You or your business may have come up with a valuable innovation. An invention is usually protected by a patent. You may also protect a particular visual feature as an industrial design. Learn how to identify the type of IP you have and how to protect it.
First stage: Is your invention a patent or an industrial design?
Patents at a glance
For your invention to be patentable, it must be:
- new—first in the world
- useful—functional and operative
- inventive—show ingenuity and not be obvious to someone working in your area of specialty
A patent can be granted for:
- a product (a door lock)
- a composition (a chemical composition used in lubricants for door locks)
- a machine (a machine for making door locks)
- a process (a method for making door locks)
- an improvement on any of these
Car door lock
Patent number: CA 2590356
Filed by Zygmunt Dziwak in 2007
Patents reward innovation
Whether you create cutting-edge technology or improve well-known products or processes, it is in your best interest to learn more about patents.
Patent protection applies in the country that issues the patent. In Canada, the following rules apply:
- Your patent is protected for up to 20 years from the date you file your patent application.
- The first person to file a patent application is entitled to the patent; therefore, you should consider applying as soon as possible after completing an invention in case someone else is on a similar track.
Most inventions are improvements on a previous invention
Ninety percent of patents are for improvements to existing patented inventions.
Famous Canadian patents
The SKI-DOO® snowmobile has made tracks since J. Armand Bombardier obtained his first patent in 1937. Bombardier Recreational Products now has manufacturing facilities in five countries and sells its products in more than 100 countries.
"Some day, I will invent a little machine that will glide over the snow and will even allow me to go up hills."—J. Armand Bombardier
Patent number: 367104
Year issued: 1937
Canadian Alexander Graham Bell invented the telephone—a critical milestone in global communication systems. The invention was improved in the following years and has been improved ever since.
Canadian Alexander Graham Bell invented the telephone, a critical milestone in global communication systems.
Patent number: 7789
Year issued: 1877
Title: Improvements on electric telephony
Patent number: 13809
Year issued: 1881
Title: Improvements in electric telephony
Patent number: 13810
Year issued: 1881
Title: Improvements in electric telephony
Industrial designs at a glance
A well-designed chair is not just a pleasure to sit on, but also a pleasure to look at. This can be said for most manufactured products. Their value to people depends not only on what they do, but also on how they look.
An industrial design can be:
- a shape
- a configuration
- a pattern
- an ornament
- any combination of these
An industrial design is applied to a finished article made by hand, tool or machine, and the features can be two- or three-dimensional.
To qualify as an industrial design, the design must be novel and the features must appeal to the eye.
Your industrial design is worth a lot of time and money and it may mean the success of an entire enterprise.
It pays to protect your hard work.
In Canada, industrial designs are protected under the Industrial Design Act for up to 15 years.
Patents compared to an industrial designs
What is protected
A patent protects new products, compositions, machines, processes and improvements on any of these. Most patents today are new and useful improvements of existing inventions.
An industrial design protects the visual appearance of a product—its ornamentation, shape, pattern, configuration or any combination of these features.
What it is protected against
A patent protects your invention against the manufacture, sale or use by others.
An industrial design protects your products against manufacture, sale, rent or importation by others.
Here is an example of a patent:
A display for a handheld computing device includes a display panel, a circuit board carrying display electronics for the display panel, a cover assembly securing the display panel to the circuit board and a resilient layer adhered to the circuit board for securing the display to the computing device.
Owner: Research In Motion Limited (Canada)
Inventors: HOLMES, CHEN, SIMOES
Patent CA 2508239
Here is an example of an industrial design:
Registrant: Research in Motion Limited
Title: Handheld Electronic Device
Second stage: Search for existing patents or industrial designs
Six reasons why you should start with a search
Discover the latest innovations in your field
Most inventions are disclosed to the public for the first time when a patent or industrial design application is published. Searching databases lets you learn about current research and innovations long before the innovation enters the marketplace.
Find partnerships and new businesses
If you are interested in developing and marketing a particular innovation, you can search the patent and industrial design databases to find companies that already own patents or industrial designs in related areas. You may also find information about patents and industrial designs that you could buy, licence or use to improve your innovations.
Anticipate changes in the market
Keeping track of patents in your field can help you plan for changing market conditions.
For example, a number of companies have patented technology that makes long-distance surgery possible. You can find this information in patent databases.
A company that supplies technology or technical support services to hospitals could use this information to prepare their products or services in ways that meet the new needs of hospitals.
Avoid infringing on someone else’s patent or industrial design
You can avoid infringing on a patent or industrial design by searching in the right search engines (see our list below) to see if someone else already holds a patent or has registered an industrial design for your innovation. You could save yourself a lot of time and money by making sure that you are not infringing on someone else’s rights.
Identify potential competitors
Do a search in the markets you are interested in to avoid conflicts with other inventors.
Flag potential commercial issues
If there are many patents or industrial designs for a certain type of innovation similar to yours and the item is still not in the marketplace, this may be a sign that it does not have much commercial potential. People further along in the process than you may have decided it was not worth continuing.
Free search tools
First in the world?
Try these free search engines and find out if you are the first.
See a complete list of intellectual property offices around the world.
Freedom-to-operate and infringement searches
Search for each country where you plan to sell (e.g., Canada, U.S., etc.) and manufacture your innovation.
Third stage: Define your protection strategy
First, you must understand that your innovation is NOT automatically protected by law, so you need to make sure that you keep your innovation's details secret. Then you need to define your strategy to protect it.
