This Week in Patent History: 26-Aug-1930

This Week in Patent History: 26-Aug-1930

“This Week in Patent History” reminds us that inventors invent all around us every day by highlighting events over the years – This week: 26-Aug-1930.  Mary Bellis’ monthly calendars (Famous Inventions and Birthdays) inspired us (https://www.thoughtco.com/today-in-history-august-calendar-1992501).  Information and images for the selected event are taken from the web, especially Wikipedia (https://en.wikipedia.org/wiki/Philo_Farnsworth)

Our first “This Week in Patent History” post (26-Aug-1930) salutes an invention found and used in every home.

Who is Philo T. Farnsworth?

Born August 19, 1906, Philo T. Farnsworth spent his teen years on the family ranch near Rigby Idaho.  A generator supplied his house with electricity for lights and farm equipment.  Philo was mechanically minded and soon took care of  and repaired the generator.  Always tinkering, he turned his mother’s hand-powered washing machine to an electrically driven one. He also invented a magnetized car lock.

The back-and-forth path when plowing a field inspired his concept for scanning images as series of lines.  At 14, he started working on an electronic television based on this concept.  He gave his high school science teacher several sketches  of it.

Philo T. Farnsworth Inventor of the Television - This Week in Patent History - August 20, 1930

Philo T. Farnsworth (wikipedia)

Philo and his family moved to Provo, Utah when he was 17.  His father died the next year and Philo cared for the family while in high school.  He applied to the US Naval Academy in Annapolis, getting in with the second highest test score.  He left because  the navy would own his patents if he stayed in the military.  Farnsworth obtained an honourable discharge as the oldest son of a fatherless family.

Philo studied at Brigham Young University and later started a radio repair business in Salt Lake City.  It failed but he stayed in Salt Lake City.  Soon after, two San Fransisco investors backed Farnsworth’s TV research, in Los Angeles and later, in San Fransisco.

The electronic television

Patent History 26-Aug-1930 Philo Farnsworth invents the TV

Most TVs at the time had a mechanical scanner with spinning disks.  The disks had spiral hole patterns that swept across images in short arcs.  Photosensive material captured light from the image, producing an electrical signal corresponding to the light intensity.

Farnsworth wanted to use an all-electronic scanning system, believing that the old systems had speed limitations.

On September 27, 1927, his “image dissector” camera tube sent an image to another room of his lab. The image was of a straight line on a glass slide, backlit by an arc lamp.  Philo is said to have told his lab assistants, “There you are — electronic television!”  He was only 21.  Farnsworth showed the press his system on September 3, 1928, using a dollar sign image.  By 1929, Farnsworth had gotten rid of the last mechanical part, a motor-generator, from his TV.  He also sent the first images of a live person, his wife, that same year.

US Patent No. 1,773,980 “Television System” and 1,773,981 “Television Receiving System”

Philo had met with a patent attorney shortly after coming to California.  He filed a patent application for the first fully-functional all-electronic image pickup device (video camera tube) on January 7, 1927.  The patent issued on August 26, 1930 as US Patent No. 1,773,980.  He also filed an application the same day for a television receiving system.  It too issued on August 26, 1930 as US Patent No. 1,773,981.  26-Aug-1930 thus stands, in patent history, for the grant of the first modern TV system patents.

RCA Patent Battles

In 1930, RCA hired Vladimir Zworykin, a Westinghouse engineer, to lead its television group.  While at Westinghouse, Zworykin had visited Farnsworth and got several copies of Philo’s device for experimentation. The two developed electronic TV systems in different ways.

RCA and Zworykin started several patent suits against Farnsworth, based on Zworykin’s patents.  They were mostly unsuccessful.  Philo used one of his 1922 sketches to his Idaho school teacher as evidence in one of these suits.

In 1931, RCA offered to buy Farnsworth’s patents for $100,000 (now worth $1,688,000) and to join RCA.  Philo refused, joining the Philco company in Philadelphia until 1933.  Philo later formed the Farnsworth Television and Radio Corporation in Fort Wayne, Indiana in 1938.  ITT purchased this company in 1951.

Some of Philo’s “image dissector” TV cameras broadcast the 1936 Olympic Games from Germany.

In September, 1939, RCA agreed to a licensing agreement with Farnsworth for his television system patent.  It was worth $1,000,000 (now worth $18,460,000).  This allowed RCA to publicly sell electronic TV cameras.  RCA had already shown them at the New York World’s Fair on April 20, 1939.

Other Television Patents

Patent History: 26-Aug-1930 Television System Patents

In addition to the television (and receiving) system patents, Farnsworth got patents for:

Farnsworth had the first fully-functional and complete all-electronic TV system.  He developed a TV system complete with camera and receiver.

