Understanding the patent process

Navigating the process to obtain a patent is complicated and so this month we invited Dan Polonenko to help answer some questions to help local entrepreneurs and business owners understand more about the patent process.

Dan is a registered Canadian and US patent agent in Gowling WLG’s Calgary office with a practice that includes patent drafting and prosecution in the fields of health, medical devices, oil, gas, energy, environmental equipment and technologies, and process engineering. 

What is a patent?

A patent is a legal grant of a commercial monopoly provided by a Government Patent Office.

An issued patent is valid and enforceable in the country wherein that country’s Patent Office issued the patent.

Is there a place that I can search to find out if my invention is unique?

Each country’s Patent Office makes its patent database available for searching. For example:

in Canada

in the USA

in the World Intellectual Property Office (WIPO)

One of the best free patent search engines is Google patents

What is the process to get a patent and how do I determine if it is feasible to do so?

The process to obtain patent protection generally includes the following steps:

1.Summarize the proposed invention and list the key elements (or components or steps).

2.Determine if the proposed invention is potentially patentable and there are 3 criteria to consider:

(i) Is it novel, i.e. has it been completely disclosed in public before, e.g., in published patent application, in a website posting or on social media, has it been presented at a tradeshow or in a slide presentation?

(ii) Is it obvious to someone skilled in the art, i.e., would someone working in that field be able to combine one or more previously publicly disclosed documents or presentation, and produce your invention from those combinations?

(iii) Does the invention have utility, i.e. commercial value (would somebody be willing to pay you money for the invention?)

3. If it is determined that your proposed invention is patentable (i.e., novel, not obvious, and has commercial value), then this step is to write a patent application and submit it to a Patent Office.

(i)  The Patent Office will review your patent application and will make a decision whether or not it is patentable.

(ii) If the decision is yes, they will issue a Notice of Allowance and a deadline for paying the issue fee. After you pay the issue fee, the Patent Office will issue your patent.

(iii) If the decision is no, the Patent Office will issue an Office Action that lists their objections and rejections and provide a limited time period for you to respond. You can then prepare and file a response which the Patent Office will consider and respond to. This part of the process is called “prosecution”, and may take anywhere from 2 – 10 responses and Office Actions before the Patent Office will issue a Notice of Allowance. Quite often, patent applications are abandoned during the prosecution process.

4.  After the patent is allowed, regular maintenance fees are required to keep the patent in good standing.

-        In Canada, maintenance fees are required annually,

-        In the USA, maintenance fees are required every 4 yrs.

What kind of inventions can be patented?

We can patent anything that is new, un-obvious, and useful. The categories generally are:

-  Devices, apparatus, equipment, and machines.

-  Systems for doing or providing something wherein a number of different devices and/or apparatus and/or equipment are required.

-  Compositions of matter, e.g., formulations that contain mixtures of things, active ingredients and carriers, and the like.

-  Methods of manufacturing or producing something.

-  Processes for executing commands (e.g., software for controlling systems)

What information needs to be provided in a patent application?

A patent application has to include the following parts:

1. A title,

2. A short description of the prior art (or what’s currently available) and the problems with the prior art,

3. A summary section (that summarizes the claims section),

4. A description of the drawings presented with the application,

5. A detailed description of the of the invention,

6. A set of claims, and

7. An abstract (which is a 1-paragraph short summary of the claimed invention).

Can anyone prepare a patent application or is it best to hire a professional?

Anyone can prepare and file a patent application, but in the long run, it is better to hire a registered patent agent to prepare and file the patent application.

The reason is that a registered patent agent is experienced in drafting the application and has a deep knowledge of the format required and detailed information required for each part of the patent application. Applications prepared and filed by registered patent agents have a much higher probability of quicker prosecution with and allowance by the Patent Offices.

How long does a patent last?

The lifetime of a patent is 20 years from the filing date of the first application.

Is it recommended that a patent be filed in different countries and why?

Patent applications should only be filed in those countries where there is: (i) a market potential for sales of the products or services, and/or (ii) a likelihood that a competitor may manufacture and ship infringing products (or provide infringing services) to other countries.

My rule of thumb is that there should be a revenue potential of at least $10 million/yr in a country to justify incurring patent protection costs in that country.

What is the approximate cost to file a patent?

The cost to file and protect a patent: (i) depends on how simple or complex the invention is, and (ii) is typically spread-out over 3 – 5 yrs depending on how quickly or slowly the prosecution process takes place.

The all-inclusive cost to protect an invention in Canada during the drafting, filing, prosecution, and issue process will likely be in the range of about $10,000 - $15,000 over a 1-2 yr period for less complicated mechanical inventions to anywhere from $25,000 - $50,000 over a 3-5 yr period for more complex inventions involving multiple components and element.

Similar costs are typical for each additional country filed in.

If you wanted to explore the patent process, you can reach Dan by phone at 403-298-1950 or by email at dan.polonenko@gowlingwlg.com

Community Futures Entre-Corp has been supporting small business since 1988. We provide the tools and guidance you need to run your business.  For more information about our programs and how we can connect you with helpful resources, please call Community Futures at (403) 528-2824.

Elizabeth Blair is the regional innovation network coordinator for APEX Alberta. APEX Alberta supports the growth of innovative and technologically-oriented businesses in Southeast Alberta. APEX Alberta is a collaborative initiative between three core service providers: Community Futures Entre-CorpMedicine Hat College and Alberta Innovates

Success Takes Work

You do not make it to the top without doing what others will not. This is true in life, and especially accurate in business.

Taking a proactive approach and expecting more of yourself everyday does take effort, strategy and discipline; however, in the end it will save you time, make you money and help you build an enterprise customers are naturally attracted to.

