Patents On A Budget: What To Register, When And Where

The first thing to consider is whether the invention has long term potential. Since it normally requires two to three years to obtain an issued patent, there is no use expending financial resources on technology that will be obsolete when/if the patent issues. Another important criterion is whether the invention relates to an area of technology that is core to your business. Research departments regularly come up with inventions which are interesting but which have little to do with the company’s core business.

Where to seek patent protection?
When considering where to file for patent protection, it should be kept in mind that filing patent applications in many countries is costly, especially in countries that require translations and have high patent office fees (e.g. Japan). It is generally a good idea to formulate a list of countries in which it makes business sense to seek patent protection. To formulate such a list, existing markets, future target markets as well as markets where competitors are operating should be identified. Countries can be removed from the list based on other criterion. For example, will it be possible to effectively enforce patent rights in that country? Will the cost of obtaining patent rights for the invention exceed a reasonable portion of the potential business revenue in that country?

When to file?
Budget constraints typically cause the filing of a patent application to be delayed. Usually, a company wants to ensure that an invention is commercially viable before it goes ahead with the expense and uncertainty inherent in seeking patent protection. However, there are significant downsides to delaying the filing of a patent application. Patent laws generally require that a patent application be filed before public use or disclosure of the invention. While Canada, the U.S. and Brazil provide a one-year grace period, patent rights in other countries (notably Europe and Japan) are lost once an invention is publicly disclosed. Accordingly, it is better to publicly disclose the invention after a patent application is filed if protection is desired outside Canada/U.S. International treaties permit the filing of a patent application in a country claiming filing priority from an original filing one year earlier. Accordingly, one useful strategy is to file a single application in Canada or the U.S. and then file in other countries of interest within one year, depending on the amount of market or investment interest the invention has attracted during the year. Alternatively, where foreign protection is not required, applications can be filed in the U.S. and Canada up to one year from public disclosure of the invention.
Isis Caulder is a Toronto-based lawyer and patent agent with a Masters in Electrical Engineering. Isis is a partner at the IP specialty firm Bereskin & Parr. She can be reached by phone at (416) 364-7311 or by e-mail at icaulder@bereskinparr.com. This article is intended to provide general information regarding intellectual property and should not be considered legal advice.