Other Farnsworth Inventions

In addition to his work on TVs, Farnsworth invented:

He also contributed to the development of:

Legacy

Patent History: 26-Aug-1930 the legacies of Philo Farnsworth's invention of the TV

Farnsworth’s TV camera and other TV inventions paved the way for widespread use of TV technology. TV screens are now found in homes, offices and even shopping malls around the world.

Farnsworth’s wife once said that he was unsure about the value of his TV invention.  This uncertainty ended when he saw the televised image of man walking on the moon in July 1969.

Farnsworth died in 1971, holding 300 US and foreign patents, including by his count, 165 US TV patents.  The  National Inventor’s Hall of Fame inducted him in 1984.

In 1999, Time Magazine included Philo Farnsworth into the “Time 100: The Most Important People of the Century”

Broad patent and legal experience of DSL Patents Inc.

Use DSL Patents as your patent agent

We are a registered patent firm based in the GTA (Markham-Stouffville region). However, we operate a location-independent practice that supports Canadian inventors and start-ups from coast to coast.

Drafting experience

We have 20+ years’ experience drafting and prosecuting Canadian, US and international patent applications, on inventions including:

Litigation experience

We also have general, IP and patent litigation experience.  Our CEO Dennis Leung (his LinkedIn profile is here), is a (non-practising) lawyer and registered patent agent. While a lawyer, Dennis worked at many leading Canadian full-service law firms (McCarthy Tetrault, Ogilvy Renault (Norton Rose Fulbright)) and IP boutiques (Smart & Biggar, Ridout & Maybee, Shapiro Cohen (Aventum IP)).

Dennis was counsel before the Supreme Court of Canada in the leading case on patent claim construction (Whirlpool v. Camco).

Licensing experience

Dennis worked in-house with a leading reverse engineering firm.  He set out strategies, reviewed contracts and supported its clients’ international patent licensing programs.

Teaching experience

Dennis taught Patent Law  at Queen’s University’s  Faculty of Law for several years.  He wrote the Canadian chapter in a leading text on Global Patent Claim Construction. Finally, he trained many of today’s current registered patent agents on each of the topics of the patent agent exams.

For further information

If you want to find out more about the patent process and how using a patent agent from DSL Patents Inc. can free you up to focus on your innovations, please contact us for a free consultation at your convenience:

+1.613.668.2746 (phone or text)
+1.866.599.6608 (fax)
www.dslpatents.com/Contact

 

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Why Should I Use a Patent Agent?

Why should I use a Patent Agent?

Use a patent agent

As an inventor, you can certainly draft and file your own patent application.  Also, if you want, you can receive and respond to the Patent Office’s Examiner’s Reports (often called an Office Action) yourself.  So why do you need a patent agent?

The short answer is you don’t.  However, to paraphrase Abraham Lincoln, “The inventor who acts as his or her own patent agent has a fool for a client.”

Why?  Well, the  patent drafting and prosecution process poses a number of challenges that complicate the process. New challenges crop up all of the time.

Use a patent agent for: Claim drafting

Use a patent agent for claim drafting

The claims in this case are actually in Latin. Most of the time, it only seems that way!

Claim drafting poses the biggest obstacle in the patent drafting process.

Basic rules of patent claims

First, you need to obey the basic rules of patent claims:

A registered patent agent frequently works within this complicated framework of rules to draft claims that describe the invention.

Claim the invention broadly

Then, you need to claim your invention broadly.  Most inventors (and indeed many patent agent trainees) tend to draft their claims too narrowly, that is, they add too many limitations on what they say their invention is.  The patent examiner is not going to object.  The examiner may even allow the application, often on the first try, since you are requesting a very narrow monopoly. He or she is only too glad to grant a patent with overly narrow patent claims.  You just made the examiner’s job very easy!

Use a patent agent to properly draft a claim to this paper clip

How would you describe the invention of the simple paper clip?

A simple example.  Consider the lowly paper clip.  Assume you just came up with this invention.  How would you describe the invention in claim language?

Ready, set, go!  (Really.  The best way to figure this out is to try to write out a claim using the rules set out above.  We will wait for you to finish.  Also, time yourself and figure out how long it took you to draft a single claim.)

What did you come up with?  In most cases, your claim probably mentioned one or more of :

Metal, Wire, Loop?

Now think about those features listed above that you have in your (written or imaginary) claim.  Have you ever seen a plastic paper clip? Those aren’t metal and usually aren’t in a wire.  What about “loop”?  Have you ever seen paper clips like these?

Make sure your paper clip claim covers these alternative forms without metal, wires or loops

Where is the metal? wire? loop?

Flat?

Do all paper clips have to be flat?  What about the oldie but goodie below?

Ensure your paper clip claim includes this 3D form

This paper clip isn’t even flat!

