Frequently asked questions (FAQs)

  1. What is a patent?
  2. How long do patents last?
  3. Do I need an established company before applying for a patent?
  4. Is it legal to apply for a patent to improve someone else’s product?
  5. What’s included in a patent document?
  6. What are the “claims” in a patent?
  7. Can I apply for a patent by myself without using a patent firm?
  8. What are the requirements to get a patent?
  9. Should I patent my invention sooner rather than later?
  10. Can I announce my invention before I apply for a patent?
  11. Will the patent office keep my invention a secret?
  12. How many countries should I file my patent application in?
  13. How long does it take to get a patent?
  14. How much will it cost?
  15. How do payments work?
  16. How long will it take to draft and file a new application?
  17. Are there any guarantees?
  18. How do I get started?

What is a patent?

A patent is the legal right to stop others from making, using, selling, or importing the claimed invention without permission. Patents are property that can be bought, sold, rented (licensed) and transferred to others. Each patent is limited to the country that issued that patent.

How long do patents last?

Roughly twenty years from the filing date. More specifically, patent term is calculated separately for each country and, assuming everything is “normal”, lasts twenty years from the effective filing date in each country. However, it’s not so cut and dry because there are ways that patent term can both be extended past twenty years (e.g., patent term adjustment) and reduced to less than twenty years (e.g., failure to pay maintenance fees).

Do I need an established company before applying for a patent?

No, you do not need to have an established company in order to apply for a patent. Individual inventors can and often do apply in their own names.

Is it legal to apply for a patent to improve someone else’s product?

Yes, it is legal and perfectly fine to apply for a patent that improves and/or works with another company’s product. If such a patent is granted you will be able to use the patent to stop the other company from adding your patented features to their product (or to collect license fees from them if they do).

What’s included in a patent document?

A patent document is a written description of an invention with sufficient detail to enable a person skilled in the art to which the patent pertains to build and use the claimed technology. Each patent has three main parts: description, figures, and claims.

What are the “claims” in a patent?

The claims of a patent define the scope of protection covered by the patent. For a person to infringe a particular patent, the person needs to meet every limitation in at least one of the claims of that patent. The fewer the limitations in a particular claim, the “broader” the scope of protection of that claim; likewise, the more limitations in a particular claim, the “narrower” the scope of protection of that claim. Broader claims are easier to infringe but can also be easier to invalidate.

Can I apply for a patent by myself without using a patent firm?

Yes, you can, but it’s probably not a good idea. I have received several calls and emails from inventors who tried to do it themselves only to find out their applications were inadvertently abandoned with no hope of recovery. They wanted my help to fix the situation but there was nothing anyone could have done at the point in time they contacted me. Their patent rights were already lost. In one case, the DIY inventor was still sending money to CIPO on an application that had been dead for almost two years.

It will cost you some money to pay for the services of a patent agent but the costs will be much less than if you do it yourself and lose your patent rights.

I wrote a separate article about why it’s generally a bad idea to DIY your patent application. Read that article first if you are considering taking the risk; you might change your mind:

DIY_patent_application

What are the requirements to get a patent?

Your invention should be of a technical nature and must be:

  1. New (different in at least one way in comparison to everything already available to the public)
  2. Useful
  3. Non-obvious (the differences must not be obvious in view of what is already available to the public)

Non-obviousness is a subjective judgement made by the patent Examiner. To help prevent and overcome obviousness rejections, it is generally helpful to describe as many features and provide as much detail in the original application as possible.

Should I patent my invention sooner rather than later?

Yes, it’s a race to the patent office. When two people invent the same thing, the first one to apply for a patent wins. This is often referred to as a “first to file” (FTF) system and is how essentially all patent offices worldwide operate. The United States used to be different but has joined the rest of the world since March 16, 2013 and now operates under a “first to file” (FTF) system.

Remember, the race is only to the patent office in a first country (e.g., Canada). After you’ve filed at least one patent application on an invention you can take your time over the next year to file in the other countries that you want (e.g., the US). As long as you file the later applications within one year of your earliest filing date, your later filings can take advantage of the earliest filing date.

Can I announce my invention before I apply for a patent?

No, you should keep it a secret at least until you apply for a patent in a first country. If you do need to tell people about it before you file, make sure everyone you tell knows and agrees (preferably in writing) that it is confidential.

Your rights may be lost by doing any of the below actions before you apply for a patent:

  1. Offers to sell and sales
  2. Public use (demonstrations, beta testing)
  3. Any other public disclosure (marketing material, brochures, web sites, blogs, advertisements, articles, etc.)

Luckily, both Canada and the US provide inventors with a 1-year grace period for self-disclosures. So if you sold, announced or otherwise disclosed your invention less than a year ago you should still be able to patent it in Canada and the US. Regardless of the grace period, if at all possible file for a patent before you publicly disclose your invention.

Will the patent office keep my invention a secret?

By default the Canadian and US patent offices will keep your invention secret for eighteen months from your earliest filing date and then they will publish your full patent application on their respective websites.

How many countries should I file my patent application in?

That’s up to you, but you only need to pick one to start. After you file your patent application in a first country you generally get a year of time before you need to file the same application in other countries.

You can use the year after your first filing to talk to clients, attract investors, and save up money for the subsequent-country filing fees. You may also further develop your invention and consider adding new (additional) features you hadn’t thought of when you filed in the first country.

At the end of the first year period, if you are still unsure which countries you want (and have a sufficient budget), you may also choose to file what is called an “international application” under the Patent Cooperation Treaty (PCT). Filing a PCT app will buy yourself more time to decide which countries you want. You’re only buying time with a PCT app though, you still need to pick your countries and enter them individually later. There is simply no such thing as an international patent.

