Episode 13: What exactly is a patent?

Lisa Desjardins (Lisa): You’re listening to Canadian IP voices, a podcast where we talk intellectual property with a range of professionals and stakeholders across Canada and abroad. Whether you are an entrepreneur, artist, inventor or just curious, you will learn about some of the real problems and get real solutions for how trademarks, patents, copyrights, industrial designs and trade secrets work in real life. I’m Lisa Desjardins and I’m your host.

The views and opinions expressed in this podcast are those of the individual podcasters and do not necessarily reflect the official policy or position of the Canadian Intellectual Property Office.

Often the first thing that comes to people’s minds when we talk about intellectual property is patents. Most people know that patents are a way to protect an invention, but what exactly is that protection and how is it valuable to a business? Where should you seek protection? What’s a good way to start, and, actually, is a patent the entire solution or are there other IP rights I should consider?

Today we’re asking these and other questions about patents, and to help us understand some of the key considerations for patent protection is Beatrice Sze, who has a background as a lawyer, has worked with patent agents and is now a patent examiner at the Canadian Intellectual Property Office.Beatrice, welcome to the podcast!

Beatrice W. Sze (Beatrice): Thank you Lisa. It’s very nice to be here.

Lisa: Before we dive into the topic of patents, could you tell me a little bit about yourself and the kind of work you do as a patent examiner?

Beatrice: Sure, so as you mentioned, I am currently a patent examiner in the mechanical division at CIPO, or the Canadian Intellectual Property Office. In this role, I perform professional, scientific, technical and legal work involved in the search, examination, classification and disposition of patent applications.

As an office, we receive applications from individuals, small and medium-sized businesses and large multinational corporations from around the world and domestically here in Canada.

The role of the examiner is to search, examine and classify these patents according to their subject matter. In short, we spend our days reviewing technical literature, decisions from the Commissioner of Patents and internal notices that interpret the latest relevant court decisions relating to Canadian patent law.

Lisa: You have an interesting background because you’ve worked with patent agents, but now you shifted sides so, at this stage, you are a patent examiner. What made you want to be a patent examiner?

Beatrice: Well, I think for me, the short answer is I like to serve the public. I used to work very closely with innovators and company founders, many of whom got their start in their basements or garages or the labs of their grad schools, and many of them remain in my professional network today. While a lot of my first clients were start-ups when I knew them, I have also worked with large R and D corporations trying to bring new technology into Canada.

So, I like to think that I understand the innovator and business perspective pretty well. What they look for from patent agents, how IP integrates into their business strategies depending on what they’re trying to do that quarter or that year, and also what they hope for when they look to our office.

In terms of the work itself, I’ve always loved science and engineering, including learning about new ideas and new ways of solving problems. I also happen to have a background in law and litigation, so I genuinely enjoy the study and practical application of the law, particularly common law, which governs all intellectual property in Canada. So, I hope to bring both of these perspectives to the work I do at CIPO.

And for those listening who might be considering joining our office, I would say do it. Patent examiners have a very unique perspective of global innovation. Working for CIPO gives you a really cool view of a particular industry or area of development that you may not see at a law firm or in house at a company.

At a private law firm, your scope of expertise is limited by your organization business. You will be exposed to what the existing clients of your firm are working on or what you yourself are able to bring in in terms of new business. At CIPO, you can be much more self-directed. We are the patent office for all of Canada, after all. So anyone in the world seeking a Canadian patent in any subject will apply here. Whether it’s agricultural goods, chemical products, aerospace solutions or the latest in diaper technology, they must come through our office.

While our office has procedures for making sure the individuals examining are well suited based on their educational experience and their work experience, you do have the opportunity over a fairly long period of time to situate yourself among different areas that may interest you, and you will be among colleagues who are from all aspects of scientific research and development.

Therefore, if you happen to be a curious person with a passion for science and are not afraid of learning a little bit about the law, this could be a great place for you too.

Lisa: It’s good, it’s interesting with the passion for science, and I think this is where a lot of the talk is around patents. But if we take a look at what happens with the exchange with the patent office and the applicant, could you tell me or explain what is a patent and perhaps also talk to what is not a patent?

Beatrice: This is a really great question Lisa. I used to get it a lot from my newer clients. So first of all, it’s important to say that a patent is not a contract with the government to make, use or sell a technology. The government does not provide you with money in exchange for the invention. Okay, but then what is it?