All of the features listed (metal, wire, loop, flat) are not necessary to the broad inventive concept (discussed below).  If you include any of them, you are unnecessarily narrowing the scope of your patent.

A registered patent agent can help you eliminate features of your invention that are not necessary to the broad inventive concept.

Claim the invention functionally

A better approach is to claim the invention, not by what it is or what it looks like, but by how the invention functions.  If you claim functions, instead of structure or features, it will cover any invention that performs the function, whether or not it has the same structure or features that you came up with.  This will help provide you with a broader claim.

Of course, the patent office is hip to this.  Many jurisdictions have (more!) rules that try to force you to provide at least some structure in your claim.  For example, at a minimum, the patent office forbids claiming a result. The claim must at least identify how you obtain the result.  But there is a wide gulf between result-only claims and overly narrow claims that put in a lot of unnecessary structure.  This is one important area, where a registered patent agent can help you.

(By the way, click here if you want to see a sample claim that covers all three types of paper clips shown.  And this isn’t even a very good claim, but it illustrates the concept of claiming functionally, and thus relatively broadly!  If you can, identify a type of paper clip that this claim doesn’t cover.  If you do, e-mail us and let us know.  We will try respond with a revised claim!)

Good registered patent agents think of things functionally, as opposed to structurally, and describe concepts in functional language, while still obeying the rules set up by the patent office.

Claim the invention!

When working with inventors over the years, we have noticed that very often, the idea that the inventor has, of what the invention consists, is fairly different from what we understand the invention is.  This is, we think, a natural result of the inventive process.  The inventor identifies a problem and comes up with a solution. As long as the solution solves the problem, all investigation tends to stop and the inventor thinks of the solution as the invention.

Because, as a patent agent, we are looking at the function, not necessarily the structure, of the solution, often we can see (or can ask the inventor, to get a sense of), not only how the solution solves the inventor’s particular problem but how the solution could solve other, related (or even unrelated) problems.  This allows us to do two things to broaden the claim.  First, we can get rid of features that only relate to the particular problem that the inventor was trying to solve.  Second, we can describe the invention in terms of generalities, that include not only the problem identified by the inventor, but the other problems that the solution solves.

A skilled and experienced patent agent can work with you to properly identify your inventive concept, which will get you a claim describing an invention that may be broader than the invention you thought you had come up with.

Use a patent agent for: Exam prep

The patent agent can then work with you to prepare a set of claims, gradually adding features or limitations to the previous claim(s), until there is a claim that covers the particular solution that you came up with and which solves the problem that you were trying to deal with.

You can use this further set of claims during the examination process.  If the examiner raises prior art, we can  get around the examiner’s concern by importing a feature from a lower, or dependent claim that distinguishes the invention from the prior art, into the main patent claim.

The problem of patent “bins”

In many technical areas, including the high technology and chemical / pharmaceutical fields, the governments of different countries and/or the patent courts have developed specific rules forbidding some claims on the basis of lack of patentable subject matter.  In many cases, an experienced patent agent can help you circumvent these rules by small changes to the form and structure of the claims.

Save your money

Believe it or not, an experienced patent agent can even save you money through claims drafting. Many jurisdictions, including the US and the EP, assess penalties if you have too many claims.  Some, like the US, have fancy  counting rules so that, even if you think you have less than the threshold number of claims, you still have to pay expensive excess claims fees.

Use a patent agent for: Patent Descriptions

There are challenges in the drafting of the patent description as well, although these are less critical. The most important rule is that you can’t add information after the initial patent filing. An experienced patent agent can help you extract and set out further details in the description during the drafting process, to make the examination process later much easier.

Other rules include the enablement and best mode requirements. Some jurisdictions have rules to ensure there is support in the figures and/or the description for specific types of claims, such as method claims. If you don’t, your patent may not be valid.

Use a patent agent: Meeting deadlines

There are lots of deadlines during the examination process. You need to meet all of these deadlines. A patent agent will record them and remind you before they come up to make sure that you won’t miss them. You may have to choose between several actions, each with different deadlines, or a series of steps at different stages in the examination process. The Examiner will not normally explain these options at all, or in a way you understand. If you don’t  choose correctly, however, you may lose patent rights; ignorance, or lack of experience, does not excuse this.

It’s what you say and how you say it

Finally, you must take be careful, especially in some jurisdictions, how you respond to the Examiner’s concerns. The words you use  in response to an Office Action, may limit the protection your invention might otherwise have after it eventually issues.

Use a patent agent for: Focusing on innovation

With all of this in mind, we believe that you should concentrate on developing your technology and growing your business, without worrying about obeying the many confusing patent rules.

Broad patent and legal experience of DSL Patents Inc.

