Patent Basics & Filing Strategy

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Patent Basics & Filing StrategyOr more than you’ll ever need to know about patents in 20 minutes or less

27 May 2015

Jay Haugen, P. Eng.Patent Agent, Partner

214 April 2023

Patents 101

Patents 101

• What are patents?• A right granted by legislation to an inventor to exclude all others from

exploiting an invention; there are no common law rights

• A bargain with the state that gives the inventor a monopoly for 20 years to exploit invention in exchange for a full disclosure of the invention

• A legal tool to be used by patentee in court to assert their exclusive rights in the invention against infringers

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Patents 101

• What can you get patents for?

• Any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter BUT NOT FOR any mere scientific principle or abstract theorem

• Inventions must be:• Useful

• Novel

• Inventive (not obvious)

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Patents 101

• How do I get started?• A patent search should be done first to determine if there’s a good chance of

patentability

• Cannot provide a 100% confident opinion that an invention is patentable• At least two reasons for this:

• Impossible to search the whole world’s body of knowledge• Patent applications filed within previous 18 months are secret and not publicly searchable

• As a result, a patent search and patentability opinion can only determine if the invention is patentable over what is located in search; cannot state positively invention is patentable, that is, can give a “red light” or a “yellow light”, but not a “green light”

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Patents 101

• Got a yellow light, now what?• Can draft a patent application (all applications are prepared from scratch)

• File first application to get started:• Home country• US provisional patent application

Patents 101

• No such thing as a “worldwide” patent • a patent must be sought in every country where protection is needed

• Issued patents expire 20 years from first priority date

• Patent applications are kept secret for up to 18 months from first priority date after which, the application is published or “laid open”

• After the patent expires, the invention is free to be used by anyone - promotes innovation and advancement of technology

• Canada and the rest of world operate under a “first to file” regime, meaning, whoever files first is the “winner”

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Patents 101

• Canada and U.S. both allow applications to be filed within one year after a public disclosure

• Other countries have an absolute novelty requirement, meaning, prior public disclosure is fatal to a patent application and resulting issued patent, therefore, application must be filed before any public disclosure of the invention

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Patents 101

• To take into consideration when filing a patent cont’d• Any disclosure of invention prior to filing should be done under a Confidentiality

and Non-Disclosure Agreement (NDA) between the inventor and recipient to preserve the right to file throughout the world, and to have contractual remedy for breach of NDA

• In the U.S., disclosure under an NDA for purpose of a sale or an offer for sale still starts the one year clock to file even though the disclosure is confidential

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Patents 101

• To take into consideration when filing a patent cont’d• the inventor will often be the first applicant of patent application, although

application and resulting patent can be assigned, or licensed in whole or in part

• Patent applications and issued patents can be jointly owned, although doing so can be problematic

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Patents 101

• To take into consideration when filing a patent (cont’d)• Inventions created by employees in the course of employment are owned by

the employer, subject to employment agreements to the contrary

• In contrast, inventions created by contractors in the course of contract belong to the contractor, subject to contractor agreements to the contrary

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Patents 101

• Do’s of Patents• If possible, DO file patent applications before any public disclosure

• DO have an NDA in place before any disclosure of the invention if a patent application hasn’t been filed, still a good idea even after application has been filed

• DO file a patent application as soon as practical as possible to avoid getting beat out by another inventor/applicant

• DO a patent search before filing an application to determine if there’s a good chance of patentability

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Patents 101

• Don’t’s of Patents• Don’t disclose the invention before filing an application, if possible

• Don’t disclose invention without an NDA in place

• Don’t wait more than one year after public disclosure to file an application in Canada or US

• Don’t delay in filing a patent application, generally

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Freedom to Operate/Filing Strategy

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Freedom to operate/filing strategy

• Ultimate goal is the freedom to practice invention

• to prevent unauthorized use of invention

• Do not want to infringe rights of others through use of invention

• The need for a thorough patent search to uncover all relevant prior art

• Identify new markets, existing players, potential infringement scenarios, determine licenses needed, etc.

