Canada: Five Golden Rules For Patenting Your Tech

Last Updated: June 11 2019
Article by Gowling WLG

There's no question that intellectual property is the lifeblood of the global tech sector, and growing companies that play fast and loose with their patents do so at their own peril. Indeed, for many startups, a poorly filed application or unwitting early disclosure could pose an existential threat.

We've outlined below some golden rules to help your company devise and implement an airtight patent strategy.

1. Act now

Canada is a first-to-file jurisdiction, meaning a patent is issued to the first applicant to file an application - as opposed to the first person to have invented the technology. With that in mind, the best time to apply for patent protection is right now.

With limited capital and a flurry of other legal and business obligations, it's no wonder that many startups put patents registrations on the backburner until they have something with commercial potential fully fleshed out. This, however, is the wrong approach.

Registering your patents early on gives you a competitive edge over other inventors, and provides the surety you need to proceed in the development of your technology. Remember that in many jurisdictions (Canada included), the issuance of patents can typically take two or three years - all the more reason to file as early as possible.

2. No photos please

In the age of Facebook and Instagram, resisting the urge to share your latest innovations with the world at large can feel challenging. But spilling the beans - whether on social media, in presentations, or via a crowdfunding pitch - carries real-world consequences that affect the patentability of your tech.

Such public disclosures in Canada automatically set off a 12-month grace period during which time inventors must file a full patent application. Failure to do so puts the validity of a future patent at risk because of the requirement under Canada's Patent Act that an invention be new.

Additionally, most other countries around the world, including large markets such as Europe and China, do not have such a grace period at all that would apply to shield yourself from your own disclosures. For this, and other reasons, it's always best to keep your cards close to your chest until after your patent has been registered.

3. Don't go it alone

A DIY attitude is a great asset when upcycling old furniture or making light repairs around the house. When it comes to patenting sophisticated software, it's generally better to leave it to the professionals.

Legally, anyone can draft and file their own patent application. That said, the principal strength of any application rests chiefly in the careful language it uses to claim an invention. One false move or ambiguous definition can throw your whole application into jeopardy. For this reason, we strongly advise that you consult with a lawyer or patent agent to assist in drafting your patents for you.

4.Triple-check your employment contracts

The greatest threat to your IP - and by extension, your business - often comes from within your own company. That's why it's crucial that your employment contracts include clear terms surrounding the ownership of IP created by employees and contractors. By the same token, contracts with third-party vendors should provide for the transfer of ownership of any work created for you.

It's equally critical to have your employees sign non-disclosure agreements (NDAs) to prevent them from sharing confidential information or trade secrets - particularly in the event of a termination.

5. Open source, closed opportunities

Open source software is one of the most remarkable developments of the technology age. From an intellectual property standpoint, however, the use of such software can pose a legal nightmare.

Although open source software is free to use, it is still subject to copyright law and the ability to integrate it into your own commercial products is contingent on the provisions of the open source license. Such licenses may outright forbid the use of open source software in commercial products or otherwise require that the source code of any products in which the software is integrated be made publicly available.

Decide early on if your company will be using open source software in its tech and tailor your strategy accordingly. As a general rule, filing patents is a far more straightforward process when open-source software is used sparingly - if at all.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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