Patents

A patent provides an exclusive right to make, use and sell an invention. The process to get from a patent application to a granted patent can be long and arduous. Patent lawyers are skilled at “prosecuting” a patent application (i.e. defending its patentability before the Patent Office) to get it issued as a patent. The patent can be enforced against infringers. An infringer is anyone who makes, uses or sells the invention claimed in the patent without permission of the patent owner.

We advise inventors on the patentability of their inventions. We also draft and prosecute patent applications. We work with a network of associate firms around the world. Many of our clients are interested in securing patent rights outside of Canada. We are skilled at managing the complex array of deadlines and specific country requirements to get patent protection. We also advise on infringement issues. We represent companies in the enforcement of patent rights and defend companies accused of infringing.

Deeth Williams Wall LLP’s patent agents are all lawyers. Most have expertise both in obtaining and litigating patents. With a variety of technical and scientific experience and knowledge, our patent professionals also bring commercial sensitivity to bear. They are, therefore, particularly qualified to advise clients on all aspects of obtaining, commercializing and enforcing their patents.

Obtaining the Patent

DWW has both the technical and legal expertise needed to obtain the broadest possible patent protection for our clients. We have particular expertise in the areas of chemistry, biochemistry, biotechnology and pharmaceuticals. However, we act for clients in an extremely broad range of mechanical patents as well.

We advise clients on patent strategy and patent portfolio management. We conduct searches and draft opinions to clients on whether their inventions are patentable or whether they infringe existing patents. We draft and file patent applications and prosecute these applications through to patent issuance. Where necessary, we make submissions to the patent examiners and represent clients in administrative proceedings to ensure they obtain the broadest possible protection.

Filing Strategy

Deeth Williams Wall LLP patent lawyers have a great deal of experience in managing patent portfolios. We use many creative approaches for protecting the full scope of innovations and continuing improvements to those innovations. We also have the skill and experience to ensure that meaningful protection is achieved, both in Canada and internationally, in a cost-effective manner.

Enforcement

It is the responsibility of a patent owner to enforce a patent against infringers. There is no policing of patents by government authorities or criminal sanctions available against infringers. It is therefore necessary to bring legal proceedings against infringers to stop their activities.

DWW has particular expertise in patent litigation. Our lawyers have been involved in many of the leading patent cases in Canada. We have represented patent owners in injunction actions to stop infringing activity. We have also represented clients who are defending their right to engage in non-infringing competition.

Commercial Exploitation

Patent rights can be assigned or sold outright to a party who is interested in commercializing a new product that another has invented. Joint ventures can be created to exploit a new product. At Deeth Williams Wall LLP, we specialize in using our expertise in areas of patent law to ensure that our clients maximize the commercial potential of their innovations. We ensure that our clients’ interests are protected when entering into such arrangements.

We advise clients who wish to license their patent to others or form joint ventures with others to further develop and market their inventions. We negotiate and draft licenses and other commercial agreements involving patent rights. We also advise clients who wish to invest in patented technology or to acquire patent rights. We ensure that our clients negotiate the most favourable terms possible when transferring or acquiring patent rights.

Investing in Technology

It is critical to undertake appropriate due diligence when investing in a new technology. We have expertise in assessing the patentability of new technology and the validity of Canadian patents that may already be in place for a technology. We also assess the merits of international patent portfolios and the ability to obtain global patent protection for new products.

Exploiting Existing Technology

When bringing a new product to market, it is equally important to conduct due diligence to ensure that there are no patents in place that cover the product. Infringement searches and analysis should be carried out by qualified lawyers and patent agents before bringing a new product to market. This course of action should also be followed when a patent owner brings the patented product to market. It is sometimes the case that a patent covers an improvement to an existing technology. In many cases, one must make use of the existing technology in order to make use of the improvement. If the existing technology is still covered by a patent, the owner of the improvement patent could be infringing the existing patent by using the improvement.

Frequently Asked Questions

What is a patent?

A patent is a legal instrument that gives the owner the right to stop competitors from making, using or selling a specific inventive product. This right has a significant commercial value because it grants the owner of the patent a monopoly. This monopoly allows the owner to set as high a price as the market will bear for the product without the possibility of the price being driven down by competitors who have not had to incur research and development costs. This encourages entrepreneurs to bring new products to market.

How long does a patent last?

In Canada, a patent lasts for twenty years from the date on which the patent application was filed. After that time, the patent expires. The invention then falls into the public domain and anyone can make, use or sell the invention in Canada.

What type of products does a patent protect?

A patent applies to products or processes that have a special function or which produce a special functional result. To be patentable, a product must also be new and inventive.

In Canada, a product is considered to be new if it has not been previously shown to the public anywhere in the world prior to the filing date of a first patent application for the invention. In Canada and the United States an exception to this rule is provided in that an inventor may file a patent application within one year of showing his or her invention to the public.

A product is considered to be inventive if it would not have been obvious to a person who is skilled in the same field to make the same leap that the inventor has made. This is especially the case where the invention yields a unique or unexpected advantage.

In the biochemical field, inventions yielding functional results such as new drugs, genes, proteins and chemical compounds are patentable. It is also possible to patent lower life forms that are new and inventive such as new strains of bacteria, fungi and other single celled organisms. It is not possible to patent higher life forms such as complex animals and plants.

Who can apply?

Only a true inventor or a person acquiring rights from the true inventor can file a patent application for an invention. In Canada, and most other countries aside from the United States, where two people independently make the same invention, it is the first inventor to file a patent application who is entitled to the patent for that invention.

How do you apply?

It is advisable to retain a registered patent agent to prepare and file a patent application. In view of the costs of preparing a patent application, it is prudent to conduct a search to ensure that the invention is new and inventive in view of the closest related technology in the field. It is essential for a patent agent to be familiar with the closest related technology in the field in order to ensure that there is a reasonable prospect of obtaining a patent and that the full scope of the invention will be covered.