Use DSL Patents as your patent agent

We are a registered patent firm based in the GTA (Markham-Stouffville region). However, we operate a location-independent practice that supports Canadian inventors and start-ups from coast to coast.

Drafting experience

We have 20+ years’ experience drafting and prosecuting Canadian, US and international patent applications, on inventions including:

Litigation experience

We also have general, IP and patent litigation experience.  Our CEO Dennis Leung (his LinkedIn profile is here), is a (non-practising) lawyer and registered patent agent. While a lawyer, Dennis worked at many leading Canadian full-service law firms (McCarthy Tetrault, Ogilvy Renault (Norton Rose Fulbright)) and IP boutiques (Smart & Biggar, Ridout & Maybee, Shapiro Cohen (Aventum IP)).

Dennis was counsel before the Supreme Court of Canada in the leading case on patent claim construction (Whirlpool v. Camco).

Licensing experience

Dennis worked in-house with a leading reverse engineering firm.  He set out strategies, reviewed contracts and supported its clients’ international patent licensing programs.

Teaching experience

Dennis taught Patent Law  at Queen’s University’s  Faculty of Law for several years.  He wrote the Canadian chapter in a leading text on Global Patent Claim Construction. Finally, he trained many of today’s current registered patent agents on each of the topics of the patent agent exams.

For further information

If you want to find out more about the patent process and how using a patent agent from DSL Patents Inc. can free you up to focus on your innovations, please contact us for a free consultation at your convenience:

+1.613.668.2746 (phone or text)
+1.866.599.6608 (fax)
www.dslpatents.com/Contact

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Your client wants patent advice and you are not a patent firm

Law firm can't provide patent advice since not patent firm

You are a lawyer in a small to mid-size Canadian law firm. You have great tech clients.  Some of these clients are start-ups, some are small to medium-size enterprises (SMEs). Some are even large national and multinational businesses.  You provide strong basic corporate law advice. You also help with corporate finance, securities, labour, environmental and other issues that may arise. But what if your business law client wants patent advice and you are not a patent firm?

What is a registered patent agent anyway?

You need a patent agent from list to be a patent firm but you can still provide patent advice

The Canadian Intellectual Property Office (CIPO) handles IP in Canada, including patents through the Canadian Patent Office.  CIPO maintains a register of patent agents. Canadians are registered when they pass the patent agent exams.

Canada’s patent agent exams

Patent agent exams test whether you can provide patent advice - patent firm needs a patent agent

The Canadian patent agent exams are held every April across Canada.  Candidates must have applied within two months of the exams’ announcement.  Also, on the first of four consecutive exam days, the candidate must have 24 months’ experience:

There are four exams, in order:

Drafting

You are given an invention description,  a set of drawings and several similar inventions. You must write a complete Canadian patent application having:

Validity

You are given an issued Canadian patent and several similar inventions.  You must answer questions* on whether the patent claims have:

Prosecution

You are given:

You must answer questions* on how to:

Infringement

You are given an issued Canadian patent and at least one alleged infringing device.  You must answer questions* on:

*In each of these exams, you are also asked about:

Passing the exam

There is a minimum grade overall and for each exam.  You must re-write the exam if you don’t beat the overall average grade.  But if an individual grade is high enough, you can avoid writing that exam again.  The overall pass rate is low, about 20%.

Usually, a candidate works in a registered patent firm for many years before passing.

Why are there so few registered patent firms?

If at least one member of a firm is a patent agent, the firm may be a registered patent firm. Patent firms can use the term “Patent Agents” on their marketing materials.

A patent firm may be a law firm or a non-lawyer patent agency.  Some firms have both a law firm and a patent agency.  Lawyers who are also patent agents are members of both.  Lawyers who are not patent agents are members of the law firm only. Non-lawyer patent agents are members of the patent agency only.

Often, a law firm has to recruit a patent agent from another patent firm to become a patent firm itself.

How to bootstrap a patent practice

How to bootstrap a patent firm to provide patent advice if you do not have patent agent

Many non-patent law firms don’t have enough work to support a patent agent.  When patent work comes in to these firms, it gets referred elsewhere.  There is a  risk that your client will retain another “full-service” firm that can provide patent advice.  Then, you may lose the work you are doing, not only the patent work, to a competitor.

Until now, the only solution was to hire away another firm’s patent agent with enough work to justify the agent’s compensation.  Thus the patent agent was often fairly senior (expensive).

But what if you could keep the patent work you do get?  Then you could recruit more junior agents who might have fewer clients but be much less expensive.

DSL Patent Inc.’s Patent White Labeling service is designed to help firms like yours do just that.

What is the Patent White Label Service?

Patent White Label Service for lawyers to provide patent advice while not patent firm

Our Patent White Label service serves law firms without a registered patent agent.

