What you need to know or should do in order to protect
product idea or invention
We have prepared this article in order to offer better insight into Intellectual Property (IP), Patents and Industrial Designs and how those relate to the product development you are about to enter, hoping it will help you through the process. We are not Patent or Trade Mark lawyers, so please for the proper and professional advice do seek expert opinion from licensed patent Agents and/or lawyers. For start you can read on and learn how Product development and professional engineering services fit in the big picture.
While patents address number of fields and industries, we refer to patents related to the products, devices and machinery, in other words focusing only to the mechanical side of the products where we use term Idea interchangeably with Product or Device Idea or some mechanical system / machinery related idea or invention..
WHAT IS A PATENT?
A patent is a right, granted by government, to exclude others from making, using, or selling your invention in a country patent is issued. In other words through a patent, the government gives you, the inventor, the right to stop others from making, using, or selling your invention from the day the patent is granted to a maximum of 20 years after the day on which you filed your patent application. The rights given by a Canadian patent office extend throughout Canada, but not to other countries. You must apply for patent rights in other countries separately. Likewise, foreign patents do not protect an invention in Canada.
WHAT CAN YOU PATENT?Suppose you are the proud inventor of an electric door lock. How do you know if you can get a patent for it? There are three basic criteria for patentability:
■ The invention must show novelty (be the first in the world).
■ It must show utility (be functional and operative).
■ It must show inventive ingenuity and not be obvious to someone skilled in that area.
The invention can be a product (for example, a door lock), a composition (for example, a chemical composition used in lubricants for door locks), an apparatus (for example, a machine for making door locks), a process (for example, a method for making door locks), or an improvement on any of these. A patent is granted only for the physical embodiment of an idea (for example, the description of a possible door lock) or for a process that produces something tangible or that can be sold. You cannot patent a scientific principle, an abstract theorem, an idea, some methods of doing business, or a computer program per se.
THE NOVELTYIn order to be able to protect your IP (Intellectual property) your idea obviously must show novelty. From our experience the most of the product ideas are actually quite novel. If your idea is offering the definite advantage for the end user and does not already exist the most likely it will satisfy this criteria.
THE UTILITYIn order to be able to apply for a patent your idea obviously must be functional and operational. Therefore you should develop your new product idea to the level the required function and operation can be demonstrated. In most cases it will be sufficient to go through limited design and development process to make proof of concept or functional model (prototype) of your new product idea. Typically such models, mock ups and prototypes demonstrate the core functionality and operation of the device you are developing but often during the further development and refinement for production designers and engineers have to make certain design changes which may affect not only the geometry but as well the core principle of operation and function. In many cases 'Claims' have to be modified or even re-written. Applying for the patent when only limited information about your product is available may not be the good idea.
In some instances for some simple products function and operation does not have to be verified using prototypes. While this approach as an option exist for some cases, it is always good idea, particularly for the products intended for mass production, to verify the design first.
THE INVENTIVE INGENUITYOf all requirements patent office is looking to satisfy this may be the hardest one to explain or prove it exists within your patent application. Sometimes creative minds come up with the idea that is novel to them but is unfortunately based on implementation of certain well known mechanical principles which have been used before and are sometimes even described in the engineering textbooks. We all know jokes about inventing the wheel or discovering the hole in the flower pot. Good engineer might be able to spot those and advise you that you will most likely not be able to patent 'the wheel'. But in some instances the mechanical principles which might have been used in the past on one type of the machine while your idea is to make completely new machine or device using the same principle. In those cases your Patent and Trade Mark lawyer may patent the implementation on the well known principles in the new application or advise you to go for improvement based on the existing patent. In any case you should seek the advice and assistance from Patent lawyers or other experts in the field.
WHEN TO APPLY FOR PATENTAs explained, you will need to develop your product idea to the level when functionality can be verified. Practically depart from the 'idea' and provide proper 'embodiment'. On the other hand if you are contemplating to manufacture the product, your idea will have to be developed and refined to the ready for manufacturing level. During that process your engineers may (but not necessarily will) come up with some other technical solution which not only can be patentable but may provide better protection than solutions offered originally by your idea. Sometimes, how certain function is achieved is more important than what function is achieved. Think of the car jack. Dozen different ways of doing the same. Your patent may end up focusing on the way to lift the car not the lifting of the car. If your idea was to make a car jack you might be better off waiting to see how those who are experts in the field (your consulting engineers) resolve the lifting problem.
We had a client who patented the product prior to approaching us for complete product development. During the development process we have discovered the major safety issue (flaw) with the original concept. The result was very unfavorable. Beside us spending time trying to develop the concept that was not 'healthy' in the first place, client had to apply for new patents based on the new, this time working design, while money originally invested and patents originally obtained were wasted.
