Patents FAQ

Do I need to file a patent application to use my invention?

There is no requirement to file a patent application on a new idea or invention if you do not wish to do so.  However, without a patent you do not have necessarily the same statutory ability to enforce exclusivity around your idea and to stop others from copying it.

When should I file my patent application?

Generally speaking if you are going to file for patent protection you should do this as soon as possible following the conception of the invention to avoid a public disclosure of the invention which can have a negative impact on the patentability of the invention in many corners of the world.  There is significant limitation to patentability in various countries if the invention is disclosed to the public in advance of filing of a patent application.

Does a Canadian patent application protect my invention around the world?

Patents and patent applications are territorially limited – your Canadian patent application does not protect you outside the borders of Canada.  A Canadian patent application can be used as a priority basis for filing in other jurisdictions in certain cases, and there are a number of different international filing strategies which can be employed to streamline the process if broad-based geographic protection is desired – including proceeding by way of the filing of a patent application pursuant to the Patent Cooperation Treaty.

What is “prior art”?

“Prior art” is another term which is used to refer to patents and other publications that are made in the relevant time frame before the filing date of a patent application, for patentability consideration.  The prior art is often times referred to further in the context of the knowledge of a reasonable person skilled in the art at the relevant time.

What are patent maintenance fees and when do they need to be paid?

Many countries require the payment of periodic maintenance fees to maintain the validity of patent applications or registrations.  In Canada, maintenance fees are payable annually on the anniversary of the Canadian filing date, starting on the second anniversary.  The fees themselves payable to the patent office range from $50 for a small entity for the first few years upwards through several hundred dollars towards the end of the patent term.  We can assist you with monitoring and payment of maintenance fees.

What is the final deadline to enter the national phase in Canada under the PCT? (42 months)

It is possible to make a late national phase entry of a PCT application in Canada up to 12 months after the 30 month deadline.  This is possible by reinstating the application which is deemed to be abandoned as of the 30 month national phase entry deadline.  As such, it is possible to enter the national phase in Canada up to 42 months from the priority date .  One of the things to be aware of is that as the deadline for entry is stretched out to 42 months there can be multiple reinstatement or late entry fees payable – for example maintenance fees may be due at the time of entry since they are due annually starting on the second anniversary of the international filing date.  We can provide further information and definitive advice on this should you have a situation arise.

What countries are covered by the PCT (Patent Cooperation Treaty)?

The Patent Cooperation Treaty is an international treaty providing for the filing of a international patent application which will allow an applicant to secure filing date in many countries at the same time.  The PCT system does not yield a global patent, per se, but allows for the streamlined international processing of the initial steps of the patent application to allow for handling in multiple countries at the same time.  Generally speaking, the deadline for the filing of the national phase conversion of the PCT application in individual countries is 30 months although this is not uniform across all countries – we are happy to provide more specific advice in this regard.  Some countries are also accessible through the PCT as members of regional patent conventions.  At the writing of this post, the following are the countries who are signatory to that treaty [there is a link at the bottom of this post to the most current update in this regard]:

 

