Patents - Brouillette

What is a patent ?

A patent protects aspects and/or technical characteristics of a newly developed technology, a new machine, a new chemical, a new process, etc. Patents provide a 20-year protection and right to make, use and sell an invention.

However, it does not protect aesthetic characteristics of a new technological achievement or purely theoretical concepts.

A patent lasts for 20 years from date that you file it. At the end of your protection, the patent is disclosed to the public ; anyone can now legally use, sell and/or import the technological achievement.

What is the difference between a patent, a trademark, copyright and industrial design ?

A trademark is a word, symbol or design (or a combination of these) used to distinguish the goods, services of a person or organization from the market competition.

Copyright protects an original literary, musical, dramatic and artistic work. Generally, your copyright is protected during your lifetime and for 50 years following your death.

Industrial design are visible product features. It includes any aesthetic achievement : shape, features or design. Functional or utilitarian items are not considered as industrial designs, but are the subject of a patent application.

How can you help me ?

Our mission at Brouillette is to help small and medium-sized businesses as well as individuals who want to build and start their own business. Our intellectual property services are therefore particularly suited to the needs of SMEs and creative people or entrepreneurs.

As a firm of patent agents, Brouillette is well equipped to help Canadian inventors to obtain patent protection on their inventions in Canada, United States and abroad. Our mission is therefore to assist inventors in all steps that may involve obtaining a patent. To achieve this, we offer a wide range of services including :

Patentability searches ;
Infringement opinion ;
Drafting, preparation, filing, follow up and maintenance of patent applications (in Canada, the United States and abroad);
Drafting of agreements and licensing agreements;
Assistance in litigation cases (infringement, invalidity);
Purchase and sale of technologies;
Negotiation of strategic alliances;
Funding assistance.

Thus, whatever the specific needs of an inventor, we are able to provide services that are tailored to them.

Our services are mainly offered to Canadian and foreign inventors or their agents wishing to file a patent application for their invention in Canada.

Our services are also available to Canadian inventors wishing to file a patent application in the United States and abroad.

Can I write my own patent application ?

Yes, it is possible for a Canadian inventor to file his patent application himself. However, as the drafting of a patent application and the procedure can be complex and involves the allocation of a legal right, it is advisable for the applicant to consult a certified agent. The agent must also be authorized to practice before the Canadian Intellectual Property Office such as our agents. These services are essential if the trademark is to be registered abroad.

In order to obtain a full protection, it is best to consult a patent agent. Let us help you in your protective actions and have a better understanding of the complexities of patent law.

Can you help me file an application myself ?

Of course ! We offer training programs specially designed to meet your needs.

At Brouillette, we believe that the capacity to master both legal aspects and technologies is fundamental to fully understand and develop an optimal patent strategy.

However, we are also convinced that with a proper training and a professional support of quality, you are able to initiate a part of the approach and activities surrounding the protection of your inventions.

In fact, we believe that anyone with R&D activities should establish and follow a project management system that includes a research on the current status of the technology which is at the centre of the project, and the filing of provisional patent applications throughout the project. For this reason, we developed a unique training program that lets you do it by yourself (with or without our support) !

For more information on our complete training programs.

What is the process of granting a patent in Canada ?

Here is the usual procedure for Canadian inventors :

Identification of the invention

The first step for a Canadian inventor is to consult and discuss with his patent agent to implement the process of obtaining a patent. The consultation allows the inventor to describe the overall invention and allows the agent to determine the patentability of the invention. At this stage, the main features of the invention should also be determined.

Prior art search with or without opinion

The next step is usually a more complete patentability search conducted by the agent in order to determine if the invention in question is novel and non-obvious under publicly available literature.

However, patentability searches are not infallible.

Drafting of the patent application

In case the invention appears to be novel and non-obvious, the patent agent conducts the drafting of the patent application. At this stage, the cooperation of the inventor is usually required and necessary, as he knows best his invention and all of its technical details.

The drafting stage is an iterative process.