Another aspect is the actual success of the product design itself. While it is not likely, it is still possible that the final design does not meet some vital requirements set by market or end user, or your target production costs. While such solution may be patentable you may decide to abandon such poor design, (say provided by some inexpensive designers and wannabee engineers), in which case you definitely do not need to spend money on protecting the product you do not want to produce simply because it can not sell.
Considering the above we are of the opinion that client should wait for the design and development process to be completed, and new product idea or invention verified with adequate prototype before applying for the patent, while the whole process should be done as fast as possible reducing the risk that someone else will come up with the same idea. In some instances it may be possible to apply for the patent before the design is complete and we advise that this matter is discussed with the Patent lawyer were any such partial design can be provided in form of patent drawings and sketches..
On the other hand if you do obtain the patent and if you are unfortunate to have to sue the infringing party you may be able to request damages from the date your application was made available for public inspection (18 months after filing or priority) and the date the patent was granted. For this reason it is better not to delay your patent application.
O ne can apply for the patent. Patent is issued by appropriate patent office. (In Canada it is CIPO. In US it is USPTO). Applying for the Patent does NOT provide you protection. It is only an application and it is subject to review by patent officers. Only once (and if) the Patent is issued (granted) your IP will be protected. It is important to note that not all applications are granted with the Patent. Many are refused. Also, even with the properly granted patent, others are not prevented from infringing on your patent. Still, someone can infringe on your patent in which event you could sue them for damages in the appropriate court. The defendant may argue that infringement did not occur, or may attack the validity of your Patent. The court will decide who is right, based largely on the wording of the claims. If what the defendant is doing is not within the wording of any of the claims of your Patent, or if the Patent is declared to be invalid for any other reason, there is no infringement. Therefore it is rather important that licensed expert in the field prepares your patent application.
Patent Pending is only a warning that you will be able to enforce your exclusive right to make the invention only once a patent is granted. (and if it is granted). To be bale to use patent pending sign you must file Provisional Patent.
When you have a Canadian patent, you will be able to sue infringers for all damages sustained after the grant of your patent. Also after the grant, you may sue for reasonable compensation for infringements that occurred in Canada between the date your application was made available for public inspection (18 months after filing or priority) and the date of the grant. Check your rights in other countries. In other countries laws may be different.
P provisional Patent is not a Patent. Application for Provisional Patent is technical description of your invention which does not have all elements of the proper Patent Application. In short this technical description does not have elements related to "Prior Art" (patent search is not performed) nor "claims" and it is only boiled down to technical description of the invention. It does not have to be prepared by patent lawyers or agents either..
Simply as technical description of the invention the Provisional Patent once filed , (and the filing date of Provisional patent obtained) allows inventor to use the "Pat. Pend" or Patent Pending on any products / prototypes produced, (in order to advise that patent will be filed at later date) and to more or less allow inventor to freely talk to any investors or potential buyers.
Provisional Patent will be used to determine the Priority date if and only if inventor:
- Applies for the (full or proper) Patent within period of less than one (1) year after the Provisional Patent has been filed and
- If such Patent Application results with the Patent
Patent Pending is only a warning that you will be able to enforce your exclusive right to make the invention but only once the Patent is granted. (and if it is granted)
Provisions Patent does NOT provide protection. It is only allowing inventor to benefit from so called Priority Date once he/she applies for real / full patent. In that respect the Provisional Patent allows inventors to delay applying for the real (full) Patent up to one year, which time could be used to search for additional investments.
Anyone can file Provisional Patent. It does not have to have any special legal form. It is only 'as good as possible' technical description of the invention which will be used later if and when the Patent Application (for real patent) is submitted.
Anyone can file Provisional Patent. It is as easy as filing / uploading the document online.
Check US Patent Office for more info (USPTO): www.uspto.gov or to file online your Provisional Patent.
The fact is that US Patent office will not review /examine the Provisional Patent unless the real (full) Patent Application is submitted and inventor requests the priority date based on the date the Provisional Patent has been filed. Only than Patent officers will examine the similarity of the content of the Patent Application and the Provisional Patent filed. Further more if there is no sufficient bases for granting the proper Patent the Provisional Patent wild be disregarded. Also Provisional Patent can not be extended.
For more info visit the US Patent and Trade Mark Office (USPTO): www.uspto.gov
In Canada the filing process is similar to US but there are some differences. For example the Provisional Patent is called Early Filing date, when incomplete document having technical description of the invention (similar to Provisional Patent) can be filed but this document can be converted to full patent application later. The mater becomes more complicated when patents are sought both in US and Canada since the first disclosure are treated differently. For more accurate info please contact your Patent Agent or Lawyer, or check the links provided below.
