Patent infringement & enforcement
Once you have spent the time and the money to obtain a patent registration, you then have a statutory monopoly which you can endeavor to enforce against competitors in cases of patent infringement. Enforcing the rights that are guaranteed by your patent is your responsibility – while the patent office authorizes or grants to you the monopoly to your invention, it is the responsibility of the patent owner to police and enforce their own patent rights.
Typically the patent is enforced by way perhaps first of a cease-and-desist strategy followed with the issuance of legal proceedings if necessary. In the Canadian context, proceedings for patent infringement can be undertaken either in the Federal Court or in the superior courts of the provinces. There are limitations and strategic differences to commencing an enforcement proceeding in either of those courts.
A patent enforcement lawsuit is typically a civil lawsuit, although some countries do have criminal penalties for some types of patent infringement or other patent related activities. Typically the damages or remedies which might be sought and rewarded in a patent infringement lawsuit would include monetary compensation for past infringement and/or an injunction which would prohibit the defendant from engaging in future acts of infringement.
The claims of a patent are what clearly and distinctly state the rights that a patent owner has claimed as their invention, and which the Patent Office has recognized and granted. The claims of the patent are what define the scope of the monopoly right granted under the patent, with the remainder of the document being intended to support the construction, interpretation or understanding of the claims. Any approach to patent infringement is effectively a two-stage analysis – firstly the issue of infringement must be determined, and then the issue of the validity of any parts of the patent which are potentially infringed must be addressed.
Often the defense which is put forth by an accused infringer of the patent is to challenge the validity of the patent on various grounds. A patent can be invalidated on grounds that vary from country to country but typically they are a subset of the patentability requirements for that country. Most often the primary grounds for invalidating a patent would be statute barred subject matter based on a prior publication by the inventor or a related party, availability of published prior art in the jurisdiction or elsewhere in the world that renders the invention obvious at the relevant time, or a failure to mention all of the inventors etc.
In many cases the commencement of a patent infringement lawsuit comes as the culmination of a great amount of strategic planning and foresight by the patent holder. There are often many different strategies which can be contemplated, either contentious they are amicably, to accomplish the objectives of the patent holder. Patent enforcement strategy is just one of the weapons we have at our disposal in the development of full sum intellectual property plans and strategies on behalf of clients.
CONTACT US to learn more about how you can protect yourself against potential infringers.
Domain name registration
One of the key areas of trademark disputes is related to Internet domain names. One of the conceptual differences between domain names versus trademarks is that within each top-level domain e.g.com, .ca etc. only one person can use a particular domain name, whereas in trademark law multiple parties can use the same trademark in a different channel of trade. As such there are multiple people in that circumstance who potentially are entitled to a good-faith domain name registration but only one who can have it. Domain name clearance and domain name availability has thus become more important in the trademark clearance process for many projects.
A domain name can actually constitute a trademark depending on how it is used but one of the other things that companies find from time to time is that third parties will use inappropriately or in an infringing fashion a domain name which encroaches upon your trademark rights. There is a dispute resolution process which can be used to endeavor to acquire domain names which are being used in bad faith by a third-party. We can provide assistance and further information on this as required.
We can assist with domain name registration, policing and enforcement as required.
Companies involved in primary agricultural production, as well as those involved in agriculture and food processing or the manufacturing of agricultural equipment all have significant intellectual property needs in their day-to-day business. Many companies in these agriculture subsectors protect their intellectual property using trade secrets and or patents. We have experience working with agricultural companies in the development and execution of patent strategies to protect their IP. As well, many manufacturers of both finished agricultural products as well as agricultural equipment and inputs make substantial investments in branding around their businesses and their product and service lines. From a patent prosecution as well as a litigation perspective we also have experience specifically in the prosecution of various types of agricultural equipment patents as well as understanding of precision farming techniques and GPS related farming technology.
Over the years our work and portfolio has also included acting on behalf of a number of agricultural input or products distribution companies. The distribution of agricultural crops or finished products, as well as the distribution of agricultural inputs such as chemicals, seed varieties etc. has given a broad based experience in terms of the types of issues that arise in this context. Collaborative research agreements, confidentiality agreements, and multinational distribution agreements, to name a few, are some of the types of contracts and intellectual property protection and enforcement issues which arise for companies in these industries, and of which I have past exposure.