In fact, the agent typically writes a first draft of the request and sends it to the inventor to validate the text and to complete it if necessary. Then, the patent agent completes the application and resubmits it to the inventor. The process may be more or less long depending on the complexity of the invention.

The inventor must also provide, to the extent possible, images, photographs, diagrams or any other information that may be relevant to the patent application.

It should be noted that a patent application can vary in lenght and complexity. Generally, the more the demand is long and complex, the more it is expensive. Thus, depending on the financial resources of the inventor, the patent agent can write an application that is more or less complex. The inventor can also reduce costs by writing part of the patent application.

Therefore, the patent agent can usually write 3 types of application :

A summary application : brief description of the invention ;
A proper application : complete description of the incarnation of the invention ;
A comprehensive application : complete description of the incarnation of the invention and its main variants.

The inventor must determine with the patent agent the right type of application.

Moreover, it should be noted that in Canada and the United States, there are provisional patent applications. A provisional application is generally a very basic or incomplete application, that includes a general description of the invention, photos or drawings if necessary. Provisional applications allow the inventor to obtain a priority date but must imperatively be replaced by a complete application within 12 months after the initial date of filing.

What the inventor must provide :

Drawings, sketches, descriptions. Anything that could help the agent to better understand and describe the invention.
Power, when required.
An assignment to the employer (or other) if necessary. An assignment is a legal document that makes or confirms the transfer of patents from a person (natural or legal) to another (natural or legal).

Filing of the application

Once the application is completed, the agent shall file it with the patent office. In Canada, it is necessary to file a request examination in order for the application to be assessed. In the US, the patent application is evaluated automatically.

Examination of the application

During the evaluation of the application, the Patent Office may issue one or more office actions. An office action typically includes the reasons why the examiner rejected the application. It is usually normal for a patent application to be rejected at the first examination report.

Following receipt of each office action, the agent must make and file a response to the office action. The response can sometimes include amendments to the patent application. These amendments are made in agreement with the inventor.

Granting of the patent

Finally, when the patent office considers the invention to be patentable, the patent is granted. The inventor must then pay a fee for issuing the patent.

Annuities

After the issuance of the patent, you must pay the annual maintenance fee.

Here is the usual procedure for international correspondents :

Are you a foreign correspondent and your client wishes to file a patent application in Canada ? What should you do ?

Application text

First, Canada has two official languages, French and English. Thus, in Canada, it is possible to file a patent application in either English or French. Therefore, you must provide a copy of the patent application, if possible in either of our official languages. We can also translate your patent application locally if desired.

Power

Generally, a power is not required in Canada. However, the Canadian Intellectual Property Office may sometimes demand one.

Assignment

Finally, depending on whether the filing in Canada is a national application or a National Phase of a PCT application, an assignment of the inventors for the benefit of the owners may be required.

Filing

Once the application documents are received, we file them to the Canadian Intellectual Property Office accompanied by a petition we prepare.

Examination of the patent application

In Canada, it is necessary to file an examination request in order for the application to be assessed. This request must be filed within five years from the filing date of the application.

During the evaluation of the patent application, the Office may issue one or more office actions to which we must respond. Generally, the answer that we file is based on a draft response you submit.

Granting of the patent

Finally, when the patent office considers the invention to be patentable, the patent is granted. The inventor must then pay a fee for issuing the patent.

Annuities

After the issuance of the patent, you must pay the annual maintenance fee.

Need help ?

Although you can file a patent application by yourself, the issuance process can be complex and tedious.

Let us support you in your protective actions and help you to have a better understanding of the complexities of patent law.

We have the knowledge and experience to provide maximum benefit to the protection of your invention. Moreover, we allow you to save time and money either by offering you adequate training or by helping you avoid complications and overcome obstacles throughout the patent issuance process.

We would be delighted to meet you, to offer you an introduction to IP and to assess your needs on intellectual property. You will discover that your assets are much more important than you might think.

Contact one of our agents now to schedule a free initial meeting*.

Consult our section Links for more information on patents and many other areas.