My name is Jeff Coles and I am a partner in Gowling WLG's Calgary office.
I’m a technology lawyer and a registered Canadian and United States Patent Agent.
Today, I’d like to discuss the patent protection process. A common misconception is that patents
are only for large companies. However, patenting can be critical for SME’s, even at an early stage.
For example, patenting can assist in securing financing and provide an early competitive
advantage in the marketplace. Both obviously valuable factors in long-term commercial success.
The patent protection process can help your business secure and commercialize its inventions,
but you need to understand the process to develop a strategy that’s right for you.
On this, I will discuss three topics of principle importance:
business objectives, preparation of the application, and timeline to a patent.
1. Business Objectives: The key to a valuable patent begins with
knowing your business objectives. Before starting the patent protection process,
it’s critical to consider your commercial goals for the technology, today and in years to come.
How you intend to leverage the technology can be very important in determining the
focus and scope of the patent. For early conversations with your patent professional,
you should assemble documentation of key relevance to your invention – such as drawings, sketches
and written descriptions. All documentation should be provided to your patent professional
and discussed in the context of your business strategy. This will help you and your patent
professional define the key aspects of your invention to protect your business objectives.
2. Preparation of the Application: Drafting a patent application is a highly technically process
that is reviewed and revised by the inventor and patent professional until both parties
are satisfied that the invention has been adequately disclosed and claimed.
The goal is to draft an application that is broad enough to maximize protection
and prevent market entrance by competitors,
while specific enough to provide strong and valuable coverage over your own technology.
Although an optional step, a patentability search can reveal important information that can be
harnessed when drafting the patent application. This investigation can assist in determining
whether your technology is novel and non-obvious, and therefore merits patent protection, and can
also highlight opportunities to distinguish your technology from that which already exists.
3. Timeline to a Patent: A patent is not an automatic right. After the application is prepared
and filed, it will need to undergo examination in most countries of interest before a patent
will be granted. In many countries, options for accelerated examination are available.
Also, in many countries, examination can be deferred for a period of time. You can
work closely with your patent professional to determine the approach that aligns best
with your business objectives. For example, it there are competitors on the market, obtaining
a quick patent may be of critical important. Alternatively, if commercial launch of the
technology will not be for a number of years, you may wish to delay examination.
As you can see, the patenting process is closely tied to your business objectives,
and the prudent course is to be thinking about patenting at an early stage and to work closely
with your patent professional to determine the patent strategy that is best for your business.
Our Intellectual Property Group has prepared a Patent Toolkit
to help Canadian SMEs understand why, when and how to protect their inventions.
To learn more about the complete patent process, frequently asked questions and more, visit
gowlingwlg.com to download the Patent Toolkit today.