A patent is the grant to a patentee and the patentee's legal representatives for the term of twenty years from the filing date, the exclusive right, privilege and liberty of making, constructing or using the invention and selling it to others to be used.

In an effort to bring some whimsy to a generally dry field we have elected to put the Barristers, Solicitors, Patent & Trademark Agents upside down.

Thank you to everyone who noticed and made comments.

Feedback is always welcome.

A retainer. Most lawyers charge a "retainer". A retainer is an amount of money paid before work starts. The money is not paid to the lawyer, but into a Trust Account. The funds will be held "In Trust" for you until the legal work is completed and you are provided with an invoice. It is practice to ask you for a retainer in a specified amount prior to the time any work is comenced on your legal matter. When the retainer is used up, a further retainer in the like amount will be required on the same terms and conditions. If we do not receive a further retainer from you, we will stop work on your legal matter, and advise you that we have done so. Why a retainer. As you likely know already, legal work is sometimes expensive. But we have found that it is often worse to start work and not finish it, then it would be to leave matters as they were. For example, if legal documents have already been served, and the client runs out of funds, then the other side might be upset or frustrated and behave badly when you no longer have counsel. Or the client may be without counsel during complicated negotiations or Court applications when the opposing side already has a lawyer. This puts the client at risk. So we have found that a retainer is good for the client. A retainer is good for the lawyer too. It is important to our staff and to the people who provide us with their services that we pay them on time and in full. It is important that we are paid for the hours of work and high level of responsibility we have towards our clients.

To acknowledge and reward those individuals or companies that have invested effort and resources to create new innovations while ensuring that the innovation becomes available to the public and is ultimately exploited for the public good.

We charge by the hour for the time we spend on your legal work. Chargeable work includes meetings with you, telephone calls, research, sending and receiving documentation, attending at Court, negotiations or meetings, or any other necessary services performed on your behalf.

In our patent practice our fees may be calculated based on the time we spend preparing your patent application, or there may be a flat-fee which is quoted to you ahead of time. Click for a detailed list of the costs comonly associated with a patent application.

Disbursements

We additionally charge for disbursements. Disbursements are bills that we pay to others on your behalf. Examples of disbursements include long distance charges, courier costs, patent office fees, Court filing fees, registration and Land Title fees, searches, research costs, transcripts of Examinations, process servers and reports from third parties. We will obtain your approval before incurring very expensive expenses like expert reports.

Other Charges

We also charge you for certain other non-legal services. These include photocopying, faxes, travel mileage expenses, NSF cheques and investment administration charges.

Any novel and useful art, process, machine, manufacture or composition of matter or any novel and useful improvement to same, may be patentable subject material.

Ideas, scientific principles or abstract theorems are NOT patentable.

Further, subject matter must not be obvious to someone skilled in the art or science to which it pertains. In other words, the invention must have inventive merit and not be something that anyone skilled in the art would have been led to develop given all of the knowledge available to them at that time.

Subject matter defined by a claim in an application submitted for a patent, in Canada and in the United States, must not have been disclosed to the public directly or indirectly for more than 12 months prior to the filing date of the application. In most European countries any public disclosure prior to filing an application would bar the inventor from filing for patent protection in that country.

A Non-disclosure Agreement or Confidentiality Agreement may be used if an invention must be disclosed, in a limited fashion, to manufacturers, investors and the like.

Patent applications can be written and filed directly by the inventor. An assignee (owner) of an invention must obtain the services of a patent agent for filing and prosecution of an application.

Information is available from the Canadian Intellectual Properties Office through Industry Canada or the United States Patent and Trademark Office, outlining the basic information required for writing and filing a patent application.

Clarity and completeness of the specification is necessary to a successful patent application, but the most critical component is the claim(s).

It is advisable that anyone filing a patent application have a clear idea of the mechanics of patent claim drafting. Texts have been published which aid the writer in understanding the intricacies of this process.

Examples of patents are available in most libraries and on the internet; please see our links page for links to the Canadian Intellectual Property Office and others.

Inventorship defines the individual or individuals who developed the invention. The name of the inventor is printed on all Patents, regardless of the ownership.

