“A Quick Refresher on Patents and Trademarks for Business Services” Business Development Bank of Canada

Jul 21, 2011 | Corporate Member News

Ideas, inventions, symbols, names, images, and designs – they’re often the bread and butter of companies in the business services sector. Whether your firm sells business management techniques, provides communications services or engineers the latest software, protecting your intellectual property is a top priority in a competitive business world.

According to an article published by the World Intellectual Property Organization, many SMEs today lack basic knowledge about issues such as trademarks and patents. So if you’re looking for a quick refresher course, here are some of the rules of thumb. For more details, be sure to visit the Canadian Intellectual Property Office.

Essentially through a patent, the government gives the inventor the right to exclude others from making, using or selling your invention from the day the patent is granted to a maximum of 20 years after the day you filed the patent. Patents are generally granted on criteria such as their novelty, utility and ingenuity.

Patents generally cover new inventions, and are not to be confused with trademarks, which are explained here further along. Getting a patent is a complex and formal process in Canada. Here are the key steps that you can expect to take.

Find a preliminary agent
First of all, preparing and prosecuting a patent application requires a patent agent who understands patent law. A trained agent can save you from headaches such as a poorly drafted patent that doesn’t adequately protect your invention.

Do a preliminary search
The first step your agent will undertake is doing a search of existing patents. If what you’re proposing has already been patented, there’s no point going any further.

Help your agent prepare a patent application
You can assist your agent to obtain the best possible patent by providing accurate information. This generally includes: details on your invention, practical uses, and what distinguishes it from previous inventions.

File your application
You have to prepare a formal application and ask the Commissioner of Patents to grant you a patent. Your patent agent can help you with this.

Request examination
Keep in mind that your application will not automatically be examined because you’ve filed it. You have to formally request examination and pay the fee. Filing, however, gives you some protection for your invention without having to fully commit yourself to the patent procedures. But remember that the request has to be made within five years of the filing date. If you don’t request it within that period of time, anyone can freely make, use or sell the products or processes described in your application.

Examiner does search for prior patents and studies claims/approves or objects
The examiner’s job is to make sure your application is in the proper format; to do a search among prior patents; and, report whether or not her or she approves or objects your patent. Keep in mind that the examiner might object to your whole application or request changes to your application.

Respond to examiner’s objections and requirements
If the examiner objects some of your claims, your patent agent will have an opportunity to amend your application.

Examiner reconsiders and either approves or calls for further amendments
The examiner then studies it and prepares a second response. This could be a “notice of allowance” letting you know that you will be granted a patent, or a call for further amendments.

If final decision is objected, you appeal
At this point, you can still appeal to the Commissioner of Patents by requesting that the Commissioner review the examiner’s objection.

A trademark is defined as a word, symbol or design used to distinguish the wares or services of one person or organization from those of others in the marketplace. Be sure that you distinguish this from a trade name, which is essentially the name under which you conduct your business.

In certain circumstances, a trademark registration may be declared invalid because of the prior use of a trade name which is similar to the registered mark. Ideally, you should conduct a search of existing trade names before filing a trade mark application. To ensure a thorough search, you can hire a trade mark agent to do the job. A list of agents is available at the Canadian Intellectual Property Office.

Registered trademark vs unregistered
A registered trademark is one that is entered on the Trademarks Register. You are not actually required to register your trademark since using it for a certain length of time gives you Common law ownership. Still, it is highly recommended. For example, registration gives you the exclusive right to use the mark across Canada for 15 years. It’s also a valuable asset for business expansion through licensing franchises.

How do you register your trademark?
File an application online with the Trademarks Office, in Quebec.

To conclude, you should always ensure that your patents and trademarks are adequately protected. You are highly encouraged to visit the Canadian Intellectual Property Office for more details.

About BDC
Canada’s business development bank, BDC, puts entrepreneurs first. With almost 1,900 employees and more than 100 business centres across the country, BDC offers financing, subordinate financing, venture capital and consulting services to 29,000 small and medium sized companies. Their success is vital to Canada’s economic prosperity.

For further information:

Maria Constantinescu
Advisor, Public Relations
Business Development Bank of Canada
(514) 496-7146
[email protected]

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