FINDER'S FEE

  • There is no such thing as a provisional patent. A provisional application for a patent, if properly written, can be the foundation of a utility application that must be filed within a year. A provisional application enables patent pending status, at lower cost & without hiring a patent lawyer at this stage.

    A provisional application is like a bookmark, marking a space for the anticipated patent application. It must be constructed with as much attention to detail & clarity of exposition as a full patent application, except that it doesn't require legal claim language.

    A provisional is a less costly way to start the patent process. It allows the inventor to disclose their invention to investors or the public, knowing their rights will be protected from a 3rd party filing an application based on their invention.

    If a Canadian files a provisional in the US, then a US patent application before the deadline, they can also file an equivalent application in Canada & get the same priority date. Anyone selling/making your product in both countries can then be liable for infringement, if your patent is granted.

    The advantage of filing a US provisional & then a US patent is that the US market is 10x that of Canada, which means 80% of Canadians file US patents. Also, the year that a provisional is pending is not subtracted from the 20 year patent term. (when maintainence fees are paid up)

    A provisional allows one to safely test the waters with a new product & if it is unsuccessful, they have not spent tens of thousands of dollars with a full patent application & still have money remaining to try out other inventions on the market.

    Provisionals have been adopted by many countries who realize that it increases filing efficiency & protection, reduces initial costs, and encourages innovation. Writing comprehensive provisionals which enable patent filings is our primary task.

    For an overview of the provisional application:

    > Download the USPTO brochure

    For a Basic Info Grid on the Provisional Application:

    > Go to the Related section below

    *NOTE: This section includes information intended for Canadians who file US Provisionals. It is also relevant for US residents who need a more affordable way to search, document & file US Provisionals.

  • During the drafting & examination phase of their utility application, an inventor should employ a patent agent/lawyer to represent them. Agents are current in the law & can employ strategies that can prevent costly mistakes. Only the experienced should try self-representation. (pro se)

    It's often the best option for a Canadian to file a US provisional, with one exception. That is if they need to take advantage of the expedited application rules of the Patent Prosecution Highway [PPH], they may be limiting their opportunities.

    > For more PPH details, click here.

    Canadian filers who want patent pending status, but to delay examination, used to be allowed up to a year by filing an "incomplete" (or partial) patent application. Unfortunately, new rules in 2024 have reduced this to only two months.

    > Click here for a discussion about writing & filing preliminary applications.

    *NOTE: This section includes information intended for Canadians who file incomplete Canadian (CA) utility applications with the intention of providing the missing claims in time to enable examination. It is also relevant for US residents applying for patents in Canada who are looking for a more affordable way to start the patent process.

  • A utility patent protects how an article functions, while a design protects the way an article looks, so there may be patentable aspects from either realm. Design patents are simpler because appearance may be illustrated by drawings or photos.

    Design patents are much cheaper than utility patents because they don't need a detailed examination. However, you cannot use a provisional application as the basis of a design patent application. Drawings are often already available from the product development process & can be made to meet design application drawing requirements.

    For detailed information about US design patent requirements:

    > Review the USPTO booklet: "A Guide to Filing A Design Patent Application"

  • The Canadian equivalent of a US Design Patent application is the Industrial Design application which comprises similar requirements & limitations, namely protecting the appearance of a useful object. We can document, photograph & illustrate a design, and prepare the application for you.

    For more details, click to view:

    > CIPO's Industrial Designs Guide

  • An Invention Report comprehensively documents a new product or technology & includes drawings, a list of drawing terms, and a prior art background, but no claims. Invention reports can be used to produce provisional or utility patent applications.

    Invention Reports are currently being used by high-tech companies, inventors, academic & research institutions as the necessary first step on the path towards superior patent protection & can also be used for trade secret or PCT applications.

    An experienced patent paralegal collects and distills detailed information about your invention into a complete report for the patent attorney. The attorney distills from this report the descriptions, language and appropriate claims required to build a successful patent application. This information can also be used to document a trade secret, provisional or PCT application.

    Think of the attorney as a metaphorical hunter, the paralegal as a porter and the inventor as their guide. The invention report is equivalent to the supplies the porter must carry so the hunter and guide can arrive at their destination without undue effort. The smart hunter understands that by hiring good porters, his client's resources will be conserved to support the critical moments when the hunter's aim must be both deliberate and true.

    A comprehensive invention report (IR) is a cost-effective bridge between the inventor and their attorney. A patent constructed by this method will dramatically improve the likelihood that costly litigation and infringement challenges are prevented.

    An IR may be used for Provisional (US) or Incomplete Patent Applications (Canada), or simply to inform stakeholders about the viability of an invention. Often less linguistically opaque than a patent application, written in plain English & may use photos or graphics.

  • Provisional Applications (in US) or Incomplete Patent Applications (in Canada), and:

    Require less rigid formatting & construction unlike full patent applications, and therefore may be written in plain English and can use photographs or marketing graphics.

    Invention Reports are simply the Technical Documentation of a new idea in order to help stakeholders evaluate its technical & financial viability.

    Invention reports provide a patent attorney with comprehensive invention documentation direct from the inventor, by means of an experienced patent paralegal & techncial writer.

  • Only 1 in 10 inventors who apply are actually issued a patent. Not because their ideas are unworkable, but that application is often incomplete, unclear or inaccurate. Also, over 1/3rd of all patents are challenged for validity by third parties.

    Some inventors are comfortable explaining to others how their invention works, but may not be so good at writing those words down. With direct interviews, we assemble all the details needed for a comprehensive & coherently written invention report.

    This method is less expensive than using an attorney at this stage (up to 5x less) & lowers final cost for a patent application. The resulting report is more accurate & complete because more time can be afforded to collect & verify information.

    Spend your money where it will do the most good. Prevent costly mistakes and reduce expenses. Stay focused on what you do best. By starting with an invention report, you will be using the most cost-effective method to protect your invention.