Canadian Patents and Trademarks Serving clients in Canada and abroad 2017-09-23T03:03:55Z http://www.gelsing.ca/feed/atom/ WordPress sgelsing <![CDATA[Canadian Representative for Service – Foreign Inventors]]> http://www.gelsing.ca/?p=515 2017-09-21T23:46:19Z 2017-09-21T21:40:19Z  

For many years, section 29 of the Canadian Patent Act required that a foreign (non-Canadian) patent applicant appoint a legal representative in Canada. Although this was not of concern to our foreign clients, because we act as their Canadian legal representative, it often was a problem for self-filed (pro-se) foreign inventors

who did not have a Canadian address or a Canadian patent agent.

Section 29(1) of the Patent Act used to read as follows:

Non-resident applicants

29 (1) An applicant for a patent who does not appear to reside or carry on business at a specified address in Canada shall, on the filing date of the application, appoint as a representative a person or firm residing or carrying on business at a specified address in Canada.

As of September 21, 2017, when Bill C-30: “An Act to implement the Comprehensive Economic and Trade Agreement between Canada and the European Union and its Member States and to provide for certain other measures” took effect, the entire section 29 has been repealed (deleted). The Patent Office’s manual (MOPOP) has also been updated to remove references to section 29 and the need for a Canadian representative.

Therefore, self-filed (pro-se) foreign inventors will no longer need to appoint a Canadian resident as their representative.

Note that the Patent Office still strongly recommends that inventors retain a patent agent: “…it could be a good idea to hire an agent so that you get the best protection possible for your invention”.

Moreover, where the applicant is an assignee, a patent agent or associate patent agent is required to prosecute and maintain the application (Patent Rules: s. 2 – “authorized correspondent”; s. 6(1)).

If you need assistance with applying for a Canadian patent, please contact us we are happy represent you at the Canadian Intellectual Property Office.

 

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sgelsing <![CDATA[What is a Patent]]> http://www.gelsing.ca/gld/?p=78 2015-04-25T22:19:14Z 2015-04-03T02:57:52Z A patent is the grant to a patentee, or inventor, of an exclusive right, privilege and liberty of making, constructing or using the invention and selling it to others to be used.

In Canada the legal owner of an invention can obtain a patent by submitting a patent application and the appropriate fee to the Commissioner of Patents at the Canadian Intellectual Property Office. This application will then be rigorously reviewed (i.e. examined) by the Canadian Intellectual Property Office.

Patent agents, which are professionals with experience in drafting applications and navigating the patent process, can often make this application process much easier and help ensure that you get all of the rights to which you are entitled.

Issued Canadian Patent

Example of an issued Canadian Patent

Unless you are able to protect your invention by keeping it a secret, generally the only way to protect your invention is by way of a patent. In order to have patent protection, you must apply for and receive a patent. Since patent laws are national, you must obtain patent protection in each country in which you want protection.

 

Do you have an idea and don’t know where to start? Check out our “Patent an Idea” section!

Do you wonder about the expense and costs of patents? Check out our Costs of Writing a Patent page

 

You can also email us at: sgelsing@gelsing.ca or send us your questions using the contact form on the right. We look forward to hearing from you.

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sgelsing <![CDATA[What is a Trademark]]> http://www.gelsing.ca/gld/?p=93 2015-04-25T22:20:04Z 2015-04-02T03:59:52Z A trade-mark can consist of a word, slogan, logo, symbol, design or any combination thereof, adopted and used by a manufacturer or merchant to identify his or her goods or services and to distinguish them from those manufactured and sold by others. Examples are everywhere you look: the words “Coca Cola” and the Nike “swoosh” are but just two.

It is the “good will” which gives a trade-mark value and keeps the consumers interested in purchasing one manufacturer’s products over another. A trade-mark generally indicates the source of the goods and services, although it may also indicate that the goods or services meet the same standard of quality as all other goods or services associated with the mark.

Trade-mark registration is not necessary in order to use it. It is advisable, however, to conduct a trade-mark availability search to see if no one else has prior rights to the mark, before you begin using it. Assuming that no one has prior rights to the mark, buying doxycycline your trade-mark becomes established as soon as you have begun to properly use it; and it is enforceable against infringers through the common law action for “passing off”.

However, an action for “passing off” has a number of disadvantages and limitations when compared to trade-mark infringement of a registered mark, including that it is restricted in geographical scope to only those regions where you have a reputation or recognition.

Trademark Registrations

Sampling of Canadian Trademark Registrations

A trade-mark registration provides you with a number of considerable advantages, and it is worth considering before significant investments are made in advertising, signs, websites, letterhead and labels. Registration will also provide you with additional grounds to stop an infringer and may be key in winning a legal battle.