Manufacturers and distributors of agricultural products also spend great amounts of resources developing brand awareness and brand affinity in the marketplace. On this basis I have done a vast amount of trademark work in the agricultural industry in the past as well, both in Canada and around the world. I also have experience with various types of commercial due diligence which might be required in agricultural distribution contexts. Protection of your brands in the agricultural industry is important and again we have substantial background and experience to assist in this regard. From the procurement of patents or trademark registrations on the front end of the process, through to enforcement or defense of infringement litigation, we have experience representing clients working in this area.
Contact us to learn more about IP protection in the agriculture industry.
International patent protection
A patent only protects your invention in the country in which it is granted, so it is necessary to seek international patent protection if you want your invention to be protected in other jurisdictions. If you have a Canadian patent you are protected from others building or using your invention within Canada, as well as outside of Canada and shipping or selling it into Canada. The only exception to the need to file in each country is the situation where a regional patent convention or treaty allowing for regional processing of patent applications is in place, such as in Europe.
In certain cases where a regional patent convention or processing system is in place it is still possible to file patent applications at the national level only in countries of interest. The benefit to this is that the costs are likely less where only very few countries are of commercial interest. There are also other potential strategic advantages in certain cases, such as where an application is filed for which it is anticipated that there will be difficulties in obtaining allowance of the patent application from patent authorities on the basis of prior art in the field – it may be desired to have the maximum number of attempts available to make such arguments. This is an issue for further consideration later in the process, but for the beginning consideration, it is worthy to note that single country filings, such as in individual countries in Europe, may reduce the overall costs of obtaining patent protection if there are only few countries of interest within a list of nations signatory to a regional patent convention.
COMPLETE PATENT APPLICATIONS
The simplest, most straightforward route of filing a patent application is to simply draft and file a completed patent specification for submission and handling at the Patent Office. The completed patent application, as can be presumed from the way that we refer to it here, is a complete document which is freestanding and can eventually be examined on its merits to assess patentability and potential issuance as a patent to the applicant or owner.
Primary benefits to proceeding by way of the filing of a completed patent application as the initiating document are simply that in the longer term the process will be the most cost efficient, and there will be fewer delays in the timeframe from the date of filing of the application to the hopeful date of issuance of a patent based on the document. Disadvantages to the complete route, versus starting with a provisional application which is outlined in further detail below, include the fact that there is at a cost to the filing of a completed patent application is the document of first instance, as well as the fact that if the research or the conceptualization of the invention is not yet quite completed there may be a modestly greater degree of flexibility available in a provisional application in terms of revisiting the subject matter of the document at a later date to come back and complete that rather than having to commit to claim language and the remainder of the document at this earlier stage in the process.
To provide a visual representation of the most basic filing of a regular patent application in Canada:
Figure 1: Filing completed patent application, no prior disclosure
If there is already a public disclosure of the invention in play, such that the 12 month public disclosure grace period is being monitored or applied to the timeframe in question, the following figure is intended to demonstrate how the public disclosure of the invention in advance of the filing of a patent application will affect the timing of the filing of a completed application – in Canada no more than 12 months from the date of the first enabling public disclosure:
Figure 2: Filing completed patent application, invention previously disclosed
The second filing route which is available to a patent applicant is to proceed by way of filing what is referred to as a “provisional” or “incomplete” patent application. This type of application is available in both Canada and the United States. Effectively what is permitted by the provisional route is for a patent applicant to provide a somewhat incomplete invention disclosure to the patent office, and to secure for a limited period of time of filing date upon which a completed application can later be based. An early patent filing date can be obtained and it is possible to defer, either for economical or for subject matter reasons, the commitment to the final content of the patent specification for up to 12 months. Procedurally what is done then with a provisional application is that within the 12 month period the applicant needs to file a completed application, claiming priority back to the provisional filing date.
The following chart is intended to demonstrate the basic timeline of filing a provisional patent application, in a circumstance where there is no previous public disclosure at play in advance of the date of filing. A public disclosure can take place following the filing date of the provisional application without an effect on the completion timeline:
Figure 3: Filing provisional application, subsequent completion, no prior disclosure
The following chart shows the adjustment to the timeline and requirements in a provisional to complete filing strategy, where the subject matter of the invention has been disclosed to the public in advance of the filing of the provisional patent application:
Figure 4: filing provisional application, subsequent completion, invention disclosed in advance of filing
To summarize then, the primary benefit of the provisional or incomplete patent application filing route is that it does allow us to more quickly and at a lesser cost upfront get something on file to secure a patent pending filing date and protect the client in respect of a following or anticipated subsequent disclosure. Sometimes the provisional route is also found desirable from the perspective of being able to file a larger number of applications upfront, a provisional basis, to initially throw the net as widely as possible in the patent portfolio, and then potentially abandonment or others to proceed as the completion deadline for the provisional applications approaches and the research and development in respect of the technology may be further along, or even the marketing strategy or the market development on the technology may be further along so that either geographically there is a greater appreciation where the market is in terms of developing the remainder of the patent portfolio, or even just understanding where the particular hotspots are in terms of the proposed patent protection.