It allows you to tell your clients that you can give them patent services and advice.  We provide some of these services for you in a client-anonymous fashion.  We meet (alone, or with you) with your clients as your representatives.  You provide the remaining services, directly, with our support.

Additionally, we can supply excess capacity and expertise in underserved areas and technologies to registered patent firms.

Either way, our contract is with you, not your clients.

Patent advice our patent firm supplies for you

The law in Canada distinguishes between legal advice, and patent preparation (and related services).

Patent services that should be provided by a registered agent or firm include:

Patent advice your (non patent) firm can supply directly with our help

However, you can provide other patent (usually  legal) advice, directly to your clients, with our support.  These include:

Broad patent and legal experience of DSL Patents Inc.

DSL Patents Inc. provides firm that is not patent firm with patent advice

We are a registered patent firm based in the GTA (Markham-Stouffville region). However, we operate a location-independent practice.  As a result, we support Canadian firms from coast to coast.

Drafting experience

We have 20+ years’ experience drafting and prosecuting Canadian, US and international patent applications, on inventions including:

Litigation experience

We also have general, IP and patent litigation experience.  Our principal Dennis Leung (his LinkedIn profile is here), is a lawyer (non-practising) and registered patent agent. While a lawyer, Dennis worked at many leading Canadian full-service law firms (McCarthy Tetrault, Ogilvy Renault (Norton Rose Fulbright)) and IP boutiques (Smart & Biggar, Ridout & Maybee, Shapiro Cohen (Aventum IP)).

Dennis was counsel before the Supreme Court of Canada in the leading case on patent claim construction (Whirlpool v. Camco).

Licensing experience

Dennis worked in-house with a leading reverse engineering firm.  He set out strategies, reviewed contracts and supported its clients’ international patent licensing programs.

Teaching experience

Dennis taught Patent Law  at Queen’s University’s  Faculty of Law for several years.  He wrote the Canadian chapter in a leading text on Global Patent Claim Construction. Finally, he trained many of today’s current registered patent agents on each of the topics of the patent agent exams.

White Label experience

Finally, DSL Patents Inc. has provided white label patent advice for leading national IP law firms and boutique patent agencies.

Bridging the gap between legal advice and patent advice

We don’t currently practise law.  That means we don’t compete with you.  However, we have lots of related experience.  Thus, we give you context while you decide whether and how much legal advice you provide on patent issues.

Not practising law gives us some advantages.  First, we don’t compete with you.  Second, we don’t follow conventional legal conflict of interest rules. (Our proprietary ethical rules are here)  The legal rules would prevent us from providing this program.  At the same time, when appropriate, we  respect your business conflict concerns.

For further information

If the DSL Patents Inc. Patent White Label service is of interest to you, please contact us for a free consultation at your convenience:


+1.613.668.2746 (phone or text)
+1.866.599.6608 (fax)
www.dslpatents.com/Contact

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Filing a Patent: How to Get Started

When you have an idea or an invention ready to be patented, one of the first steps you’ll want to do is get in touch with your patent agent. He or she will likely ask you a bunch of questions to get an idea of where, when and what kind of patent application to file.

When to file

The most important question you’ll need to answer in order to determine how to proceed is when you would like to file the patent application? Hopefully, you have kept your invention secret and not told anyone about how the invention works. If this is the case, then you have some flexibility in when you file the patent application. If you haven’t kept the invention secret, in some cases you may still be able to file a patent application, at least in some jurisdictions. If you haven’t yet disclosed the invention, but are about to do so by writing an article, sending out a brochure, demonstrating the invention or even selling a product that uses the invention, you need to get in touch with your patent agent as soon as possible. They may be able to file a patent application (or if time is really short, a provisional application) to make sure that you will be able to maximize the patent rights you are entitled to before the disclosure takes place.

Why do you want to patent?

The next important question is why you want to have a patent for your invention? In some cases, you may want to prevent competitors from using the invention. In other cases, you may want to leverage the patent to get funding and/or investment for your business, or you may want to get royalties from the sale or licence of your patent. The answer to these questions will have some impact on where and what kind of patent application to file.

Who will own the patent?

The third question is who is / are the inventor(s) and who will own the patent? This is important to get right. Adding someone who is not an inventor as an inventor or leaving a real inventor off the patent application may impact the validity of the patent. You should understand that each inventor has rights in the patent unless and until they are transferred. Determining who is an inventor usually revolves around who contributed to the inventive concept, and because the inventive concept that ultimately is identified may be different from what you as an inventor think it is, a person whom you identify as an inventor may in fact not actually be an inventor at the end of the day. Also, a person you may not have considered an inventor initially may need to be added as an inventor before filing.