I often like to say to new folks who are trying to understand this area to walk with me as if we were going into a museum, and we’re in a room of a museum and in the middle of the room is something called a patent. And we’re trying to understand what it is.I will invite all listeners to take a turn with me around the four corners of the room, and we’ll consider what the patent is from four perspectives. The four perspectives I’d like to use are, the first, the patent as a bargain with the government, then the patent as a technical publication, the patent as a legal instrument and, finally, the patent as a business tool.

So first, the bargain theory. At its core, a patent is an agreement between a patentee and a national government. The patent holder discloses their invention to the public, in other words they provide a quid, and in exchange, the government provides the patentee a right to exclude others from making, using or selling the invention for a period of no more than 20 years. This is the government’s quo, quid pro quo.

It’s important to pause here to note that a patent is not a science journal publication or a peer-reviewed white paper, though it does serve as a disclosure of scientific or engineering research. Usually, the patentee’s quid is located in the drawings and the description. In other words, the patent holder discloses their invention through drawings and written descriptions. And this is usually found in the first part of the patent, if you read one.

The government’s quo, in return, is located in the claims, which usually appear as a numbered list at the end of the patent. The claims typically resemble contract language, and in a way it is. These technical terms outline the fence, sometimes called the metes and bounds of the patent’s monopoly, and the wording of these terms is a collaborative negotiation between our office and the applicant.

Often, as you can imagine, this is a very technical effort, and so we often advise inventors and companies to retain a registered patent agent to represent them so that this exchange can be done accurately and efficiently to represent their business interests. But what is considered sufficient disclosure?

In other words, how much does the applicant need to disclose in order to receive this exclusive right, or this right to exclude, from the government? What is an appropriate boundary of the monopoly? For example, if somebody invents an improvement to the carburetor, can they make a claim for all carburetors?

The details really matter, and so this is where patent agents and patent examiners, which is me, come in. This is where it’s kind of helpful to take a moment and talk about the patent as a technical publication

Like academic research papers, patents provide a background and overview of prior research, often called prior art. However, unlike engineering, white papers or scientific journal publications, the patentee need not disclose all aspects of their research. They must simply disclose enough information to enable a member of ordinary skill in the art to reproduce their invention, and they must provide at least one best mode.

Also, unlike other scientific research disclosures, the patent outlines claims, as I’ve mentioned, that didn’t lineate the bounds of a particular monopoly for the 20-year exclusion period. But when does the clock start for this 20-year exclusion period? And how exactly does this right of exclusion work?

Fair questions. So that takes us to the third corner of this room that we’re walking in, which is the patent as explained by rights theory. The rights theory looks at a patent as a legal instrument. When someone receives an issued patent, they have received a government document that serves as a legal basis to enforce a negative rate. That is legal academic language, but what does it really mean?

Practically speaking, it means, if you discover a competitor is making, using or selling technology very similar to your patented technology, you have a right to sue them in Canada. Either in a provincial or federal court. The court will then review the claims of your issued patent against the activity of your competitor to determine if their activity falls inside the fence or boundary set out by your claims.

If their activity does fall into the boundary of the claims, this activity is said to have infringed your patent and you may be entitled to collect damages for the harm done to your business. Whether you are entitled to damages and the amount you are entitled to is a matter that is reviewed by the courts.

It is important to note that patents can be used defensively, too. Say you are not looking to sue your competitors for patent infringement, but one of your competitors sues you for activity that infringes one of their patents. If you have patented your technology, you can counter sue on the basis of your patents and also use your patents as prima facie supporting evidence of the validity of your activity.

In this way, patents can be used defensively, like a shield or a sword that you use to deflect someone who’s attacking you. If this all sounds confusing to you, rest assured it’s okay. I encourage you to reach out to a qualified patent lawyer, who can explain the details of how this may work for your business.

Ultimately, you can think of the patents as a form of leverage as there is a presumptive right of litigation. Generally, in a crowded sector, it is a good idea to passenger technology if you can afford it. This brings us to the patents as a business tool. So let’s talk about that.

A patent at its core is really a legal tool that the owner may use in business to help create space in the Canadian marketplace for their technology. As I’ve mentioned, what it provides the patent holder is a choice if someone infringes their patent. If you happen to discover a competitor is making, using or selling technology that is very close to what you have a patent for, you can do one of a few things.

One, you can do nothing. Two, you can aim to enforce the patent, in other words, sue the other party. Or you can try to encourage them to do business with you by inviting them to license the technology from you or sell your patent to them outright.

In this way, there are offensive and defensive strategies that a patent provides to businesses.

Another way of looking at patents is, when you are seeking external funding, having a patent can also serve as an indicator of your company’s potential or existing market share. Because they can be used offensively and defensively, patents are often bought or sold as a commodity.