INTERNATIONAL FILING STRATEGY
Determination of a strategy around international patent protection requires the consideration of multiple layers of statutory requirements at the national and international level. However, the basic options in terms of an international filing strategy include one or more of the following options:
- Filing national or regional patent applications in countries of interest directly;
- Filing national patent applications in countries of interest pursuant to the Paris Convention within 12 months of a first filing date within a Convention country;
- Filing an application pursuant to the Patent Cooperation Treaty, which will mature into national patent applications in countries of interest.
The first option to consider in terms of a strategy around international patent protection is to simply consider filing the patent application nationally in the patent office of each country of interest. This is the most straight-forward process.
Under the International Convention for the Protection of Industrial Property, the contracting parties, including Canada, formed themselves into a union, known as the Paris Union, for the protection of industrial property including patents. This agreement is known as the ‘Paris Convention’. The basis of the Paris Convention is equal treatment of the nationals and residents of the member countries, known as the Convention countries; thus applications for the grant of patents made by those who are applicants in Convention countries within one year of the first application for a patent are entitled to priority from the date of the application abroad. Such priority does not affect the duration of the term of the patent.
As long as a patent application is filed within one Convention country in advance of public disclosure, applications can be filed in other Convention countries within 12 months claiming priority and the benefit of the original filing date. This gives an applicant an ability to stagger their international filing costs, either following public disclosure of an invention or in a case where that first 12 months grace period is sufficient to further refine the listing of countries within which an applicant would like to apply for patent coverage (again, so long as those countries are signatories of the Convention).
Patent applications filed in foreign countries pursuant to the Paris Convention are national applications and are each handled individually. The timeline for completion is therefore shorter than some other international filing methods such as the PCT, but the foreign costs are incurred earlier in the process.
The following figure is intended to demonstrate a circumstance in which it is desired to file additional applications outside of Canada in respect of an invention, where the initiating document was a provisional application, and there was no previous public disclosure of the invention in advance of filing of the Canadian incomplete document:
Figure 5: Paris Conv. international patent filings, start w Canadian incomplete
INTERNATIONAL PATENT PROTECTION THROUGH THE PATENT COOPERATION TREATY (PCT)
A mechanism by which international patent protection can be significantly streamlined is the Patent Cooperation Treaty. Effective January 2, 1990, Canada satisfied Parts I and II of the Patent Cooperation Treaty done at Washington on June 9, 1970, commonly called PCT, thereby joining a system whereby one form of application for a patent may be filed in a receiving office, giving the applicant an option of having that application deemed to have been also filed in such other member countries as the applicant may elect. The PCT allows an applicant to file a single application which will effectively secure a filing date in all countries who are signatories to the PCT by making a single filing. The PCT does not provide an international or global patent mechanism but provides for streamlining to some extent the international filing process. A PCT application must eventually be converted into a national application in each country in which it is desired to perfect patent protection.
The PCT process is divided into 2 stages – the international phase and the national phase. The international phase is the first stage, in which the international application is filed, designating all of the countries in which protection is potentially desired. The international stage filing effectively secures the filing date in all designated countries, and then allows the applicant to postpone the commencement of actual national proceedings in the countries of interest by 30 months from the earliest priority date claimed.
Some of the advantages of the PCT process are the following:
- An international search is performed and the results provided to the applicant, which gives us a chance to anticipate the search results in individual countries;
- The deadline to file national applications is extended by either 18 additional months to 30 months from the earliest priority date claimed;
- An international examination can be requested which will again allow the applicant to get some preliminary feedback on the application in advance of the national filings, which can allow for a greater latitude to correct defects in the application in advance of national filing costs being incurred.
Another alternative is to file the PCT application as the originating priority application, rather than claiming priority from a national application. The following diagram demonstrates this approach:
Want to protect your idea internationally or fine-tune your strategy around international patent protection? Let us know and we can help.