You did your part — we’ll do ours

A patent gives you the right to exclude others from making, using or selling your invention.

 

Most countries grant patent protection for 20 years from the date of filing a patent application. In order to be patented, an invention must be original, operational and show ingenuity. For example, you cannot patent someone else’s invention, no matter how old it is, or where it first appeared.  Your invention must work, as described in your patent.  It cannot be an obvious improvement over prior art. Finally, your invention must encompass statutory subject matter (for example, it cannot be a method of medical treatment), and cannot merely be an abstract idea (mathematical formulas are not patentable).

A patent is a business asset that provides you a competitive advantage. You can license it, include it in negotiations when applying for funding or when partnering with other companies, or you can sell it for profit.  A portfolio of patents will provide you with additional leverage in the marketplace.

 

Shapiro Cohen LLP will help you determine if applying for a patent is right for you, and will do the necessary searches to find out if any similar patents or patent applications have been published.

We will work through the entire process with you: applying for patents in Canada and other countries, applying for federal grants, and coordinating with other companies that will help you get your invention to market. We will also assist in providing a patent landscape that lays out who holds IP rights in one or more sectors. This valuable tool will help you formulate R&D strategy.

 

We can assist with policing the marketplace, acting on unauthorized use, and commencing and defending contentious proceedings.

FAQ & Case Studies

Patent FAQ

CIPO

The Canadian Intellectual Property Office (CIPO) administers most intellectual property in Canada. It is an agency of Industry Canada.


Patent Prosecution Highway (PPH)

The PPH provides a way to accelerate the patenting process in one jurisdiction, based on allowance of your patent application in another jurisdiction.  The PPH allows you to save time and money.

To view our article on Canada and the PPH please click here.


Green Technology Program

If you have an invention that relates to technology, the commercialization of which would help to resolve or mitigate environmental impacts or conserve the natural environment and resources, it may be eligible for accelerated examination under the Canadian Intellectual Property Office’s (CIPO’s) Green Technology Program.


What costs to expect

Prepare to pay professional fees for preparing, filing and prosecuting your application and government fees for filing, examining and allowing the application. There will be annual maintenance fees as well as some other miscellaneous fees.


What can be patented?

You can patent a composition, a method, a process, an article of manufacture and a use of a product. You cannot patent an abstract idea, a mathematical formula or method of medical treatment.


Patent landscape

Whether you are a start-up, or you already have a patent portfolio, we can provide a comprehensive IP landscape about the subject area of your technology. This analysis details the IP coverage of the competition, helping you establish an effective R&D strategy.


Where to file

In today’s world of first-to-file, a common strategy includes filing a provisional patent application in the U.S., at the United States Patent and Trademark Office (USPTO) first.  The provisional application provides you with a filing date and time to further perfect your invention. Whether you plan to look to the North American market, or internationally, we can provide you with a filing strategy suited to your vision and budget.


Effects of publicizing your invention before patent application

Be careful of publicizing your invention prior to filing a patent application. While the US and Canada provide a one-year grace period, other jurisdictions (such as Europe and China) are not so forgiving. We recommend filing first, before going to a trade show, submitting an abstract, handing out samples, seeking crowd-source funding, or publicizing your invention in other ways. We can also help you draft confidentiality and non-disclosure agreements.


Canadian process

Several deadlines are initiated once your application is filed at the Canadian Intellectual Property Office (CIPO). Two years from the official filing date, you will have to pay annual maintenance fees to keep the application on file. You have up until five years after filing to request examination of the application. During examination, the patent office may object to the application based on prior art, formalities or other grounds. If these are properly addressed, the application is allowed. This process can be shortened via the PPH program. In addition, documents will have to be filed if a change in ownership takes place.


Looking for more patent FAQ's?

If you have not found the answer to your question, please contact us or click here.


Questions?
If you have any questions please call 613-232-5300 to speak to a professional or email us at ProtectMyIP@shapirocohen.com.

Patent Case Studies

John was having a piece of chocolate with a steaming cup of coffee, when he accidentally dropped the chocolate onto the cup’s plastic lid. He removed the chocolate, leaving a tiny portion that had melted on the lid. When he resumed drinking his coffee, John thought the coffee had a chocolate flavour, even though none of the chocolate fell into the cup. He realized that it was the chocolate aroma on the lid that gave the impression of chocolate-flavoured coffee.

A light-bulb went on: why not use scented coffee lids to simulate the flavoured gourmet coffee experience without the expensive price? He began to think of lids scented with caramel, vanilla, gingerbread, and the like. He searched the internet and couldn’t find anything like it online. He hadn’t heard of it or seen it anywhere. John was convinced he had a money-maker, and was ready to spend thousands of dollars to secure patent protection. Should John secure a bank loan to do so?

Answer: No. Fortunately for John, he consulted a patent professional who performed a search of published U.S. patent documents, using sophisticated searching techniques. A US patent was found, that disclosed exactly the same product that John was seeking to patent. John had saved thousands of dollars.

Conclusion: If you are a sole inventor, invest a little bit of money for a professional search of patent databases and non-patent literature. At Shapiro Cohen LLP, we will provide you with a step-by-step, personalized process to assess the patent landscape first. We will work with you to secure your patent rights, provided your product has not already been invented by someone else.

The R&D team at a start-up company was excited about its latest findings. Team members had previously worked in academia, and immediately thought of publishing an abstract about their latest find. Besides, it would create a “buzz” in the industry, and put the company on the radar of potential investors. After all, there is no such thing as bad publicity when it comes to innovation, right?

Answer: Actually, advanced publicity can kill patent rights. If you disclose your invention to the public, then you may jeopardize your company’s rights to secure patent protection in certain countries, and you will certainly trigger a deadline to file for patent protection in other countries.

Conclusion: At Shapiro Cohen LLP, we will work with your team to ensure that your company’s patent rights are properly protected, so that you can leverage publicity of your innovation. We will outline for you various filing strategies (in North America and abroad) based on your business model. Our goal is to help you make an informed decision. 

A mid-sized company was looking to open up a new avenue of development based on promising research. The head of R&D decided to forge ahead, and filed many patent applications based on new insights as they appeared. Soon, the company found itself spending tens of thousands of dollars on international applications, with redundancy between the applications. Furthermore, many pieces of prior art were being cited against the applications. What began as a promising new avenue, turned into a financial quagmire. What should the company do?

Answer: The company should do a comprehensive analysis of the subject matter of all pending patent applications, and cull the pending claims to eliminate overlap. This may even mean the abandonment of one or more applications. In addition, the company should have a patent landscape analysis of the competition before going any further. Ideally, this step should have been performed at the outset of the company’s new R&D focus.

Conclusion: At Shapiro Cohen, we will help companies to build efficient, comprehensive patent portfolios, step-by-step, by working in tandem with your R&D team. We will provide a patent landscape and together, we will forge a strategy to maximize your IP protection.