The following flowchart illustrates typical filing deadlines starting from an “earliest date” in a first country:

Filing dates diagram

How long does it take to get a patent?

Usually about 2-3 years from filing the application, but there are options to make it go faster. The following diagram shows the typical life cycle of a patent application in a typical country along with the time frames and what we will need to do at the various stages.

Filing dates diagram

The process starts with filing of the patent application, followed by a prosecution phase where we will deal with any rejections and problems that occur before the patent office, and then the patent issues and is enforceable until it expires. Depending on the country, maintenance fees must also be paid at different times during the prosecution and/or enforceable periods.

How much will it cost?

The initial cost to draft and file a new patent application in the computer / electronics fields will typically range from $7000-12,000 CAD. This cost includes both my service fees and the government fees for filing the application. I’ll give you a solid quotation upfront based on your invention and my anticipated time requirements. However, the filing costs are not the end of the costs.

A ballpark upper number for the full price to patent an invention in both Canada and the United States is $35,000 CAD. You will find a lot of patent related advertisements on the Internet that do not provide any indication of the full costs. My personal opinion is that it’s helpful for inventors to know an upper estimate of the complete costs upfront rather than only knowing some very low “get-started” fees.

To give you an idea, here's an example of "typical" costs:

Filing dates diagram

Download: Typical patent costs.pdf

Your actual costs may be significantly less than shown above, but at least you have an idea of the upper range that may be required.

As shown, there are fees required at various times throughout the twenty year life cycle. You need to be prepared for this. Unless you sell the patents and someone else takes over, once you start the process you should be prepared to see it through (or have a predefined exit plan). Generally speaking, if you stop paying in a particular country, you will lose your investment and your invention will enter the public domain in that country.

When you average the costs out over the full twenty year period and consider the benefits that you can obtain by having a strong patent portfolio, you should find it's actually not that expensive. I’d suggest allocating an initial investment to get the application drafted and filed in a first country. Then set up an ongoing monthly patent budget. Accumulate the unused funds from the budget in the months when no costs are incurred so you’re ready to pay larger sums at later times when required.

How do payments work?

For drafting a new application from scratch I generally require pre-payment of a portion of the total service fees before I start work. The remaining balance is due after the application is filed at the patent office.

I accept cheques, wire transfers, INTERACT e-transfers, and all major credit cards via PayPal (additional 3% surcharge for using PayPal).

How long will it take to draft and file a new application?

I will give you a time frame along with my quote but generally I can get a completed draft back to you for review within three to four weeks from discussing the invention disclosure form and receiving any other required information and pre-payment. I can usually get the application filed within one to two days from receiving your approval of the draft.

Are there any guarantees?

Yes. Although there are no guarantees that your patent application will issue as a patent, I am so certain you will be thrilled you chose my firm to draft and prosecute your applications that I'm offering an unheard of guarantee—full money back with interest.

If you are not absolutely satisfied, whatever the reason, just let me know any time within ninety days after you make a payment to ATMAC. I will provide a prompt and courteous refund of the full amount, including any gov't and bank transfer fees and even including interest.

How do I get started?

  1. Search for the most similar ideas

    The first step I’d recommend would be for you to do a lot of web searching to try and find if your idea is out there already, and, if it’s not, to find the closest (most similar) things currently available. This information will be helpful for me to emphasize the differences with your invention when compared to what is already known to the public.

    Besides just doing regular Google® searches, you can also try keyword searches via Google's patent database and the European worldwide patent database, both are good search engines to find similar patents based on keywords. URLs here:

    https://www.google.com/patents

    http://worldwide.espacenet.com

    Another option is to engage a patent search service to give you a search report. Whether to pay someone to do a search before you apply for a patent is up to you. Often you as the inventor may already be familiar with the field and know what products are available. You may be able to supplement your own knowledge for free by doing keyword searches yourself.

    If you do decide to pay for a patent search before filing, keep in mind that even the best searcher cannot find patent applications that are still unpublished. Since patent applications are generally kept confidential by the world’s patent offices for eighteen months, this means your paid-for search report will generally not show any recent patent applications. In other words, even with the best search, there is always some risk that the search will miss a relevant reference.

  2. Decide whether it’s worth it

    Assuming you are doing this for a business idea or investment, it’s really going to come down to money and whether you believe it’s worth it to risk the money needed to apply for a patent. Given the above costs breakdown, one number you might want to consider is whether you will realistically make more than $35,000 on getting a patent because that is a fairly realistic maximum cost estimate for patent protection in Canada and the US over a 20 year period.

    I wrote a separate article which you may find helpful for deciding whether it’s worth it to invest in a patent here:

    should_i_apply_for_a_patent

  3. Write up your idea in as much detail as possible

    Once you’ve decided to proceed, fill out my invention disclosure form and then contact me to discuss.

    Download: ATMAC_invention_disclosure_form.docx

    The form includes the information that I will need to know in advance to provide a solid quotation for drafting a new application. Usually I have inventors fill it out and then we discuss verbally before I provide the quote. You can also send me your own write-up if you have already done one in another format; include any diagrams, search results, and other information you have. The more detail the better.

    If you'd like to formalize a confidentially agreement in writing before sending details of your invention, please fill out the below agreement.

    Download: ATMAC_confidentiality_agreement.pdf

    You can email me the documents at andrew@atmac.ca. Or use any of the contact methods shown on the contact page.

    I look forward to working with you.