With regard to ownership rights, think about who is going to pay for and who is going to own the patent. If you are working with someone else on the invention, whether or not that other person is also an inventor, you may wish to share or assign the rights to a specific person or company. Don’t get hung up on percentages of the invention. In most cases, what you are really talking about is what share of the money that the patent generates goes to which person. As a general rule, any person who has rights in the patent, whether as an inventor or as an assignee, has an undivided right in the patent. You can set up a contract between the rights holders to assign percentages of the revenues from the patent separately.

What happens next?

Once you have answered the questions above, you’ll want to start preparing materials ready for your patent agent. This includes a written description of your invention,

Description

You may have already drafted something like this, especially if you have been thinking about disclosing it as a product (like a user manual), advertising your invention, or obtaining mechanical drawings for manufacturing. If so, this is a great starting point for your patent agent and he or she will be able to establish if there is any other information that needs to be added. If you haven’t yet prepared a description, you’ll want to include a brief outline of what makes the invention important, why it is cool, unique or useful, and how it works. Don’t spend too much time and effort organizing your thoughts until your patent agent has had an opportunity to review – he or she will likely have questions and additional information he or she will want to add, and can help you shape this description further.

Drawings

If you don’t have drawings, think about providing some. They can be as simple as hand-drawn sketches (no artistic talent required!), or if you have a working device, photos from different angles of the device that include the interior parts will also be useful. Most patent agents often work with illustrators who are able to take these photos and turn them into proper patent drawings. If you are providing drawings or photos, it is very useful to provide both a clean set and a marked-up set, where you tell the patent agent what different parts are and what they do. If you have a working device or model that you can do without for a bit, then that’s even better. Provide the device or model to the patent agent to study and develop drawings from.

Demonstrate the Problem

In addition to the description of the invention and the drawings, you should look around to see if you have any materials already that describe the problem that is being solved by your invention, whether or not the materials describe the invention. If you are filing a patent application in the US (which is usually the case for Canadian inventors), you will be required to disclose these materials to the patent office.

It is important to note that you are not required to look up materials that describe the problem or the invention. However, if you do look up these materials or have them in your possession, you must disclose them to the patent office. In many cases, because you are familiar with the industry to which the invention relates, you likely already know what is out there without having to do an online search. If so, you might be better off just describing what is out there to your patent agent when you meet, without doing a search. If you do a search, we suggest printing off a copy of your search results. A handy rule of thumb is not to print off the list of pages that comes up in the initial Google (or other search engine) search, but if you click on any of these pages in the initial search because they seem interesting, print off a copy of the page that comes up, whether or not you decide that the page was relevant.

Notes

Although it is less important now than it used to be, if you keep a notebook or notes about your invention and the development process, you will want to make a copy of them and give them to the patent agent. Before 2012, we used to recommend that you keep your notes in bound notebooks and that whenever you came up with anything you thought was inventive or solved a problem you were working on, to have someone you worked with sign and date the page that you had your notes on, or to copy the pages and mail them to yourself (keeping the envelope sealed). This was to be able to document your date of invention, since the US at least worked on a first to invent system (the rest of the world is on a first to file system). Now that the US has adopted first to file, this is less important but it is still a good idea to keep good notes and to adopt a regular practice of note-taking.

It is probably a good idea to think about what you think makes your invention special and what you think the invention is. You will probably find that once you have met with your patent agent, the focus of what the invention is will get clarified and may even be different from what you initially thought it was. But spending some time on this issue will be helpful to the patent filing process.

Finally, your patent agent will probably ask you for a deposit in advance, and request that you sign some documents to formalize your relationship.

Once you have met with the patent agent, he or she will probably go away and think about the invention and prepare an initial draft of the patent application. It is a good idea to get an estimate of the time the agent thinks he or she will need to do so, and also to get an idea of the total cost for drafting the application and filing in the jurisdiction(s) you have decided upon.

Reviewing the draft application

When the initial draft is done, the patent agent will send it to you for review and comment. Most likely there will be questions that the patent agent has that you will need to answer. Since typically the initial draft will be in a word processing format sent to you by e-mail, you can put in the answers right in the document and e-mail it back to the patent agent. It is usually helpful to turn on “track changes” to allow the agent to quickly see what you have added or corrected. In addition to answering any questions from the patent agent, carefully read the application. It will be in two parts, a description portion and a claims portion. Focus on the description. Make sure there is nothing in there that is incorrect or confusing. Make sure it is complete. If you know of something that you think is important, set it out so that it can be put into the description. Use proper terminology throughout, so that others who work in the field that is relevant to your invention will understand the description.

You can also look at the claims, which sets out the scope of the monopoly you will be claiming. However, you should realize that the patent agent is probably trying to claim very broadly for you. Inventors typically try to add details to the claims because they have those details in mind and because the description is very detailed. Resist the temptation to add details to the claims. Every detail will narrow the scope of monopoly you are claiming and will make your patent less valuable.