If you’ve ever heard of the term patent troll, this is what those businesses do as a form of business. They buy and sell patents as a commodity like any other financial instruments. But again, a patent is not a right to make money. You must first still develop the market. So that’s a little bit of a long way of explaining it, but these are the four perspectives of what a patent is and what it is not.

The bargain theory, the rights theory, the patent as a technical publication and what the patent means as a business tool.

Lisa: That is such a fantastic way to explain it, and I really like how you alluded to that the patent applicant still has to develop the market. It’s a good perspective on how you can use patents as a business tool. And as we’re talking about business tools, patents is just often one of them that a business can use in terms of IP rights. So, given your background and experience in working with small to medium enterprises, can you talk a little bit about how patents are often one part of many other intellectual property rights?

Beatrice: Yes, this is where it gets really exciting for me. We’ve spent the last two or three years in our own homes due to the pandemic, and so I think everyone’s smartphone is a great example that will be intuitive to folks for how different intellectual property products, instruments and rights come together in the marketplace.

So, if you have an iPhone and you take a look at the back of it, you flip it over, you will see that there’s an apple logo and the word iPhone on the back. This is how you know that it’s a legitimate Apple product and not a different phone made by a competitor. That apple symbol and the word iPhone are called trademarks and they serve as an indicator of source.

Then you have the actual look and feel of the phone itself. It is usually quite sleek with rounded edges and, for some of the older models like the one I have, there is a little circular home button at the bottom. This sleek shape is protected by something called industrial design, and it’s meant to simply protect creations that are purely aesthetic in nature that have no functional value.

And then you have the touch screen technology itself, also known as touch capacitance technology, originally developed in the 1970s actually. When you press your finger to the glass, electrical signals are sent to the processor, which displays a corresponding visual response based on the location and movement of your finger. This technical aspect of the iPhone is protected by patents.

Finally, we look at the content of your iPhone. The text that you read, the source code of the apps that you use and any movies or music that you may receive through your iPhone, all of these are protected by copyright. So it’s actually a basket of IP protection that makes this iPhone owned by Apple and its partners.

Lisa: That’s a very good example, and it’s an example for something that has such a big market. Now, a patent is only giving you protection in the country where you have the patent. So, an applicant would need to think about where in the world they would need to seek patent protection. What do you think some of the factors are that companies have considered when they’re deciding where in the world they need to protect their invention?

Beatrice: This is another great question Lisa. Some folks new to the patent community are often surprised to learn that Canada is actually not usually the first jurisdiction of filing, even for Canadian small and medium-size enterprises. When you have new technology that you’d like to bring to the world, you often consider which regime will provide you the greatest value for your investment of time and money, right? That makes sense.

And a lot of the times the clients that I have worked with will consider three things. Certainty of process, certainty of terms and their timing for their planned market of entry. So what does this mean?

Certainty of process asks questions like, how long do we think it will take to receive a grant of patent or to receive a final action to say, very likely this is not patentable subject matter. And also, how much will it likely cost?

Certainty of terms asks questions like, how much can we trust the product that we receive? In other words, how much can we trust the quality of this patent or trademark that we receive, particularly if we choose to litigate the instrument when we receive it or if we plan to use it as a defensive shield should we be litigated against? How well will this patent or trademark hold up in court?

Third is the question of planned market of entry, right? Unfortunately, businesses move on schedules that are not really our own. They move based on the winds of commerce, and so a lot of the time, companies will decide which market or which office to engage based on which market they choose to enter and how the timelines of that office may fit in with their, unbeknownst to us, private strategies of business. So, where do they plan to make, use or sell this product and when do they plan to enter that particular market?

Oftentimes, the main jurisdictions of first filing are typically the United States, Europe and also now China. Typically, Canada serves as a second- or third-tier country for multinational corporations.

Lisa: And I guess if I’m if I’m looking into patent protection or if I’m looking at a market of entry, I want to know what my competitors are doing. So, what would you say to someone who’s searching and reading patent information for competitive intelligence?

Beatrice: I would say you are not alone. This is a very common practice, particularly in the mechanical and electrical arts, where a lot of money for innovation happens in the private sector and not in publicly funded universities. From a researcher point of view, often, to ensure you can justify your research, you have to make sure that you are developing products that would not overlap with that of your competitors and exposing the company to potential patent infringement. So, doing searches of patent databases for competitive intelligence is a very normal part of that research and development process.

But another place that is searched is the trademark database. In some industries, usually those that are faster moving, marketing teams will go ahead of the science and research teams to stake their companies domain in a marketplace. So, sometimes you can get a sense from the goods and services descriptions of the trademark applications, what your competitors might be developing.

