Patent 101: A guide to the patent protection process for Canadian SMEs

My name is Jeff Coles and I am a partner in Gowling WLG's Calgary office. I'm a technology lawyer and a registered Canadian and United States Patent Agent.

Today, I'd like to discuss the patent protection process. A common misconception is that patents are only for large companies. However, patenting can be critical for SME's, even at an early stage. For example, patenting can assist in securing financing and provide an early competitive advantage in the marketplace. Both obviously valuable factors in long-term commercial success.

The patent protection process can help your business secure and commercialize its inventions, but you need to understand the process to develop a strategy that's right for you.

On this, I will discuss three topics of principle importance: business objectives, preparation of the application, and timeline to a patent.

1. Business Objectives: The key to a valuable patent begins with knowing your business objectives. Before starting the patent protection process, it's critical to consider your commercial goals for the technology, today and in years to come. How you intend to leverage the technology can be very important in determining the focus and scope of the patent. For early conversations with your patent professional, you should assemble documentation of key relevance to your invention – such as drawings, sketches and written descriptions. All documentation should be provided to your patent professional and discussed in the context of your business strategy. This will help you and your patent professional define the key aspects of your invention to protect your business objectives.

2. Preparation of the Application: Drafting a patent application is a highly technically process that is reviewed and revised by the inventor and patent professional until both parties are satisfied that the invention has been adequately disclosed and claimed. The goal is to draft an application that is broad enough to maximize protection and prevent market entrance by competitors, while specific enough to provide strong and valuable coverage over your own technology. Although an optional step, a patentability search can reveal important information that can be harnessed when drafting the patent application. This investigation can assist in determining whether your technology is novel and non-obvious, and therefore merits patent protection, and can also highlight opportunities to distinguish your technology from that which already exists.

3. As you can see, the patenting process is closely tied to your business objectives, and the prudent course is to be thinking about patenting at an early stage and to work closely with your patent professional to determine the patent strategy that is best for your business.

Our Intellectual Property Group has prepared a Patent Toolkit to help Canadian SMEs understand why, when and how to protect their inventions. To learn more about the complete patent process, frequently asked questions and more, visit gowlingwlg.com to download the Patent Toolkit today.