Patents & Industrial Designs
Patents protect things and the way things work: Patents protect applied science (engineering), not mathematical theories or pure science. The subject matter that may be eligible for a patent includes an article, composition, apparatus or process that is new, useful and “unobvious” to someone skilled in the art.
A patent is a bargain between the inventor and the government. In exchange for making the knowledge and discovery of his/her invention available to the public where it might fuel research and development of the technology at large, the inventor is granted the right to prevent others from making, using or selling his invention for a limited period of time.
Filing an application for a patent is mandatory if a person wants to claim a monopoly over the invention. Any form of public disclosure prior to filing a patent application will result in the loss of any chance to obtain patent protection for the invention disclosed. A few countries, including Canada and the USA, ease the severity of this principle by offering a grace period that allows a patent application to be filed within one year after the subject matter was made available to the public or the opportunity to seek a patent will be lost.
An industrial design is any original shape, pattern or ornamentation applied to a “useful article of manufacture”. Any aspects of the visual appearance of an article that are determined solely by function cannot be protected by industrial design. In the United States, an industrial design is referred to as a ‘design patent’.
Again, filing is mandatory. In Canada, copyright in the design of such articles becomes unenforceable after more than 50 copies have been made. An industrial design application must also be filed within one year after the subject matter was made available to the public or the opportunity to seek an industrial design will be lost.
- File and prosecute patent and industrial design applications.
- Prepare, review and negotiate patent licenses and assignments and manage recordal of such assignments and licenses, when necessary.
- Manage international corporate portfolios of pending and issued patents and industrial designs.
- Prepare patent and industrial design infringement opinions.
- Prepare patent and industrial design validity opinions.
- Send cease and desist letters regarding alleged instances of patent and industrial design infringement.
- Represent parties in litigation involving allegations of patent and industrial design infringement.
- Patent and other intellectual property audits to confirm existence, status and content of intellectual property portfolios as part of Due Diligence in connection with the purchase or sale of a business, or major investment, financing or public offering initiatives.
Useful Information to Provide Legal Counsel:
- A detailed explanation of why, when, where and how the invention was developed.
- A detailed explanation of all the persons who worked on the development of the invention, what the contribution of each person was, and how each person is connected to the owner of the invention.
- A detailed description of the invention and/or a copy of any prepared drawings.
- A copy of any scientific papers or publications describing the invention or the research behind it, including date of publication.
- Copies of any scientific papers or publications describing any similar or competitive inventions or research that is already available to the public.
- An opportunity to inspect any specimens or prototypes developed and a copy to retain if possible.
- The date when the invention was first disclosed to a third party outside a confidential relationship or made available to the public, if ever.
- Copies of any related confidentiality agreements, non-disclosure agreements or employment agreements.
- Copies of any related letter of intent, memorandum of understanding, term sheet or discussion sheet.
- The results of any investigation conducted to date concerning any alleged infringement and a copy of the issued patent(s) or pending patent application(s) allegedly infringed.
- A specimen of any device/product that allegedly infringes the subject patent(s), if available.