Business Beat: More on understanding the patent process

By Medicine Hat News on August 15, 2018.

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

Navigating the process to obtain a patent is complicated. Last column, we invited Dan Polonenko to help answer some questions to help local entrepreneurs and business owners understand more about the patent process. This column we continue with the remaining patent questions.

Dan is a registered Canadian and US 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 kind of inventions can be patented?

We can patent anything that is new, un-obvious, and useful.

The categories generally are:

– Devices, apparatus, equipment, and machines.

– Systems for doing or providing something wherein a number of different devices and/or apparatus and/or equipment are required.

– Compositions of matter, e.g., formulations that contain mixtures of things, active ingredients and carriers, and the like.

– Methods of manufacturing or producing something.

– Processes for executing commands (e.g., software for controlling systems)

What information needs to be provided in a patent application?

A patent application has to include the following parts:

1. A title,

2. A short description of the prior art (or what’s currently available) and the problems with the prior art,

3. A summary section (that summarizes the claims section),

4. A description of the drawings presented with the application,

5. A detailed description of the of the invention,

6. A set of claims, and

7. An abstract (which is a one-paragraph short summary of the claimed invention).

Can anyone prepare a patent application or is it best to hire a professional?

Anyone can prepare and file a patent application, but in the long run, it is better to hire a registered patent agent to prepare and file the patent application.

The reason is that a registered patent agent is experienced in drafting the application and has a deep knowledge of the format required and detailed information required for each part of the patent application. Applications prepared and filed by registered patent agents have a much higher probability of quicker prosecution with and allowance by the Patent Offices.

How long does a patent last?

The lifetime of a patent is 20 years from the filing date of the first application.

Is it recommended that a patent be filed in different countries and why?

Patent applications should only be filed in those countries where there is: (i) a market potential for sales of the products or services, and/or (ii) a likelihood that a competitor may manufacture and ship infringing products (or provide infringing services) to other countries.

My rule of thumb is that there should be a revenue potential of at least $10 million per year in a country to justify incurring patent protection costs in that country.

What is the approximate cost to file a patent?

The cost to file and protect a patent: (i) depends on how simple or complex the invention is, and (ii) is typically spread out over 3-5 years depending on how quickly or slowly the prosecution process takes place.

The all-inclusive cost to protect an invention in Canada during the drafting, filing, prosecution, and issue process will likely be in the range of about $10,000-$15,000 over a 1-2 year period for less complicated mechanical inventions to anywhere from $25,000 – $50,000 over a 3-5 year period for more complex inventions involving multiple components and element.

Similar costs are typical for each additional country filed in.

If you wanted 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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