You must make a strategic decision about whether it is best to manage risk by maintaining a trade secret indefinitely or choosing to file for formal protection, which has time limits. There are a number of issues to consider.
Maintain your innovation as a trade secret
The definition of a trade secret can vary from one jurisdiction to another. In general, we call something a trade secret if it is information that provides a business advantage over a competitor and if its owners have made reasonable efforts to keep it secret.
Trade secrets can be formulas, practices, designs, patterns, data compilations, devices or instruments, processes, etc.
Sometimes a trade secret can be protected by contracts via certain legal concepts and statutes, such as confidentiality agreements (see below).
The World Intellectual Property Organization (WIPO) explains how trade secrets are protected: Trade secrets are protected without registration, that is, without any formal procedures. Consequently, a trade secret can be protected for an unlimited period of time. Some general standards exist:
- the information must be secret (i.e. it is not generally known or readily accessible in circles that normally deal with the kind of information in question)
- it must have commercial value because it is a secret
- it must have been subject to reasonable steps by the rightful holder of the information to keep it secret (e.g., through confidentiality agreements)
Confidentiality agreements help protect trade secrets
A confidentiality agreement, also known as a non-disclosure agreement, is a contract in writing in which parties agree not to disclose the secret information they share, or use the information in any unauthorized way.
Inventors often expect anyone who has been or will be in contact with secret information (e.g., employees, suppliers, partners, investors, etc.) to sign a confidentiality agreement. Such an agreement will largely reduce the risk that the information becomes public. This is important because if the information does become public, it is possible that it could no longer be protected under law.
Trade secrets have limitations
It can be a challenge to maintain secrecy for a long time or when a lot of people know about a secret. The legal system cannot protect your trade secret from misuse.
You must use appropriate safeguards to protect your trade secret. Make sure your employees, customers, vendors and visitors are fully aware that they are forbidden to disclose or in any other way misuse your trade secrets. Make sure that these people sign confidentiality agreements where possible.
Proving that someone has broken a confidentiality agreement is complex and hard to do under common law or civil right. Legal action can be far more costly than applying for formal protection such as a patent or industrial design registration.
Even if you do keep an invention secret, someone could independently create the same invention and claim to be the rightful owner. This can happen if someone uncovers your invention through independent research, by reverse engineering your invention or because they heard about your invention from another person.
If this happens, your invention will be considered owned by someone else. Reversing this in court to annul it can be difficult, lengthy and expensive.
Comparing the trade secret to formal protection (a patent or industrial design)
Here is a comparison of the trade secret versus the patent or industrial design. It will help you decide which path you should take with your innovation.
Risk level for each path
Establishing your innovation as a trade secret is riskier than your other option, which is to seek formal protection using a patent or industrial design. This is because:
- your trade secret has little protection if someone else files a patent or industrial design for the same innovation
- you cannot sue if someone infringes on your innovation
- the burden of proof is on you to show that you are the inventor
When you file for a patent or industrial design (formal protection) your innovation is less at risk because:
- you have proof of ownership
- your position is defendable in court
At the same time, your invention or design is easy for someone to copy because you have to disclose it publicly when you file for formal protection.
Costs associated with taking each path
A trade secret does not involve a registration process, which means there are no registration costs.
A patent can cost thousands of dollars to file and maintain. The top end of the cost range for patents includes the cost of paying patent agents, not the Canadian Intellectual Property Office. The cost can vary from case to case and varies from one patent agent to another. Registration of an industrial design usually costs less than $500.
Benefits of each path
When your innovation is protected by a trade secret, you can take measures such as non-disclosure agreements to help protect your innovation from being copied or exploited. One great benefit is that you never have to disclose the details of your innovation. Also, unlike a patent or the registration of an industrial design, a trade secret never expires. It is a secret as long as the secret can be kept.
Patent or industrial design registration
When you are granted a patent or have registered an industrial design, you own an asset like a deed to a physical property such as a house. It can become very valuable and can be sold, licensed or used to negotiate funding, venture capital or other forms of financing.
When you have exclusive rights to an innovation, you have an effective way to stop others from making, using, selling or importing your product or process. You can even use exclusive rights to stop someone who might later independently invent your patented invention. In many cases, a patent or industrial design registration is the only way to ensure exclusivity—and hence a competitive edge—in the marketplace.
Patent protection extends for up to 20 years from the date you file your application; an industrial design can be protected for up to 15 years.
When is one or the other method best?
Establishing an innovation as a trade secret makes the most sense when an innovation is at the research and development stage. It also makes sense for innovations that could later be filed for protection by patent or industrial design registration.
A patent or industrial design registration makes the most sense for innovations and new designs.
Maximize the value of your innovation
Take the right steps to protect and exploit your innovation as much as possible. Like physical assets, these intellectual property rights must be attained, maintained, accounted for, valued, monitored closely and properly managed in order to realize their full value.
Establish your ownership
Getting legal rights to your innovation by way of a patent and/or industrial design registration gives you proof of ownership. This is crucial to gaining the most commercial value.
Venture capital, angel investors and other financing organizations may want to fund your innovation, especially if you can prove you own it. Since patents and registered industrial designs are recognized as assets, you may even be able to use them as collateral for a bank loan.
Licence your invention
Licensing to other parties can be a vital revenue stream when you enter new markets across Canada and in other countries. For start-ups, licensing is typically the fastest way to generate cash flow.
Get professional advice
Registered agents can give you advice about developing an effective strategy on how to maintain secrecy, create confidentiality agreements or on when and how to apply for formal protection. Most patent applications are filed through these agents.