By David French
I was recently sitting at a hotel bar and overheard a circle of businessmen talking at a nearby table. I couldn’t help listening in. What I heard spaced over about an hour was strangely familiar:
- I thought I was going to get rich when I put my new patented invention on the market. Why isn’t it happening?
- It seemed like a good idea to copy my competitor’s layout. Why am I being sued now?
- I wrote some code like what I need now at my former employer’s business. I think I will check my old laptop and use it again.
- Let’s put our daughter and son’s names together and use that as our trademark. I’m sure “Mercedes-Ben’s” will stand out in the marketplace.
- There’s no point in checking name registers in the United States; we’re never going to sell product in the U.S.
- Mike is our key man in sales. I’m sure if he invents an improvement to our product that this will belong to the company.
By David French
Recent events in the news regarding runaway trains have provided an opportunity to highlight one of the realities of the invention and patenting process: It is not always the original invention that is most important for commercialization. Surprisingly often, it is the follow-up improvements that make the difference. Levering recent events, here are some historical precedents that demonstrate this point.
Recent news articles have disclosed that the incidence of runaway train cars is larger than the statistics reported by the Transportation Safety Board. To be fair, the TSB has posted on the Internet all reports on railway events involving runaway cars. It’s just that their statistical summaries have not been acknowledging runaway events when the cars did not crash or cause any damage. Apparently, more than 300 such lesser events in this category have in occurred in Canada in the last ten years.
This is reminiscent of a situation that existed in the mid-19th century until some very important inventions were made. Runaway trains were a big problem until George Westinghouse came up with his innovations in railway-braking systems. This is an excellent example of progressive inventing.
By David J French
A recent story published by the Ottawa Citizen on Nov. 7 tells of an individual named as an inventor on a patent for foaming alcohol hand rub who feels he has not received just treatment at the hands of his employer:
“Engineer sues company he says pressured him to give up his rights to foaming hand sanitizer,” by Robert Bostelaar.
“Francisco Munoz, a chemical engineer who came to Canada from Mexico, is suing former employer Deb Brands, alleging the company unfairly pressured him to surrender his patent rights to foaming hand sanitizer.”
The story is essentially that of an employee who was asked to sign a piece of paper transferring to his employer rights in an invention for which he was a co-inventor. He signed as requested. Apparently, his employment was terminated shortly thereafter and six years later, with the invention having proved to be a substantial success, he is claiming that he has been taken advantage of and seeks compensation. But it’s more complicated than that.
Normally, in the absence of a written agreement, regular employees who make inventions own the rights to those inventions. They owe nothing to their employer unless, as a special case, they have been hired to invent. Engineers who are working in order to achieve a specific goal would normally fall into this latter category. The duty of such an employee hired-to-invent includes signing written confirmations of the employer’s ownership of any patent rights that he may generate.
By David French
“Don’t disclose your invention or you’ll lose your patent rights!” This is the type of advice that you will typically get in a coffee shop, or over a beer around 5:30 in the evening before you head home. Is this true?
Well the answer really is, “Yes and no.” How can this be?
The answer is that you will lose your patent rights in Europe and countries generally that adopt a standard of “absolute world novelty” as a requirement for granting a patent. I like to describe this as requiring that an invention be “pristine” in order to qualify for a patent grant under this standard. But you will not lose your patent rights in Canada, and not in certain other important countries, simply by disclosing the invention yourself. At least, you will not lose your patent rights immediately.
At least four countries in the world — Canada, USA, Australia and the Republic of South Korea — provide an unqualified one-year grace period to excuse public disclosures made by an inventor (or applicants claiming rights under an inventor meaning assignees). A number of other countries, such as Japan, do have grace periods but they are often limited to six months and in some cases only protect certain types of disclosures. All countries around the world are required by an international convention to give a period of protection against an applicant’s own disclosures where the disclosures occur at a recognized international exhibition, according to Paris Convention Article 11.
By David J French
It’s true: Millions of dollars in investment opportunities go to waste on a daily basis. This is happening as opportunities to file for patent rights around the world expire. Let me give you an example that is not so hypothetical.
An inventor makes a good invention and follows all the proper patenting procedures to create an application under the Patent Cooperation Treaty. An advantage of the PCT is that a unitary single application can be filed that is good for over 145 countries worldwide. Additionally, the PCT allows an applicant to delay for at least 30 months before making filings in individual countries. The PCT route is not a procedure for obtaining a single international patent; no such thing exists. Rather, it is a pipeline for the central processing of a single patent application that can be broken up into multiple national patent applications after a 30-month delay. Those national applications under the PCT are called National Entry filings.