Obtaining a Patent: Inventive Step to Economic Leap of Faith

June 16, 2019

Believe it or not for many inventors it is easier to invent something patentable than it is to actually obtain the patent.  It is easy to attribute this to complex applications, lengthy research, inter-jurisdictional legal issues, and of course fees, lots and lots of fees; however, the real reason is expressing on paper why your thing is different than everyone else’s thing.

It is helpful to understand why patents exist to understand why they are so hard to obtain.  Patents give an inventor a period of economic exclusivity over a new invention.  This period is generally twenty years in which the patent holder can either work the patent themselves or licence it to others for a fee.  In exchange for this period of economic exclusivity, the inventor must disclose the technical knowledge that the patent is based on.  This sharing of knowledge enables other researchers to immediately learn about the new technology and potentially further their own projects.

In obtaining a patent your first stop should be to see a patent lawyer.  Have the legal implications of a patent fully explained to yourself and then applied to your situation and see if it is something you even need.  For most people the main issue for the lawyer will be to decide what jurisdictions you are seeking protection in, but you also need to know about infringement enforcement and licence agreements; the best place to get this information is from a patent lawyer.

Once you have done the groundwork and decided to move forward with the application your second stop should be a patent agent.  A patent agent in Canada is a licenced individual in that is able to deal with Canadian Intellectual Property Office on an inventors behalf; meaning they draft the application.  You can do this yourself, however, it may be at your own peril.  A patent is only as good as its description and therefore this step could be the difference between an enforceable patent or financial disaster.

Image result for apple patent
There is a large disconnect between academic patent practice and real life business patent practice.  If you invent something useful your patent will be infringed.  Full stop. Technology is moving at such a rate it has become common practice to infringe a patent, let the patent holder sue you, and then argue in Court that the patent should never have been granted in the first place.  If your patent documents are properly drafted you stand a better chance of your patent being upheld and actually profiting from your invention.

Knowing that you should have a patent lawyer and a patent agent. How do you find them? Should you look for a lawyer that is also a patent agent?  There are people who are patent lawyers and patent agents and this might seem convenient and the simple, however, fees can become a concern when dealing with these individuals.  You may end up paying the elevated lawyer hourly rate for them to carry out the patent research, which can spiral out of control fast.

The most common situation you will encounter is a patent lawyer that deals with a patent agent on your behalf.  This is far from ideal.  In these arrangements you might not even meet the patent agent.  If you take nothing else from reading this, remember this one thing:

If you cannot meet with your patent agent face to face, run away.

The contents and wording of the application are so important that there is simply no way anyone but the inventor can convey them to the agent.  It is also possible that the agent does not quite understand this area, perhaps you have a mechanical invention and they are a biotech person.  Face to to face you will know if they understand you or not.  That being said, there is nothing wrong if your lawyer knows the agent or works with them, you just want to ensure you get to work with the agent.

The bottom line is if you are applying for a patent it's possible you're actually applying for twenty years of litigation that all hinges on one document.  The best thing you can do is get your legal advice from your patent lawyer and then spend the bulk of your time and money with your patent agent before ultimately returning to your patent lawyer for licensing and enforcement.

This post was written by our criminal and personal injury lawyer, Tj McKeough.
If you'd like to contact Tj, you can reach him at tj@manleylaw.ca

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Anna Manley

Anna Manley
Anna is the principal lawyer of Manley Law Inc. and is a regular contributor to the Manley Law Blog. She practices in the areas of Real Estate, Privacy/Internet, Corporate, and Wills & Estates

Danielle MacSween

Danielle MacSween
Danielle is an associate lawyer at Manley Law Inc. and is a regular contributor to the Manley Law Blog. She practices in the areas of Family, Immigration, and Labour & Employment

Tj McKeough

Tj McKeough
Tj is an associate lawyer at Manley Law Inc. and is a regular contributor to the Manley Law Blog. He practices in the areas of Litigation, Personal Injury, and Criminal