INDUSTRIAL DESIGNSAnother way of protecting your product is by registering Industrial Design (sometimes called Design Patent). An Industrial Design is the visual features of shape, configuration, pattern or ornament (or any combination of these features) applied to a finished article made by hand, tool or machine. For example, the shape of a table or the shape and decoration of a spoon may be industrial designs.
An Industrial Design must have features that appeal to the eye. Function of your product can not be protected by Industrial Design. Industrial designs deals with the esthetical values, form and shape preventing your competitors to provide same looking product. To be eligible for registration, your design must be original. The way to obtain this valuable protection is to register your design with the Industrial Design Office (typically the same office as Patent Office). By registering your ID with the office you will obtain exclusive right to your design for up to ten years from the date of registration. Unless you register your design, you can not make a legal claim of ownership, and you have no legal protection to prevent others from making, importing, renting, or selling any article to which your design is applied.
RESOURCES AND WHAT YOU CAN DO YOURSELF
Before making any decisions dedicate some time to read about patents, patent application process, search prior art and existing patents in patent database, and review other patent related subjects. We strongly advise all inventors to spend time searching the Patent database and check if their idea is original. If it is not - at least you saved money to pay the Patent Lawyers to discover the unfortunate fact for you.
Your second step would be to find the appropriate expert who could help you with the patent application, patent search etc. We strongly advise you visit the:
Canadian Intellectual Property Office (CIPO) at www.cipo.ic.gc.ca where you can:
- read about patents
- find out how to file for Patent or Provisional Patent (tutorials and online patent application available)
- search the Patent Database
- Find the Registered Patent Agent
- Find the Patent Fees (small entity / start up discounts available)
List of International Patent Offices. To protect your IP or search patent databases in other countries visit Patent Offices of the selected countries (links to popular Patent offices):
- Canadian Intellectual Property Office (CIPO): www.cipo.ic.gc.ca
- US Patent and Trade Mark Office (USPTO): www.uspto.gov
- European Patent Office (EPO): www.epo.org
- China Patent Office (SIPO): www.sipo.gov.cn
Beware of the internet advertisements and companies offering to patent the idea without providing function and the utility. Such offers do not convey true facts and are quite suspicious.
MORE ON INTELLECTUAL PROPERTY
PATENTS - INDUSTRIAL DESIGNS - TRADEMARKS - COPYRIGHTS
Although your product development consultant can not promise that it will be possible to protect the design under Patent Act or Industrial Design Act, the most likely good development company will generate few innovative and original solutions which could yield in one or more potentially patentable features. Once the product development is finished you should retain legal advisor who will perform search of existing patents and determine whether your product can be protected as well as whether it infringes on any of the existing Patent rights or other Intellectual Property Rights.
PATENT: defined as "any new and useful art, process, manufacture or composition of meter, or any new and useful improvement in any art, process, machine, manufacture or composition of meter." Patent can not be obtained for an idea or principle but must be reduced to something physical and tangible. The term of the patent is usually 20 years from date of application. Patent rights may be assigned or licensed (with or with out exclusivity) in which case royalty fees are charged by patent owner, usually on percentage of the sales.
INDUSTRIAL DESIGN refers to any feature of shape, configuration, patter or ornament that are applied to finished articles and appealing to and are judged solely by the eye where the articles are multiplied by an industrial process. Only those designs that are ornamental or aesthetic in nature and that meet test of novelty and originality qualify for protection under Industrial Design Act. Mechanical and functional features as well as methods of manufacture are not protected by this Act, but may be protected under Patent Act if they meet criteria. Term of Industrial Design is for 5 years and possibly may be renewed for additional 5 years.
TRADE-MARKS: " a mark that is used by person for the purpose of distinguishing wares or services manufactured, sold, leased, hired or performed by him from those manufactured, soled, leased, hired or performed by others." Distinctiveness and recognizability of your Trade-Mark is not essential for your success but may very well be very important factor. Trade-Mark is registered and therefore protected for period of 15 years and may be renewed for unlimited number of 15 year periods.
COPYRIGHT exists in any original literary, dramatic, musical, artistic work or computer software. It generally means sole right to produce or reproduce the work in hole or in substantial part thereof. Copyright does not protect designs applied to articles that are mass-produced. Term of Copyright is generally for period of authors life plus 50 years thereafter. Copyright may be assigned to others in whole or in part with or without territorial or timing limitations. Copyright of engineering plans usually belong to the author engineer unless otherwise agreed, where client is precluded from coping or executing plans in other structure than for the structure for which plans were originally prepared, without express or implied consent of the engineer.
PATENT DRAWINGS are drawings specially prepared for the use in patent application, which depict the idea particularly focusing on details relevant to the patent but excluding or only schematically presenting irrelevant details and features which are obvious to average person with particular skills. Although product development companies do not get involved with registration of the Patents they can provide patent drawings of your device in case you ever apply for patent.