J. Gordon Thomson Professional Corporation Barrister, Solicitor & Notary Public (Ontario) Registered Patent Agent (Canada & USA) Registered Trade-mark Agent (Canada & USA) 1353 Mountainside Crescent, Ottawa, Ontario K1E 3G5 Phone: Fax:

SEEK AND YE SHALL FIND (…but hopefully not!) Invention Disclosure Patentability Searches and Opinions

Is a search necessary?  There is no legal requirement to search the prior art prior to filing.  If you are intimately familiar with the field then a search is probably not necessary  If the invention is an improvement to a previously filed invention then a search is probably not necessary

Recommendations 1. You should make (or have made) a thorough patentability search before your decide to file a patent application 2. The patentability search should be done with the commercial evaluation

Reasons for a Search 1. Determine if a patent is reasonably achievable 2. Avoid wasting money on an application that may fail 3. Discover relevant prior art references that will make drafting easier 4.Discover prior art that will help you improve the invention

Reasons for a Search 5. To learn more about inventions that worked and attained commercial success 6. To distinguish your invention from the prior art 7.To determine the novel features of the invention 8.To present search results to potential investors and licensees

Reasons for a Search 9. Locate prior art that the Examiner might miss (Duty to disclose) 10. Determine potential infringement of in- force patents

WHO DOES THE SEARCH?  DIY – The inventor can usually do a good search but know when to stop  Searcher  Unlicensed  Located in CIPO or USPTO  Agent/Lawyer  Familiar with the legal requirements  Familiar with drafting  Familiar with you

SEARCH STRATEGIES  Where to search:  Canada – CIPO online database  USA – USPTO online database  Other countries? Budget  Delphion  Derwent  WIPO

SEARCH STRATEGIES  How to Search  By classification  By key word

Prerequisites for a Patent  Utility  Novelty  Inventive Step

UTILITY An invention must have some use. That is, it must have utility, be of some commercial or industrial value and be of some benefit to the public. The invention must also be practically fit for the purpose described in the invention and it must do what the inventor promised it would do. When patent claims are based on results that fail, a patent will not issue.

NOVELTY An invention must be new and novel, that is, never previously disclosed to the public. An invention is called “anticipated” if it has been previously disclosed in the prior art. The invention must be different than all other devices, considered individually, in the art to which the invention applies. This is a relatively objective test hence easier to apply than the obviousness test.

NOVELTY ANALYSIS Entire invention must be disclosed in a single piece of prior art NEW AAA BBBB CCCC DD

INVENTIVENESS An invention must be inventive. That is, it must be a step forward in the art of the field of the invention. An invention that lacks inventiveness is considered to be obvious and not patentable. An invention is inventive if it would not be obvious to a person “skilled in the art” of the field of the invention in view of all the available prior art at the time of the filing of the patent application. The prior art may be “mosaiced” together. This means several patents may be considered in any reasonable combination to determine if the invention would be obvious to a person skilled in the art. Mere workshop improvements to an existing invention are not considered to be inventive. The lack of inventiveness is fatal to patentability. This is a subjective test and a difficult one to satisfy during a patent examination.

OBVIOUSNESS ANALYSIS Prior art may be mosaiced Entire invention must be disclosed in a single piece of prior art NEW AAA BBBB CCCC DD

SEARCH REPORT/OPINION CONTENTS Introduction Summary Brief description of your invention Conclusions Limitations of this Search and Opinion Background What is the problem? How does your invention solve it?

SEARCH REPORT/OPINION CONTENTS Classification of the Invention Primary class description Sub-class description Search strategy Where Key words used Classes searched List of relevant prior art patents Copies included

SEARCH REPORT/OPINION CONTENTS The test for patentability Proper subject matter Usefulness Inventiveness/Obviousness Novelty/Anticipation Meeting formalities Discussion and analysis of prior art Conclusions Recommendations