Everyone is looking for the secret to success, but few are willing to do the work it takes to get it. Here are a few simple ways to stand out in business and beat the competition every time by doing what others find difficult.  

#1 The 5% Rule. This is my favorite and seriously, if you do nothing else, do this. Always work to do five percent more than you think you can. Most people (and business owners) are looking for ways to do less. Focusing on being five percent more effective, connecting with five percent more customers or taking five percent of your time to work on the future of your business is at least ten percent more than others are doing.

#2 Quit products. Be ready to let go of products and services that do not make you money. An easy method to achieve this is to evaluate your sales and product offerings by talking to customers in a continuous way. Typically, this form of market research is completed at the startup phase of a business; however, it is very helpful to infuse customers conversations into your regular business activities. After all, customers know what they want, and what they don’t.

#3 Get your pitch on. Simply communicating what you do or what you sell is one of the most important business strategies for entrepreneurs. While it can be challenging to define a statement that succinctly communicates your product offering, is definitely worth the time it takes to craft and practice it. If potential customers cannot understand what you do, they definitely cannot find a reason to make a purchase from you.  

Competitive advantage is everything in business. It’s easier than you think to stand out, if you make the extra effort to expect more, evaluate quicker and communicate better than the competition. So stop making excuses and start making business success a reality.

The MHC Entrepreneur Development Centre helps students and alumni bring their entrepreneurship dreams to life. We offer 1-1 coaching, training, mentorship and access to a diverse network of startup funding.  

30 years in business

Community Futures Entre-Corp in Medicine Hat is celebrating 30 years of business.

During this time, we have helped over 1,200 small businesses get started in Southeast Alberta by helping entrepreneurs access approximately $32 million in loans, leveraging another $28 million, creating or maintaining another 3,452 jobs in the region. We have helped train thousands more through our training and seminar programs offered in the region.

We have been delivering business services to startups and expanding businesses in our region since 1988.  We offer these primary services: lending, small business advice, training and community economic development.

Community Futures offices are located all across Canada. They are strategically located in rural communities with a goal to provide programs and services that help create new employment and align with the needs of each community. Community Futures is part of the national Community Futures organization which is funded by Western Economic Diversification Canada (WD).

We are a non-profit corporation run by a volunteer board of directors who bring local knowledge and insight to the team for planning and direction. Day to day operations are run by experienced business professionals who have a like-minded passion to support and assist entrepreneurs and small businesses in our region.

As we reflect on the past 30 years, we have accomplished great things in our region.

Community Futures Entre-Corp has offered the Self-Employment Training program since 1993.   This program is designed for people who have never been in business before. It is a 7 week program that focuses on the key elements of running a business. Topics covered include:  GST/payroll, bookkeeping, income tax matters, understanding sole proprietorship/partnerships/corporations, pricing, cash flow budgeting, operations, market research, business plan preparation and many others.

Another long-standing successful program is the Alberta Youth Entrepreneurship Camp (AYEC) which has been held annually since 1998.  This program has been helping create the next generation of entrepreneurs in our region.

Community Futures Entre-Corp is also part of the provincial support system called the Alberta Regional Innovation Network. The Regional Innovation Network (RIN) collaborates to put their collective resources together to support and improve the development of innovations among small and medium-sized businesses (SMEs). The Regional Innovation Network in Southeast Alberta is known as APEX

For more information about how our programs can help your business, please call Elizabeth at 403-528-2824.

Elizabeth Blair is the regional innovation network coordinator for APEX Alberta. APEX Alberta supports the growth of innovative and technologically-oriented businesses in Southeast Alberta. APEX Alberta is a collaborative initiative between three core service providers: Community Futures Entre-Corp, Medicine Hat College and Alberta Innovates

Business Model Canvas Explained

Writing a business plan can be a daunting task for entrepreneurs.  But it doesn’t have to be.

In fact, writing a solid plan can be a fun collaborative process that helps entrepreneurs save time, improve team collaboration, and look deeply at the integral pieces of any new product or business venture.

The business model canvas, a graphical business model worksheet, was developed by Alexander Osterwalder of Strategyzer, with a goal in mind of helping entrepreneurs be more innovative and focus on the value they provide to the customer when validating and moving a business idea forward.

The easy-to-use business model canvas template is available online and can be used in digital or print format.  It works well for individuals and groups and serves as a conversation generator.  Too, it helps idea focused entrepreneurs organize thoughts and concepts before beginning a formal business planning process.

The main categories included in the model are:  customer segments, value propositions, channels, customer relationships, revenue streams, key activities, key resources, key partnership and cost structures.   Addressing these categories helps bring focus to an entrepreneurs thinking, bring out opportunities easier and address customer opportunities as a primary motivator for building the business. 

The categories in the model and the design thinking process are helpful in developing the content requirements of most traditional business plan templates, assisting entrepreneurs to build a solid and concise plan in an effective way.

The business model canvas works very well for small startups with limited budgets and business complexity, and can also be useful to existing businesses looking to innovate their product line or address new market opportunities.

The model can be used individually or can be facilitated externally.  Either way, this tool is a simple, liberating and enjoyable way to build a business model, clarify ideas and validate a move forward strategy for any new venture. 

The process of building a business model and plan doesn’t have to be boring and uninspiring.  Give the business model canvas tool a try, and see for yourself. 

The MHC Entrepreneur Development Centre helps student and alumni bring their entrepreneurship dreams to life.  We offer 1-1 coaching, training, mentorship and access to a diverse network of startup funding.  To connect into our network email edc@mhc.ab.ca or call 403.502.8433.