 

To proceed with a trademark application, you can email us at: sgelsing@gelsing.ca or send us your questions using the contact form on the right. We look forward to hearing from you.

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sgelsing <![CDATA[How to patent an Idea?]]> http://www.gelsing.ca/gld/?p=25 2015-04-25T22:21:05Z 2015-02-01T21:04:41Z  

Do you have an idea or an invention that you think you should maybe patent? If so, we can assist with patenting that idea or doing some patent searching to see if it has been done before.

We normally start things off with an initial consult, where we review your invention, explain basic patent law concepts and maybe do some preliminary patent searching. You can either come down to our office in Red Deer to do this in person, or we can do it over the telephone. These usually take about 2 hours and there is a charge for this.

If the initial consult suggests that there may be patentable aspects, then you may wish for us to do some further in-depth patent searching. Patent searching normally take at least 3 – 4 weeks to complete.

The main work in patents is to prepare and write up a proper patent application. This is usually very time consuming and takes at least 3 or more months to do. This is not a trivial task. Cost for that ranges quite a bit, depending on the type of invention. But count on at least $8,000 to $10,000 or more.

Once your patent application is completed, we attend to filing it in the various patent offices around the world, as you may desire. We can directly ordering flomax online file in the U.S. patent office for our Canadian clients and we work with a network of foreign associate patent agents to coordinate filing in various foreign patent offices. We can also directly file international (PCT) patent applications for our Canadian resident inventors. As you may expect each filing adds to the costs, with any non-English filing typically being quite expensive once translation costs are taken into account.

Once filed, you are “patent pending”. Then there is usually a very long wait, typically years, to hear back from the patent office as to whether the application is allowed or whether more works needs to be done to overcome any objections by the patent office. Objections are very common, so expect further costs associated with responding to such “office actions”.

 

Issued Canadian Patent

Example of an issued Canadian Patent

 
Booking an Initial Consult:

If you wish to book an initial consultation, or want a copy of our current patent cost brochure, please give us a call at 403-343-3320 and ask for one of my assistants, either Michelle or Sapphira.

You can also email us at: sgelsing@gelsing.ca or send us your questions using the contact form on the right. We look forward to hearing from you.

 

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sgelsing <![CDATA[Professional Legal Counsel]]> http://www.gelsing.ca/gld/?p=23 2015-04-25T22:21:41Z 2015-02-01T21:03:56Z  

Mr. Sander Gelsing is a Canadian lawyer and registered patent and trademark agent. He is a partner at the law firm of Warren Sinclair LLP, where he has led the intellectual property team for over a decade.

 

We’ve registered hundreds of patents and trademarks for our clients over the years. We act for clients across Canada and in numerous countries around the world. We are based out of Central Alberta, Canada which is strategically located between two major urban centres, Calgary & Edmonton, including two international airports. As such, our law firm is easily accessible to a local market area population of 2.4 million.

 

Our offices

Our offices

We can assist you with all your Canadian patent, trademark and copyright matters, including with patent and trademark searching, preparing and filing applications, licensing Canadian rights, trademark oppositions, trademark expungement proceedings, patent enforcement, domain name disputes and with the purchase and sale of intellectual property.

 

Mr. Sander Gelsing, provides representation before the Canadian Intellectual Property Office, the Trademark Opposition Board, the Patent generic propecia Appeal Board and various Canadian courts, including the Federal Court. He has over twelve years experience.

 

We are members of INTA (International Trademark Association) and IPIC (Intellectual Property Institute of Canada). This allows us to stay updated on the latest developments in patent and trademark law and to network with intellectual property practitioners world-wide.

 

Client Testimonials

 
It is a pleasure to work with Sander Gelsing on Canadian trademark matters. He explores each matter thoroughly and provides well-explained options for the clients. He is easy to work with, and is a person of high integrity. – Alena Herranen (U.S. Attorney)

 
Sander is my Canadian counterpart. I am so pleased to work with him in this capacity. Sander is detail-oriented while maintaining the highest quality standards and being cost competative. Additionally, Sander is a pleasant person with whom to do business. – Pat Costanzo (Patent and Trademark Attorney)

 

Email us at: sgelsing@gelsing.ca or send us your questions using the contact form on the right. We look forward to hearing from you.