  • AE United Arab Emirates
  • AG Antigua and Barbuda
  • AL Albania (EP)
  • AM Armenia (EA)
  • AO Angola AT Austria (EP)
  • AU Australia AZ Azerbaijan (EA)
  • BA Bosnia and Herzegovina1
  • BB Barbados BE Belgium (EP)
  • BF Burkina Faso (OA)
  • BG Bulgaria (EP)
  • BH Bahrain BJ Benin (OA)
  • BN Brunei Darussalam
  • BR Brazil
  • BW Botswana (AP)
  • BY Belarus (EA)
  • BZ Belize
  • CA Canada
  • CF Central African Republic (OA)
  • CG Congo (OA)
  • CH Switzerland (EP)
  • CI Côte d’Ivoire (OA)
  • CL Chile
  • CM Cameroon (OA)
  • CN China
  • CO Colombia
  • CR Costa Rica
  • CU Cuba
  • CY Cyprus (EP)
  • CZ Czechia (EP)
  • DE Germany (EP)
  • DJ Djibouti
  • DK Denmark (EP)
  • DM Dominica
  • DO Dominican Republic
  • DZ Algeria
  • EC Ecuador
  • EE Estonia (EP)
  • EG Egypt
  • ES Spain (EP)
  • FI Finland (EP)
  • FR France (EP)
  • GA Gabon (OA)
  • GB United Kingdom (EP)
  • GD Grenada
  • GE Georgia
  • GH Ghana (AP)
  • GM Gambia (AP)
  • GN Guinea (OA)
  • GQ Equatorial Guinea (OA)
  • GR Greece (EP)
  • GT Guatemala
  • GW Guinea-Bissau (OA)
  • HN Honduras
  • HR Croatia (EP)
  • HU Hungary (EP)
  • ID Indonesia
  • IE Ireland (EP)
  • IL Israel
  • IN India
  • IR Iran (Islamic Republic of)
  • IS Iceland (EP)
  • IT Italy (EP)
  • JP Japan
  • KE Kenya (AP)
  • KG Kyrgyzstan (EA)
  • KH Cambodia KM Comoros (OA)
  • KN Saint Kitts and Nevis
  • KP Democratic People’s Republic of Korea
  • KR Republic of Korea
  • KW Kuwait
  • KZ Kazakhstan (EA)
  • LA Lao People’s Democratic Republic
  • LC Saint Lucia
  • LI Liechtenstein (EP)
  • LK Sri Lanka
  • LR Liberia (AP)
  • LS Lesotho (AP)
  • LT Lithuania (EP)
  • LU Luxembourg (EP)
  • LV Latvia (EP)
  • LY Libya
  • MA Morocco
  • MC Monaco (EP)
  • MD Republic of Moldova
  • ME Montenegro
  • MG Madagascar
  • MK The former Yugoslav Republic of Macedonia (EP)
  • ML Mali (OA)
  • MN Mongolia
  • MR Mauritania (OA)
  • MT Malta (EP)
  • MW Malawi (AP)
  • MX Mexico
  • MY Malaysia
  • MZ Mozambique (AP)
  • NA Namibia (AP)
  • NE Niger (OA)
  • NG Nigeria
  • NI Nicaragua
  • NL Netherlands (EP)
  • NO Norway (EP)
  • NZ New Zealand
  • OM Oman
  • PA Panama
  • PE Peru
  • PG Papua New Guinea
  • PH Philippines
  • PL Poland (EP)
  • PT Portugal (EP)
  • QA Qatar
  • RO Romania (EP)
  • RS Serbia (EP)
  • RU Russian Federation (EA)
  • RW Rwanda (AP)
  • SA Saudi Arabia
  • SC Seychelles
  •  SD Sudan (AP)
  • SE Sweden (EP)
  • SG Singapore
  • SI Slovenia (EP)
  • SK Slovakia (EP)
  • SL Sierra Leone (AP)
  • SM San Marino (EP)
  • SN Senegal (OA)
  • ST Sao Tome and Principe (AP5 )
  • SV El Salvador
  • SY Syrian Arab Republic
  • SZ Swaziland (AP)
  • TD Chad (OA)
  • TG Togo (OA)
  • TH Thailand
  • TJ Tajikistan (EA)
  • TM Turkmenistan (EA)
  • TN Tunisia
  • TR Turkey (EP)
  • TT Trinidad and Tobago
  • TZ United Republic of Tanzania (AP)
  • UA Ukraine
  • UG Uganda (AP)
  • US United States of America
  • UZ Uzbekistan
  • VC Saint Vincent and the Grenadines
  • VN Viet Nam
  • ZA South Africa
  • ZM Zambia (AP)
  • ZW Zimbabwe (AP)

Link to most up to date WIPO country listing:  http://www.wipo.int/export/sites/www/pct/en/list_states.pdf