Ownership defines who owns the patent. A patent or patent application can be assigned to another individual or company. The owners name also appears on the patent, provided assignment occurs prior to printing of the patent document. Registration of the assignment with the Patent Office ensures that all inquiries regarding the Patent reveal the correct ownership.

In Canada, there is a starting presumption that an Employee is the owner of an invention, even on those invented while they are an employee of a company. This rule has been established since as early as about 1904.

The comon law rule in Canada is that the mere existence of an employment relationship does not disqualify employees from patenting inventions made during the course of their employment. This rule holds true even where the invention relates to an aspect of the employer's business, the employee used the employer's time and materials to bring his or her invention to completion, and the employee has allowed the employer to use the invention while he or she was employed.

This presumption can be overruled: first, that the employee signed an express contract to the contrary; or secondly that the employee was actually hired for the express purpose of inventing or innovating. Note that the line between employee and independent contractor is not as clear as in the case of copyright ownership. Basically, the same patent ownership principles apply to employees and independent contractors alike. In the case of an independent contractor, the second principle may be more a function of whether it can be implied that the invention should be transferred. A factor includes whether it would have made proper business sense for the employer to hire the contractor unless any inventions went to the employer.

In the first instance, unless there is some evidence of duress, an employee's signed agreement to sign over any inventions is usually enough to sell or "assign" the patent rights to the employer.

In the second situation, the fact that an employee was hired and paid (their salary or wages) to invent then infers that the invention should belong to the employer. Uncertainty and argument can arise however when one examines the employee's job description (if there is one) and the employee's actual duties. Basically, as stated by the court, "While the mere fact of employment does not obligate an employee to transfer an invention to the employer, where it is the product of the very work that the employee is paid to do, then the employer is the rightful owner of the invention."

As an oversimplification, if the warehouse janitor invents a new inventory system, it would be hard to find it belongs to the company. Conversely, if a skilled employee was hired to design a solution for premature gear failures and did, then that invention likely belongs to the employer.

Three real-life Canadian legal cases on this issue may help.

1. Company Wins: An employee was hired to design PC computer cases. He did. He quit. He filed a patent for a PC computer case. The company was successful in asserting ownership of the design.
2. Employee Wins: The employee worked for many years to design automobile door-locking rods. The employee moved and resigned his position. He signed a consulting agreement. Later, on his own initiative, but eventually paid for by the company, he invented a 3-D hinge. The company asked him to sign it all over. He didn't. He wanted more money, they wouldn't pay. They suspended him. Before the invention, and under threat of discontinuing the consulting arrangement, the employee was required to sign an invention transfer agreement. This was later found to be signed under duress and not-enforceable. So without an express agreement to assign, did the conduct suggest and implied obligation to assign ? Not in this case. Employee remains the winner.
3. Employee wins: In this case employee manager H made an invention outside the scope of his duties and mostly outside business hours. The company was mostly marketing, not manufacturing. H eventually left the company. The company was aware of the invention and after initial reluctance to its concept decided to file a patent application, but without H, they inserted employee D as inventor. Former employee H wins ruling to have patent inventorship and ownership to be amended or else have the patent declared invalid. This case points out the two exceptions to the employees claim and regarding hiring to invent, the case sets forth a checklist of factors which would influence the decision of whether to give the invention to the employee or the company.
4. an express contract to the contrary, OR (2) Where a person was employed for the purpose of inventing or innovating which requires considering nature and context of the employer/employee relationship which include:
   1. whether the employee was hired for the express purpose of inventing;
   2. whether the employee at the time of hiring had previously made inventions;
   3. whether the employer had incentive plans encouraging product development;
   4. whether the conduct of the employee once the invention had been created suggested ownership was held by the employer;
   5. whether the invention was the product of the problem the employee was instructed to solve, i.e., whether it was duty to make inventions;
   6. whether the employee's invention arose following his or her consultation through normal company channels (i.e., was help sought?);
   7. whether the employee was dealing with highly confidential information or confidential work; and
   8. whether it was a term of the servant's employment that he could not use the ideas which he developed to his own advantage.