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Guest Blog – Patent Law

Guest Blog – Patent Law

It is our pleasure to introduce you to Selena Kim. Selena is a patent lawyer with Gowling WLG located in their Toronto offices and was introduced to us about a year and a half ago. She has been very helpful in guiding us “cost-effectively” through the legal mine field of patents and trademarks. We asked Selena if she would put together a summary of the “do’s and don’ts” and the intellectual property pit falls that inventors, start-ups and entrepreneurs face.

Our heartfelt thanks to Selena for putting the following together.

I remember when Daryl first came to my office with his prototype a couple of years ago. It was so exciting to hear the story of how he came to invent a better way of securing your essentials on the go. It has been really fun working with him and his family on setting up Intellectual Property (IP) protection for this amazing product. I provide advice to many first-time inventors and entrepreneurs on IP issues, and we thought it would be helpful to share some tips with those who have an idea for a new product.

1. Before all else, a Business Plan.

I assume you are not independently wealthy, and need to make money off your product. Launching a new product, promoting it, and protecting the IP in it involves time and money over the first few years, and you will need to get that money back. Before you do anything, research the marketplace to see what your competition would be, how you can get your product manufactured at a reasonable price, and projections on how quickly revenues will come in to offset your expenses. Once you have a plan for what IP you will pursue and all other expenses – like a website, prototyping, manufacturing – figure out how much you will invest out of pocket and when you can reasonably anticipate revenues coming in.

2. The Right Types of IP Protection.

Patents are great if you have come up with a new and original device. But, there are high hurdles in terms of expense and other legal requirements to pass in order to get a patent. There are other forms of IP that you may wish to consider instead (or in addition). If you have a device that has a unique shape, industrial designs can be used to protect the visual features. If you plan to market the device, you will also need a good word trademark and maybe a logo. All of these can be registered in the IP offices, but keep in mind if you want a patent or industrial design, you should keep your device secret until you have consulted with an IP lawyer.

3. Countries of Focus for your IP.

IP registrations are country-specific. You need to consider where you plan to make and sell your device, and focus on filing IP in those countries. These days, most start-up Canadian inventors tend to file in Canada and the United States (the target markets for sales) and China (where products are often manufactured). If you think your product has a lot of potential in other places like Europe and elsewhere in Asia, then you should consider filing in those places too. Your IP lawyer can give you current costs.

4. How much money are we talking?

Applying for IP involves legal and government fees in each country. It varies widely by country, but here are the typical prices for preparing and applying for IP in Canada. Do keep in mind that applying for IP is just the beginning; there are still additional costs before it gets granted, and some IP gets rejected and never gets granted. That is why it is important to get a good IP lawyer to prepare your application, to maximize your chances.

Anyway here are some approximate costs for preparing and filing IP applications in Canada, including government fees:
  • Patent: $6,000 - $8,000
  • Industrial Design: $1,200
  • Trademark: $1,000

5. What is involved in hiring an IP lawyer?

IP lawyers and agents are typically a friendly bunch, and most will take your calls and give some general advice for free. If, after an initial consultation, you decide you would like to proceed, most will require you to pay some money up front, typically at least enough to cover a portion or all of the first task you want done, as well as government fees. For instance, if you want a patent prepared, you might have to pay something like $5,000 up front. This would get applied to your first few invoices until it is used up. Why do we do this? Because we are busy people with bills to pay too, and don’t have time to chase you to pay your invoices.

We hope this is helpful information. You can also get more information on IP from official government or law firm websites, or just give one of us IP lawyers a call. We are mostly very nice.