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sgelsing <![CDATA[Costs of Patent Applications]]> http://www.gelsing.ca/?p=350 2016-03-14T17:25:18Z 2015-01-16T03:50:26Z  

Hiring a patent agent to help with a patent application is very expensive. Typical costs are $10,000 or more to prepare a single patent application. Additional costs are incurred afterwards to prosecute the application, including dealing with objections and refusals from the Patent Office. By the time it is all said and done, a patent might cost $20,000 or more. Filing in other countries will add to the costs, especially if there are translation costs.

It is difficult for people to understand why it is so expensive. After all, isn’t it just filling out an “application form”?

A Canadian patent application involves much more than simply filling out a form. Yes, there is a ‘form’ bit and it normally is straightforward. You can even access it online by going here. But that’s really just the cover letter when filing the application.

The difficult part is what we have to do before we are ready to fill out the form, namely writing the description, preparing suitable drawings and writing the claims. That all takes very significant amount of time, skill and effort. Various drafts of the application are usually written, reviewed and then rewritten to ensure the application has the best chance of success at the Patent Office.

Clients will sometimes offer to do some or most of the work, thereby hoping to reduce the time that the patent agent needs to draft the application. Unfortunately, that usually does not work and often results in extra time spent rewriting things or starting from scratch. The complexities of writing a patent is something that takes years to learn.

 

Registered patent agents and their extensive training

 

There is actually a rigorous process in place before one can become a registered patent agent and is legally able to assist others with their patent application. This includes writing examinations.

In Canada, a patent agent candidate needs a minimum of two years of experience and training (usually under a senior patent agent), before he or she can even write the patent agent exams.

The Canadian patent agent exams are offered once a year, normally in April. There are four papers, each 4 hours in length and written over 4 consecutive days. People who write these ordering valtrex online exams are often engineers, lawyers or scientists and are well prepared. Even then, the typical pass rate is maybe around 10%.

Studying for ExamsA report from the Canadian Intellectual Property Office notes that for the 2012 exams only 17 candidates passed out of the 231 candidates writing the exams. That’s about a 7% pass rate! So only those who really know their stuff, will become registered patent agents.

The report also notes that the largest percentage of candidates required 4 years to pass all of the papers, before they can become registered patent agents. Imagine a six year journey, 2 years first to qualify to write, and then 4 more years of writing exams! That should indicate how much knowledge and training is required to properly write patent application.

If you’re interested in more details about this rigorous examination and qualification process, you can have a look at the Patent Agent Qualifying Examination – 2012 Report that’s posted on the Canadian Intellectual Property Office website.

 

Preparing one’s own patent application

 

Inventors are allowed to prepare and file their own patent applications without having to appoint a registered patent agent. However, once the inventor’s rights are transferred (e.g. to a company), a patent agent must be appointed as the “authorized correspondent”. Then all communication with the Patent Office for that patent application will be with that agent.

However, ask yourself, if it takes a registered patent agent an average of 5 or 6 years of training and writing patent agent exams to fully qualify, is this really something you want to do yourself? If it is, you may wish to review the Writing a patent application section of the Canadian Intellectual Property Office’s website. This isn’t a substitute for years of training and learning, but it does provide some very basic guidance for those wanting to do this on their own.

However, if you wish for more information about our services or to book an initial consultation, or just want a copy of our current patent cost brochure, please give us a call at 403-343-3320 and ask for one of my assistants, either Breanna or Melissa.

You can also email us at: sgelsing@gelsing.ca or send us your questions using the contact form on the right.

 
 

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sgelsing <![CDATA[Trade Names and Corporate Names versus Trade-marks]]> http://www.gelsing.ca/?p=330 2017-09-23T03:03:55Z 2015-01-09T00:57:55Z  

In Alberta, having a provincial trade name registration does NOT give a person any real legal basis for intellectual property ownership rights to that name. The same goes, for the most part, for incorporating under a particular corporate name.

Trade Names:

In Alberta, trade names are registered under the Partnership Act. Service Alberta clearly states on their website (bottom paragraph) that: “… [t]here is no requirement under the Partnership Act for a business name to be unique – duplicate business names may exist. Registration of a business name does not grant any right to ownership of the name…”

Below are some points that highlight the difference between a trade name declaration filed with Alberta Registry and a federally registered trademark:

  • Trade names (corporate registry/partnership/sole-proprietor names) are different from trademarks. Trademarks often include trade names, if the name is “used” properly as an identifier of the goods or services provided by the business.

  • Trademarks may also include graphics, logos, slogans, shapes, colours and even sounds, if those are “used” properly.

  • Trademark rights are dependent on proper “use” of the mark, with more extensive “use” usually resulting in greater rights. A federal trademark registration provides additional intellectual property rights that can be enforced under the Trade-marks Act. Often times these registered rights are significant.