Lisa: And there we can see logos and word marks and so on. And when we’re talking about reading patterns. The language of a patent can be really difficult to understand. Does it have to be written in a way that’s almost impossible to understand?

Beatrice: Great question Lisa. In my view, no. If you spend enough time reading patents from our office, the United States and Europe, you’ll find different levels of clarity among them. Also, if you spend any time tracking which patents are sued on and which patents are used defensively in litigation, you also get a sense of which ones hold up in court and you can see a different level of quality again. So, I would always encourage everyone to always write as if a judge who does not always have a technical background is going to be the final reviewer of the patent because ultimately this instrument is supposed to be enforceable when litigated, right?

And generally speaking, clarity is the first step in persuasiveness. Of course, this is not always possible in high-volume work environments. But in my view, it should always be the goal.

One of the great things that’s happening right now is we have a wonderful College of Patent Agents and Trademark Agents. I understand one of the goals is to provide a bit of consistency to patent drafting standards, which is great. For those outside of the IP community thinking of engaging a patent agent but perhaps feeling a bit shy about the language, there are books that can help flatten the learning curve.

One of these books is called Landis on the Mechanics of Patent Claim Drafting. The most recent one, I believe, is by Robert C. Faber that’s F-A-B-E-R and is published by the Practising Law Institute. In this book, he methodically and systematically takes readers through common claim construction language used in the patent community. That said, his book is written in English for an American audience, so do consult a registered patent agent or lawyer for your particular file.

Lisa: We’re talking about the language of patent agents. What are some of the other features that can help lawyers and IP agents and inventors to have trust in the patent as an instrument of protection?

Beatrice: Well apart from clarity, which I’ve discussed, I would say having a system that is similar to what other jurisdictions are offering is probably something that could help improve the trust, generally. Our office has actually provided a very thorough and thoughtful proposal on how we can improve some of these processes through our rules. You can read about these in the Canada Gazette, Part 1.

Some of the suggestions include charging access fees for applications that have greater than 20 claims. This forces anyone that files in Canada to consider the total number of claims they are seeking from the patent office and provide some clarity to those that are already existing in the market for what the patents are when they are issued.

Another thing that is proposed is a revised timeline that would allow applicants to have a little bit more certainty in terms of the resolution of their patent application.

These systemic changes would bring Canada more in line with other patent offices around the world.

Lisa: Important topics. What would you say to an inventor considering filing a patent application?

Beatrice: Well, the first thing I would say is congratulations! A lot of work has typically already gone into the research and development of a product or process before they even engage a patent professional. So, the first thing I say is to take a moment to sit back and enjoy the fact that they are entering a new stage of their R and D effort.

The second thing I would say is keep your expectations loose. Personally, I used to take a three-stage approach with all new inventors, and it would go something like this.

First, I’d listen to their invention disclosure and take diligent notes.

Second, I’d go away and perform a thorough search of various patent databases to consider what other art exists that might be similar to theirs.

And third, I’d bring these search results back to them and ask them to consider whether they had considered other features to be their more inventive aspect of what they’ve created.

Oftentimes, when you’ve devoted two, five or eight years to a technology project, you can get very married and invested in what you think you’ve invented. And rightly so. A lot of time, money and energy has gone into this.

However, remember that the patent regime does not necessarily care what you believe you’ve invented. If it turns out that you have, in fact, accidentally invented something that someone else has already disclosed, it doesn’t mean that you may not get a patent. It just means that your patent may be for an additional feature that is not covered in that prior publication.

In other words, your strongest case may be for a unique improvement to the base technology rather than the base technology itself. And from my past experience, those that were able to make this leap from the second to the third stage and get past the depression of me showing them all the lists of art that looks very similar to theirs, if they’re able to keep their minds a little bit flexible and open to the idea that they’ve created an important improvement rather than the main technology itself.

Usually when I pass them off and they retain their patent agent, they’re able to focus more on the claim wording and non prior art issues and have a fairly smooth application process.

Lisa: That’s really good information. And thank you also for sharing some of those bigger picture kinds of concerns that are happening in the patent world. Thank you Beatrice. It’s been a real pleasure to listen to you today.

Beatrice: You’re very welcome, Lisa. Thank you very much.

Lisa: Thank you.

You’ve listened to Canadian IP Voices, where we talk intellectual property. In this episode, you met Beatrice Sze, who outlined the cornerstones of what patents are, how they’re used and what you can do and not do with a patent. To learn more about patents, how to file a patent, search for others’ patents, read about the fees and more, visit canada.ca/patents.