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[goldenage]

I have an idea for a business method (A unique E-marketing and Advertising Strategy) which I wish to start my own company based on it.

It has not been applied any where in the world. I did a lot of research and couldn't find any Internet based company which can offer anything close to my idea.

Of course like any idea, it needs lots of research and I need to involve people who have the expertise which I might lack. Is it possible to patent such a system or idea? I heard from a lawyer that its not possible in Canada but is possible in the USA. If that's true, could I as an Australia citizen and a Canadian resident patent my idea in the USA and still be able to operate in other countries?

If my idea was accepted and patented would that patent still protect my idea in other countries?

Thank you for your reply.

[Jonathan]

Yes, it is true that one can apply for a business method-type patent in the U.S. and it will not be summarily rejected as non-statutory subject matter as it probably would in Canada or Europe.

Whether you would be able to obtain a patent on your idea is another story and beyond the scope of these forums.

Yes, you can apply for a patent in the US as an Australian citizen that lives in Canada. Your nationality and residence has no bearing on whether you can apply for a US patent, however.

In the context that you eventually do obtain a US patent, that patent protection will not protect your idea in other countries.

[goldenage]

In the context that you eventually do obtain a US patent, that patent protection will not protect your idea in other countries.

Dear Jonathan,  thank you for your kind reply. It was really helpful. In regards to the quote, I am wondering, is there a way to patent my idea internationally? I found this organisation called WIPO http://www.wipo.int could you shed more light on this area for me. It would be greatly appreciated.  

[Jonathan]

Currently, there is no such thing as an international patent. There is, however, a system in place for filing one patent application and that patent application can eventually be used as a basis to transition into as many foreign jurisdictions (that are members of this system) as an applicant would like.

This type of application is governed under the rules of the Patent Cooperation Treaty or PCT for short. The application is also commonly referred to as a PCT application or international application.

The WIPO is a body that administers the PCT system.

[JimIvey]

Jonathan's answers were good and complete.  There's just one little thing in the original question that I want to address.

could I ... patent my idea in the USA and still be able to operate in other countries?

Patents aren't required to "operate" in any country.  In particular, a patent does not convey the right to make, use, or sell anything.  It only conveys the right to stop others from making, using, and selling something.  

The point is a subtle one, but important.  If you don't have a patent in Japan, that doesn't prevent you from operating in Japan.  It just prevents you from thwarting off competition in Japan.  

It's also a subtle point that, to some degree, patents do act as an enabling resource.  If your business is in a marketplace in which there are some strong competitors with patents blocking your business plans, having your own patent can counteract that.

In short, there are exceptions to just about everything we post here.

However, understanding what patents are and are not and what they do and don't do is important when deciding in how many countries to file patent applications -- it gets very expensive very quickly.

Regards.

[goldenage]

Thank you both for the information. Yes I understand what you mean Jim, I didn't put my sentence in the right format. What I had in mind was "for example, if I get a patent in the US am I going to be protected in Canada?"
After reading your posts I understood that It doesn't work this way.

The problem is that I need to start my business operations in Canada even though the prospect of going International is part of the whole idea, however without having the patent, I will be opening the door for other people to use the idea and start their own clown companies!

As law professionals, what would you advice me do

[JimIvey]

I know a little about doing business in Canada.  Someone wrote that the US/Canadian border is the largest one-way mirror in the world (you see us but we don't see you).  Canada is typically treated like a mini-US -- 11% of the population with similar tastes, culture, habits, etc.  Most people use 10%, just 'cause the math is easier.  Some say 10% is proper due to lower disposable income.

I have a number of Canadian clients who file in the US first because that's the first market they hope to expoit, after getting their feet under themselves in Canada.  Afterall, it's a market ten times that of Canada, yet the patent application doesn't cost ten times that of a Canadian application -- but it's not quite the same cost either.  But, comparatively, it's a bargain given the market size.  Plus, given that the US has some of the most onerous requirements regarding disclosure in a patent application, it's often best to start here -- making sure that level of disclosure is met -- then file outside the US where the overkill of disclosure won't hurt you.

Somewhere, I saw a thread of discussion on reciprocity between the US and Canadian patent offices.  I have enough Canadian clients (more an issue when things get international) that I periodically consider qualifying for practice in Canada.  Every now and then, when I get frustrated with my government here, I start eyeing the real estate market in Victoria (very much like Seattle, I understand) and trying to figure out electronic USPTO filings using Linux.  So practicing in Canada (or from Canada) could be an option.  ;-)

In short, if -- like many Canadian businesses -- you hope to go after the US market first, then spread across the globe reaping in your billions, I'd file first in the US, then PCT at the one-year deadline (assuming things are looking good but you don't know where your product/service will be big).  Be aware that you'll need local counsel for the PCT -- US counsel can't represent you unless you have at least one US resident/citizen applicant or inventor.

One last point:  this is just an off-the-cuff opinion and an observation of what others do.  I don't know your particular business, so I can't possibly say whether this is the best strategy for you.  Everything is cost/benefit analysis -- and that's a business decision, not a legal one.  I may have suggested one possible course of action, but that doesn't absolve you from doing your homework to make sure it's the best thing for you and your business.  That's probably understood, but it needs to be said once in a while.

I hope that helps.

Regards.

[goldenage]

Be aware that you'll need local counsel for the PCT -- US counsel can't represent you unless you have at least one US resident/citizen applicant or inventor.

Thanks Jim, your points are very good and I can't agree less that the US market is the best and biggest. However, I have a question about the the US resident/citizen applicant, I am clear about what you mean. Does that person need to be the inventor? Or could he/she be related to the business i.e partner? Can my uncle who is a US citizen be useful for such a process if he was willing to help and get involved? Is the patent going to be under his name or still mine? If you could please explain more about this topic.

Thanks again Jim.

[JimIvey]

"Inventor" is always a natural person (not a corporation, i.e., a person who exists only legally).  Under US law (and I'm assuming elsewhere as well), the inventor must have actually contributed conceptually to the thing patented.  You can't just name whoever you like.

In the US, "applicant" is also the inventor.  Elsewhere, the "applicant" can be the corporation/business entity owning the application.  So, in the PCT, you can have your company be the applicant, but the inventors must be the real inventing people.

So, if you want a US practitioner to represent you in the PCT, you'd have to have at least one US inventor or applicant given those definitions.  Or the US practitioner has to be authorized to represent applicants in Canada.

Regards.

[goldenage]

So in my understanding, I can't just name any person in the US to become the applicant for my patent application and in my situation I don't have any one who is contributing conceptually..:-/.. I was thinking who do you mean by the "US practitioner" Is that the patenting lawyer? If that is so, then is my problem solved?  

Best regards

[JimIvey]

Yes, you can't name just anybody as an inventor.  And, yes, "practitioner" (when I use it) means patent attorney or patent agent.   It's just easier to say/type.

Regards.

[goldenage]

I wish to thank Jim and Jonathan for all the information and advice that you guys provided. Your forum rocks and I would recommend it to anyone who might need any advice in regard to intellectual property. Good luck and all the best.