  • Registering a trade name with Alberta Corporate Registries gives little, if any protection or ownership rights. As noted above, the Alberta Partnership Act allows for multiple identical trade names to be declared and registered by different entities.

  • A provincial trade name registration under the Alberta Partnership Act also does not provide a basis for a legal cause of action (i.e. a basis for a lawsuit). It’s really just an identification requirement, i.e. when someone uses a name different from their own real name, a person can search that “trade name” and find out the individual behind that name.

Corporate Names:

In Alberta, section 12(1)(c) of the Business Corporations Act prohibits a corporation from having a “similar” name to an existing Alberta, Canadian or extra-provincially registered corporation, if that name is confusing or misleading.

However:

  • As noted above, the Alberta Partnership Act allows for multiple identical trade names to be declared and registered by different entities, including by corporations.

  • Therefore, the Business Corporations Act will not prevent a numbered corporation, or a differently named corporation, from going out and filing a trade name declaration under the Partnership Act for a similar name of another corporation that’s already registered under the Business Corporations Act. The same goes for federally registered companies.

  • At best, one company with the prior registration under the Business Corporations Act could send a request to the Registrar of Corporations (under s. 13(2)) to give notice to the subsequently registered company change its name (under s. 13(1)).

Trademarks:

As noted, trademarks can be registered or they can be unregistered. Unregistered marks can be enforced under the tort of ‘passing-off’. Registered trademarks are enforced against infringers under the federal Trade-marks Act. They usually provide a stronger cause of action than simply going by way of ‘passing-off’. They are enforceable all across Canada and not limited to a single province.

A Provincial trade name registration may be an indication of someone having unregistered rights and there being a risk of ‘passing-off’, e.g. if one subsequently adopts that name (or a similar name) for a similar business. But the mere registration at Alberta Corporate Registry does not itself provide true intellectual property rights. Actually, trade name declarations may remain on the Alberta Corporate Registry long after a particular individual or entity has gone out of business.

What does provide those intellectual property and trademark rights are: (1) proper “use” of the name in relation to the business’s goods and services, (2) continued “use” over time and (3) a federal trademark registration.

 

Trademarks vs. Corporate Names vs. Trade Names vs. Unregistered Rights:

Because there are a number of different registries, such as the federal trademark registry, the Alberta corporate name registry and the Alberta trade name registry, there is the possibility of someone getting a registration on one such registry and then someone else getting a registration on another registry. Typical cases involve federal trademark registration vs provincial trade name declaration, or federal trademark registration vs provincial corporate name, or even corporate registration vs trade name declaration.

Without a detailed analysis and review, it is difficult to say which such registration/declaration will have the greater rights. However, a federal trademark registration normally provides significant rights. But, that is not always the case. Federal trademark registrations have been expunged or invalidated based on another’s earlier or prior “use” of an unregistered name or trademark.

The strength of unregistered rights usually depends on: (a) the length of time the name or mark has been used, (b) the extent/amount of sales and business volume under that name or mark and (c) the extent of geographic range where goods and services were provided under the name or mark. Sometimes unregistered rights may trump registered rights, including a federal trademark registration; especially if the unregistered rights are significant, have an earlier date of first use, and the federal registration is less than five years old.

 

NUANS Searches:

Often NUANS searches are conducted to assist with determining the availability of a new proposed name. This is a computerized and automated process which compares the proposed name with the names and entries in various provincial corporate databases and the federal trademark registry. This can be extremely efficient. However, because it is a computerized process, it may also miss relevant entries or listings.

Ideally the NUANS search results are interpreted by a qualified trademark agent or trademark lawyer, so that a name availability opinion can be given based on those results. It is also usually desirable to have the trademark agent or trademark lawyer conduct manual searching of the federal trademark registry, especially for variations of the name/mark, to if the NUANS search results missed a relevant prior registered trademark.

 

If you would like advise on the extent of rights you may have in a particular business name, you should see a lawyer who practices in the area of trademark law. If you need assistance with applying for a federal trademark registration or with conducting a trademark registry search, you should contact a registered trade-mark agent who can represent you at the Canadian Intellectual Property Office.

 

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sgelsing <![CDATA[Canada Patent and Trademark Filings – for Foreign Associates]]> http://www.gelsing.ca/?p=180 2015-04-25T22:15:57Z 2014-02-02T23:58:40Z  

Does your client need to file a Canadian patent or trademark application? If so, we can help!

Our team assists numerous foreign law firms worldwide to obtain patent and trademark registrations in Canada for their clients. We provide cost effective Canadian filing and prosecution solutions. Our fees are reviewed annually to confirm that they remain very favorable compared to other local firms.