Finally, try to get your comments, corrections and answers back to the patent agent as quickly as possible. The patent agent may be working on a number of inventions for a number of clients at the same time and the sooner you get your comments back, the sooner your patent application can be finalized. Also, you will find that this will minimize the cost of the patent application, because the patent agent can schedule work more efficiently and may not have to refresh his or her recollection each time.

Filing the patent

After one or more iterations of the draft review process, the patent application should be ready for filing. You will probably be asked to do a final review of the application and if it complete and correct, to advise the patent agent that you are ready to file. In some jurisdictions, you may be asked to sign some formal documentation when you file, although in other jurisdictions, your patent agent can sign on your behalf. You may also be asked to sign or to have signed assignment documentation transferring rights in the patent application and the underlying invention from one or more inventors to one or more applicants. Once these documents are signed and returned, the patent agent can file your patent application. Usually, you will get a quick email when this is done, and a more formal report (and a final bill for the process) a bit later, when the patent office issues a filing receipt with the patent application number to the patent agent.

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Do I need a patent agent?

Technically, you do not need a patent agent to file a patent application. As an inventor, you are able to draft and file your own patent application and then upon filing, hire a patent agent to assist you with the examination process, or you can receive and respond to the Examiner’s reports (often called an Office Action) yourself.

However, you should be aware that there are a number of challenges in the patent drafting and prosecution process that make it more difficult for inventors to embark on the process themselves, with new ones coming up all of the time.

Claim Drafting

Perhaps the biggest obstacle in the patent drafting process is related to claim drafting. Most inventors (and indeed many patent agent trainees) tend to draft their claims too narrowly. If they do, they may not even become aware of the scope of monopoly that they have given up, because the patent examiner is only too glad to grant a patent with overly narrow patent claims. A skilled and experienced patent agent can work with you to identify your inventive concept, which is not uncommonly quite different than what was originally perceived by the inventor, and draft a comprehensive set of claims that cover the inventive concept, in a layered fashion, so that as broad a scope of monopoly as the inventor may be entitled is obtained, while establishing fall-back positions in the event that prior art is uncovered.

In many technical areas, including the high technology and chemical / pharmaceutical fields, there are specific rules that have been developed by the government of different countries and/or the patent courts. These rules prohibit certain types of claims on the basis of lack of patentable subject matter. In many cases, these prohibitions can be circumvented with the assistance of an experienced patent agent by subtle changes to the form and structure of the claims.

Believe it or not, an experienced patent agent can even save you money through claims drafting. In many jurisdictions, including the US and the EP, penalties are assessed if a threshold number of claims is exceeded. Some jurisdictions such as the US, have exotic patent claim counting rules so that even if you think you have less than the threshold number of claims, you may be subject to expensive excess claims fees.

As well, historically, a complicated set of rules for drafting claims has developed, with the result that modern valid claims tend to be unreadable gibberish to the untrained person. These rules include restrictions on punctuation, antecedents, use of acceptable conjunctions and more.

Patent Descriptions

There are also challenges in the drafting of the patent description as well, although these tend to be less critical. The most important rule is the prohibition against adding subject matter after the initial patent filing. An experienced patent agent can help you extract further details that should be set out in the description to facilitate the examination process later.

Other rules include the enablement and best mode requirements in many jurisdictions. Some jurisdictions have specific rules about ensuring there is support in the figures and/or the description for specific types of claims, such as method claims. Failure to abide by these rules may result in the invalidation of the patent at a later date.

During the examination process, deadlines abound. As a general rule, these need to be strictly observed. A patent agent will docket these deadlines and provide timely reminders of these upcoming deadlines to maximize the likelihood that they will not be missed. At different stages in the examination process, there may be more than one course of action, with different deadlines, or a multiplicity of steps that need to be undertaken. The Examiner will not routinely explain these options at all, or in an understandable fashion. Failure to respond correctly, however, cannot be excused on the basis of ignorance or lack of experience, and has dire consequences, including the loss of patent rights.

Finally, care must be taken, especially in some jurisdictions, in terms of how to respond to the Examiner’s concerns. Injudicious statements made in response to an Office Action may unintentionally limit the scope of protection that a patent might otherwise be entitled after it eventually issues.

With all of the foregoing in mind, we believe that your energies are best served by concentrating on developing your technology and growing your business, instead of focusing on the confusing and detailed minutiae of the various patent rules that need to be understood and obeyed.

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How do I choose the right patent agent?

When you are searching for the right patent agent to help you develop and file your claim, there are a number of important factors that should be taken into account.

