process to obtain patent protection generally includes the following steps:

1. Summarize the proposed invention and list the key elements (or components or steps).

2. Determine if the proposed invention is potentially patentable and there are 3 criteria to consider:

(i) Is it novel, i.e. has it been completely disclosed in public before, e.g., in published patent application, in a website posting or on social media, has it been presented at a tradeshow or in a slide presentation?

(ii) Is it obvious to someone skilled in the art, i.e., would someone working in that field be able to combine one or more previously publicly disclosed documents or presentation, and produce your invention from those combinations?

(iii) Does the invention have utility, i.e. commercial value (would somebody be willing to pay you money for the invention?)

3. If it is determined that your proposed invention is patentable (i.e., novel, not obvious, and has commercial value), then this step is to write a patent application and submit it to a patent office.

(i) The patent office will review your patent application and will make a decision whether or not it is patentable.

(ii) If the decision is yes, they will issue a Notice of Allowance and a deadline for paying the issue fee. After you pay the issue fee, the patent office will issue your patent.

(iii) If the decision is no, the patent office will issue an Office Action that lists their objections and rejections and provide a limited time period for you to respond. You can then prepare and file a response which the patent office will consider and respond to. This part of the process is called “prosecution”, and may take anywhere from two to 10 responses and Office Actions before the patent office will issue a Notice of Allowance. Quite often, patent applications are abandoned during the prosecution process.

4. After the patent is allowed, regular maintenance fees are required to keep the patent in good standing.

– In Canada, maintenance fees are required annually,

– In the U.S., maintenance fees are required every four years.

In our next column Dan will go over issues such as what sort of inventions can be patented, how long a patent lasts and how much it will cost.

If you want to explore the patent process, you can reach Dan by phone at 403-298-1950 or by email at dan.polonenko@gowlingwlg.com

Community Futures Entre-Corp has been supporting small business since 1988. We provide the tools and guidance you need to run your business. For more information about our programs and how we can connect you with helpful resources, please call Community Futures at 403-528-2824.

Elizabeth Blair is the regional innovation network coordinator for APEX Alberta. APEX Alberta has programs to help support the growth of innovative and technologically-oriented businesses in Southeast Alberta. APEX Alberta is a collaborative initiative between three core service providers: Community Futures Entre-Corp, Medicine Hat College and Alberta Innovates.

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