If you have a case for filing, or want a copy of our current Canadian Fee Schedule, please:

Our internal docketing system is also regularly examined to ensure that our service is prompt and efficient, even with increasing workloads. Deadline items and priority filing dates are given the utmost importance. If the matter is complex, please note that we gladly handle patent appeal order amoxil online board cases, trademark opposition work and trademark cancellation proceedings.

Our lawyers, agents and paralegals are appropriately licensed and regularly take continuing education courses and seminars to stay on top of the latest developments in Canadian patent and trademark law, including courses offered by the Intellectual Property Institute of Canada.

Our Intellectual Property Team is supervised by Mr. Sander Gelsing, who is a lawyer, registered patent agent and registered trademark agent. Mr. Gelsing has over twelve years experience in Canadian patent and trademark law. He is also a registered U.S. patent agent and recognized to represent Canadian residents at the U.S.P.T.O. in trademark matters

We are members of INTA (International Trademark Association) and IPIC (Intellectual Property Institute of Canada). This allows us to stay updated on the latest developments in trademark law and to network with trademark practitioners world-wide.

 

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sgelsing <![CDATA[Oilfield Patents]]> http://www.gelsing.ca/gld/?p=29 2015-04-25T22:15:57Z 2014-02-01T21:05:51Z  

The Financial Post, in their article “The energy patent gold mine”, reported that there is a surge in oil patents which may signal a coming ‘tsunami’ of oilfield litigation. Schlumberger Ltd., Halliburton Co. and Baker Hughes Inc., the world’s largest oil service providers, reportedly secured a total of 1,257 patents in the United States in 2013, more than twice the annual number of ten years earlier. It was also noted that the past three years, Exxon Mobil Corp. doubled its revenue from technology it licenses to others.

In another article by Reuters entitled “Patent lawsuits stir fears of technology slowdown in oil patch”, and published by the Business News Network, it is noted that Canadian patent litigation is on the rise, with Federal Court cases having doubled in 2013 from a year earlier. More generic keflex impressively, the article states that the number of Canadian oil and gas technology granted patents has increased almost four-fold in the last decade (from 240 in 2003, to 881 granted patents in 2013).

Mr. Gelsing and the patent team at Warren Sinclair LLP have over a decade of experience with oilfield patents. We provide our energy sector clients with sophisticated legal advise and services in relation to:

  • obtaining patents for their new oil and gas technology
  • licensing patent rights
  • purchasing or selling patents
  • litigating oilfield patents, including at Federal Court
  • reviewing patents for infringement concerns
  • providing opinions on invalidating patents
  • defending against oilfield cease & desist letters
Contact us for advise on oilfield patents

Contact us for advise on oilfield patents

Email us at: sgelsing@gelsing.ca or send us your questions using the contact form on the right. We look forward to hearing from you.

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sgelsing <![CDATA[Register your Trademark]]> http://www.gelsing.ca/gld/?p=27 2015-04-25T22:15:57Z 2014-02-01T21:05:11Z  

A Canada trademark registration provides you with very significant advantages compared to an unregistered ordering cipro online mark. Getting a registration is worth considering before significant investments are made in advertising, signs, websites, labels or shipments of product. A trademark registration will also provide you with additional grounds to stop an infringer and is often the key in winning a legal battle.
 
Once registered, a trademark registration is valid for fifteen (15) years from the date of registration. A trademark registration is then also renewable every fifteen (15) years afterwards, upon timely payment of a renewal fee.

 

Trademark Registrations

Sampling of Canadian Trademark Registrations

 

A Canadian trademark registration provides the following advantages:

  • Registration provides an exclusive right to the owner to use the trademark throughout Canada in respect of the goods and/or services for which registration issues. Registration reserves your right of such “exclusive use” all across Canada, including in places or provinces where the trade-mark has not been used.
  •  

  • A registered mark prevents the subsequent registration of similar marks by others, once your trade-mark is on public record. You may also get notice from the Trade-mark Office of similar trade-marks being applied for after your mark has registered.
  •  

  • The Registration Certificate is your proof of ownership of the mark and of the distinctiveness in your trade-mark.
  •  

  • In a law suit there will no longer be a need to establish good-will or reputation in a particular geographical region, as would be the case in a passing-off-action based on an unregistered trade-mark.

 

We can help you with a trademark application, with dealing with the Canadian Intellectual Property Office and with registering a trademark in Canada. We have been helping people with trade-mark applications for over a decade. We have obtained hundreds of registrations for our various worldwide clients.

Email us at: sgelsing@gelsing.ca or send us your questions using the contact form on the right. We look forward to hearing from you.

 

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