Registered patent agents

First, you should ensure that any person you retain is a registered patent agent. Most jurisdictions have a comprehensive training and qualification process that must be done in order to gain the patent agent designation. This process can be quite rigorous. For example, in Canada, patent agent candidates must pass a series of four, 4-hour written exams that test the candidate’s ability to draft a good patent application, prosecute an existing patent application to secure a notice of allowance from the patent office and analyse whether a patent is likely to be considered by a Canadian court as being valid and analyze whether a patent is likely to be considered infringed by a competitor’s device. The candidate must get a minimum 60% average mark in all four exams to qualify as a registered patent agent.

There are a number of people who have not yet sat, much less passed the patent agents exams who wish to get into the business. These people may hold themselves out as “patent professionals”, “technology consultants” or some similar confusing terminology. Remember that if the person is not listed as a patent agent, the person is not one. Then the question is whether this means the person has tried to pass the exams and failed, or have never even sat the exams.

There is no need for the patent agent to be a lawyer. Many patent agents are also lawyers. However, for purposes of drafting and prosecuting patent applications, a lawyer is in no better position than a non-lawyer patent agent.

However, many lawyers, even those who practise patent or intellectual property law, are not patent agents. While they may be familiar with the laws governing patents in their jurisdiction, they probably do not have the experience or skill set necessary to prepare broad valid patents for you, or at least have never bothered to sit or pass the exams. Unfortunately, it is sometimes difficult to identify such persons. Perhaps the best way is to directly ask whether or not the person is a registered patent agent. A lawyer may identify himself or herself as a “patent lawyer”, “IP lawyer” or even a “trade-mark agent”. These are qualifications that are valuable to have in an IP firm, but may be sneakily used to gloss over the fact that the person is not a patent agent.

Who is doing the work?

Also, be aware that a law firm may say that it has patent (and trade-mark) agents, so long as a member of the firm is a patent (and/or trade-mark) agent. This does not mean that the patent agent will be the one doing the work on your patent application. If you are lucky, you might get the patent agent to “breathe over” the application before it is filed. There are even some law firms that have no patent agents. Like individuals who are not patent agents, they can skirt the requirement that only registered patent agents can file patent applications on behalf of an inventor by drafting the patent application and giving it back to the client to file with the patent office directly.

You should ensure that the patent agent you hire is a Canadian patent agent. Only a Canadian patent agent (and a very small number of US patent agents) will be allowed to represent you before the Canadian patent office. On the other hand, most Canadian patent agents are qualified as US patent agents and able to act on behalf of Canadian inventors before the USPTO. While our practice at DSL Patents Inc. is not to do so but to retain US patent agents for this purpose, the familiarity that a Canadian patent agent also qualified as a US patent agent has with US issues may be very useful to help you understand the issues.

Understand their technical qualifications

Finally, you should ensure that the patent agent you hire has the technical qualifications to understand the invention and explain it clearly in the patent application. As a general rule, there are three basic types of technology, which, for lack of better terms can be denoted high-tech, chemical/pharma, and mechanical. The “high-tech” group includes electrical, electronics, communications, computer, semiconductor, optical and possibly robotics technologies. The “chemical/pharma” group includes chemistry, pharmaceuticals and biological technologies. As a general rule, if your invention includes a technology in the “high-tech” or “chemical/pharma” group, you should look for a patent agent who studied one of the technologies in that group in university. Otherwise you may find that you will be spending most of your time explaining the underlying technology to your patent agent and paying him or her for the privilege. Also, especially for the” chemical/pharma” group, there are technology-specific patent principles at play that may not be well understood by a patent agent who does not have technical training in this specialty. The “mechanical” group generally includes everything that does not fall within the “high-tech” or “chemical/pharma” groups and includes civil and mechanical engineering. As a general rule, because “chemical/pharma” patent practice is so different than the other types, many patent agents working in the “chemical/pharma” group may not be very comfortable working with inventions in the “mechanical” group. However, most patent agents working in the “high-tech” group will probably be pretty comfortable working with invention in the “mechanical” group as well as their own.

Find a patent agent you enjoy working with

Once you have found a registered Canadian patent agent with the technical knowledge necessary to understand the intricacies of your invention, it really is a matter of finding the person with whom you can relate and work together closely with. You may also wish to consider issues such as the experience of the patent agent and whether the patent agent works in a large firm or a small firm or even on his or her own. In a large firm, there is a greater likelihood that a person with the necessary qualifications will be found, and there may be a greater capacity to handle your work. On the other hand, you will likely have less flexibility over who will be doing you work (you might initially meet with a partner but find that a junior agent or trainee is learning on the job on your invention and on your dime) and in terms of service. Many larger firms have considerable overhead and as a result charge more for their services with little or no flexibility to customize their service offerings to meet your individual requirements.

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