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• Alternatives to Patenting• Publish Invention

• Publishing or otherwise publicly disclosing invention prevents anyone from claiming proprietary rights in invention

• Anyone can then exploit invention including competitors• Success in marketplace is dependent on those who can best deliver the product or

service, such as first to market• Downside - no one has exclusivity to invention

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• Alternatives to Patenting (cont’d)• Keep as a Trade Secret

• Advantages• Can work invention indefinitely

• Disadvantages• Cannot keep invention secret once revealed• Cannot keep competitor from developing invention on their own• Competitor may acquire own patent and prevent you from working invention

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• Pursue patents• Where you make and sell

• Where competitors make and sell

• In jurisdictions where patent rights can be effectively enforced

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• What do I include in an application?• File application on core or “bottleneck” aspects of invention to avoid

competitors from designing around patents• Can have narrow focus on specific invention• Or, can file omnibus application on suite of inventions• File applications for technology that can be licensed to others

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Freedom to operate/ filing strategy

• Can file provisional applications as means to preserve rights before any disclosures

• File applications as means to block competitors in marketplace

• Prepare application to cover invention and all possible embodiments that competitors could employ to avoid patent

• Aggressive and defensive use of patents against competitors


• Provisional applications allow means to file applications at lower cost to establish priority rights

• Provisional application allows inventor to get “something” on file before safely disclosing invention in public

• Must disclose all essential elements of invention


• Must still provide “enabling” disclosure

• Allows ability to file application before eminent disclosure of invention• Paper at scientific conference

• Paper published in technical journal

• Sale/delivery of product to customer

• Danger exists if not all of the essential elements of invention are set out


• Canada• Advantages

• Quick to file• Lower cost

• Disadvantages• Separate request/fee for examination• Long backlog to first report (~3 years)• Lower “Marquee Factor” than U.S application


• United States• Advantages

• Largest market in North America• Quicker prosecution than Canada (~14 months to first report)• Higher “Marquee Factor”

• Disadvantages• Higher cost• Higher duty on applicant re: disclosure of prior art


• Paris Convention• Advantages

• Allows foreign applications up to 1 year from first filing• Quicker prosecution

• Disadvantages• Multiple prosecutions in parallel• Must translate into each non-English countries• Higher cost before indication of patentability


• Patent Cooperation Treaty(international patent application)

• Advantages• International Search Report on relevant prior art• Written Opinion on patentability before filing national phase entries• Up to 30(31) months from priority date to file national entries• All correspondence in English at CIPO in international phase

• Disadvantages• Higher cost to file application initially• Will require translations of application in non-English speaking countries• Higher cost if filing national entries only in a few countries – process more

cost effective for larger number of countries


• Conclusion• Consider best strategy to allow freedom to practice

• Consider what jurisdictions where patents are required

• File regular applications when time permits/provisionals when time limited or disclosure is eminent

• File PCT international application as means to preserve rights to file patent applications internationally

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Questions

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Thank you

Jay HaugenPartnerPatent Agent, P.Eng.

D +1 780 423 7373

E [email protected]

After a 13-year career as a professional engineer in the telecommunications industry, Jay made a paradigm shift in his life and acquired his dual-professional status by earning his law degree and becoming a member of the Alberta bar. Jay is qualified as a registered patent agent in both Canada and the United States. He is also a registered Canadian Trade-Mark Agent and prepares and prosecutes patent and trade-mark applications in Canada, the United States and elsewhere.

As a Partner at Dentons, Jay advises clients on various intellectual property matters including patents, trade-marks and technology licensing. In addition to his solicitor’s practice in intellectual property and general corporate matters, Jay assists litigation counsel in patent and trade-mark litigation matters.

While Jay’s experience as a telecommunications engineer has enabled him to draft and prosecute patent applications to issuance in respect of computer and telecommunications-related technologies, Jay has also worked with a number of clients in the oil and gas sector in relation to various types of oilfield equipment and tools, and is equally comfortable working with mechanical and electrical/electronic technologies.

Patent Basics & Filing Strategy

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