PROTECT YOUR IDEAS
by Bill Stemp

It is important to apply for patent protection as quickly as possible, particularly as a result of the changes which the Federal Government brought into effect as of October 1989 regarding the Canadian Patent Act. Under those changes, Canada is no longer a “first to invent” country but has become a “first to file” country. This means that the date that you have invented something or the date that you created an idea is no longer important.

Instead, what has now become critically important is to make sure that your patent application is filed as fast as possible in either the Canadian Patent Office or the United States Patent Office.

DATE OF FILING VERSUS DATE OF INVENTION – PRIORITY DATE
The date that you file your first application anywhere in the world becomes what is called your “priority filing date.” As long as you file for patent protection in every other country in the world which you are interested in obtaining a patent from, within twelve months of the date of filing your first application, your subsequent patent applications will be treated as if they were filed on the date that your first application was (i.e. your priority filing date).

This enables you to claim priority over anyone else who has filed an application subsequent to the date that your first application was filed in any of those other countries.

You are permitted to file for patent protection in those countries subsequent to this twelve month period expiring, but in the event that you file your subsequent applications more than twelve months after the first application was filed, those subsequent applications will not be given the advantage of the “deemed filing date” or the priority filing date, but rather will be treated as being filed on the day that they were in fact filed.

The danger of this ties in the possibility of someone else having filed for patent protection for a similar invention in one or more of those foreign countries and as a result, that individual becomes the “first to file” and your application may be unsuccessful only as a result of not having filed within this twelve month period.

SALES OF YOUR INVENTION BEFORE FILING YOUR FIRST PATENT APPLICATION
Most countries in the world do not allow any sale of your invention or product prior to the date of filing your first patent application somewhere in the world. Those countries require that you not have publicly disclosed, displayed or sold your product at all prior to initially filing for patent protection. As an entrepreneur/inventor, you will normally want to test the market for your invention before incurring the cost and expense of a patent application.

Why not attempt to capitalize on your invention as quickly as possible?

The danger here is that you may be unable to obtain patent protection in most countries of the world, regardless of the volume of sales which you are able to enjoy regarding your product.

Although the law in Canada and the United States allows for a one year “grace period” (i.e. a maximum of one year may lapse between the date of your first disclosure, display or sale of your product), this “grace period” is often interpreted in a dangerous fashion. Many people think that the grace period allows them to sell for several months as long as they get their application filed within one year from the date that they first sold the product or displayed it publicly. This is dangerous for two reasons:

1. Any disclosure of your invention may result in someone filing for patent protection for your invention or for a version of your invention which has been revised or improved upon by someone else.

2. Someone else may believe that your product has substantial market potential and so they begin manufacturing and selling your product only as a result of having seen the product initially, thus damaging you in the market place.

NEED TO HAVE A PATENT SEARCH CONDUCTED
We often find that many people believe that they should be selling the product for several months before having an initial search conducted. This is dangerous for a number of reasons:

l. You may have been infringing upon someone else’s patent without realizing it;

2. You may incur substantial cost and expense in manufacturing your product only to find that all of your profits and inventory are confiscated in aninfringement lawsuit;

3. You invest a great deal of time and money pursuing what you believe to be your invention, only to later learn that it is not really “your invention” at all, but in fact has been invented by someone else already;

4. By having a patent search conducted first, you can determine what the Patent Office has allowed in the past and you are often able to think of ways that you could improve upon your product to make it more likely to be patented and also to improve upon the product itself.

Whenever possible, the initial patent search should be conducted FIRST before doing anything else. It only takes approximately two weeks to have a good thorough patent search performed and during this time period, you can be raising funds to help in the cost of pursuing a patent application or several applications as well as trademark applications and marketing or licensing of your product.

INTERNATIONAL PATENT APPLICATION
The Patent Cooperation Treaty (PCT) is an international treaty which has been signed by many different countries and which enables an inventor to obtain patent protection in a number of different countries without incurring the very large expense of filing individual patent applications in those countries. As of January 1, 1994, China became a member of this International Treaty. Previous to January 1, 1994, if someone wanted to obtain patent protection in a number of foreign countries, they could not include patent protection in China, since China was not a member of this Treaty, which would require preparing and filing a separate application in China if you had plans of selling your product ideas in the future there.

As of January 1, 1994, you can now obtain patent protection in China at the same time that you obtain protection in most other industrialized countries in the world which are members of the PCT. Although the cost of pursuing a “treaty application” is quite high, the ultimate cost can often be passed on to the distributor or the manufacturer in the various foreign countries in which you want to sell your product, thus substantially reducing your cost of obtaining patents in these countries. If you filed individually in several of these foreign countries, you would most likely be paying those costs yourself.

We are a small law firm located in downtown Calgary which prides ourselves on being able to offer prompt service to our clients at a very reasonable cost. We are small enough to care about each one of our clients and their ideas, but experienced enough to be able to handle any of your legal concerns. We offer a free initial meeting in order to answer any of your questions and provide you with whatever additional information you may need to get you on your way.

Stemp & Company
1670, 734 – 7th Avenue SW
Calgary, Alberta T2P 3P8
Bill Stemp
403-777-1125 bill@stemp.com