You are a lawyer in a small to mid-size Canadian law firm. You have great tech clients.  Some of these clients are start-ups, some are small to medium-size enterprises (SMEs). Some are even large national and multinational businesses.  You provide strong basic corporate law advice. You also help with corporate finance, securities, labour, environmental and other issues that may arise. But what if your business law client wants patent advice and you are not a patent firm?

What is a registered patent agent anyway?

The Canadian Intellectual Property Office (CIPO) handles IP in Canada, including patents through the Canadian Patent Office.  CIPO maintains a register of patent agents. Canadians are registered when they pass the patent agent exams.

Canada’s patent agent exams

The Canadian patent agent exams are held every April across Canada.  Candidates must have applied within two months of the exams’ announcement.  Also, on the first of four consecutive exam days, the candidate must have 24 months’ experience:

• as a Canadian patent examiner; or
• preparing and prosecuting patent applications under a patent agent’s supervision; if a foreign patent agent, at least 12 months must have been in Canada under a Canadian agent’s supervision – the remaining time can have been elsewhere as a foreign registered patent agent.

There are four exams, in order:

Drafting

You are given an invention description,  a set of drawings and several similar inventions. You must write a complete Canadian patent application having:

• an appropriate main independent claim and additional claims that exclude the similar inventions;
• an introductory background statement,
• a summary of the claimed invention,
• a detailed description of the invention with reference to numbered features in the drawings, and
• a short abstract.

Validity

You are given an issued Canadian patent and several similar inventions.  You must answer questions* on whether the patent claims have:

• novelty and inventiveness given the other inventions,
• patentable subject matter, and
• utility.

Prosecution

You are given:

• a filed Canadian patent application,
• an Examiner’s report objecting to the application, and
• several similar inventions listed in the report.

You must answer questions* on how to:

• argue around, and/or
• amend the claims and/or the disclosure to overcome the Examiner’s objections.

Infringement

You are given an issued Canadian patent and at least one alleged infringing device.  You must answer questions* on:

• whether the patent claims are infringed by the device(s), and
• the patentee and/or infringer’s options.

*In each of these exams, you are also asked about:

• Canadian patent cases,
• related topics on patent law in Canada and elsewhere, and
• other IP topics.

Passing the exam

There is a minimum grade overall and for each exam.  You must re-write the exam if you don’t beat the overall average grade.  But if an individual grade is high enough, you can avoid writing that exam again.  The overall pass rate is low, about 20%.

Usually, a candidate works in a registered patent firm for many years before passing.

Why are there so few registered patent firms?

If at least one member of a firm is a patent agent, the firm may be a registered patent firm. Patent firms can use the term “Patent Agents” on their marketing materials.

A patent firm may be a law firm or a non-lawyer patent agency.  Some firms have both a law firm and a patent agency.  Lawyers who are also patent agents are members of both.  Lawyers who are not patent agents are members of the law firm only. Non-lawyer patent agents are members of the patent agency only.

Often, a law firm has to recruit a patent agent from another patent firm to become a patent firm itself.

How to bootstrap a patent practice

Many non-patent law firms don’t have enough work to support a patent agent.  When patent work comes in to these firms, it gets referred elsewhere.  There is a  risk that your client will retain another “full-service” firm that can provide patent advice.  Then, you may lose the work you are doing, not only the patent work, to a competitor.

Until now, the only solution was to hire away another firm’s patent agent with enough work to justify the agent’s compensation.  Thus the patent agent was often fairly senior (expensive).

But what if you could keep the patent work you do get?  Then you could recruit more junior agents who might have fewer clients but be much less expensive.

DSL Patent Inc.’s Patent White Labeling service is designed to help firms like yours do just that.

What is the Patent White Label Service?

Our Patent White Label service serves law firms without a registered patent agent.

It allows you to tell your clients that you can give them patent services and advice.  We provide some of these services for you in a client-anonymous fashion.  We meet (alone, or with you) with your clients as your representatives.  You provide the remaining services, directly, with our support.

Additionally, we can supply excess capacity and expertise in underserved areas and technologies to registered patent firms.

Either way, our contract is with you, not your clients.

Patent advice our patent firm supplies for you

The law in Canada distinguishes between legal advice, and patent preparation (and related services).

Patent services that should be provided by a registered agent or firm include:

• Giving a patentability opinion based on a patent search  for a proposed patent application
• Drafting a patent application for Canada, the US or around the world
• Filing a Canadian or Patent Cooperation Treaty patent application
• Analyzing CIPO Examiner’s Reports or a foreign patent office’s Office Action
• Paying fees on a Canadian patent or application
• Conducting interviews with a patent examiner by phone or in person
• Appealing a final rejection before the Canadian Patent Appeal Board
• Filing a disclaimer of a part of a Canadian patent
• Submitting prior art against  a Canadian patent
• Conducting patent re-examination proceedings for or against a Canadian patent
• Keeping a patent-specific docketing system that
  • maintains important (and non-extendible) deadlines, and
  • provides reminders well in advance of such deadlines
• Having patent errors & omissions insurance for such services

Patent advice your (non patent) firm can supply directly with our help

However, you can provide other patent (usually  legal) advice, directly to your clients, with our support.  These include:

• Hiring a searcher for a proposed patent application
• Directing a foreign firm to file and prosecute a foreign application, including paying  fees
• Registering related documents, like assignments, licenses and technology, royalty and security agreements
• Dealing with labour, insolvency and/or bankruptcy issues relating to patents and applications
• Giving Canadian validity, infringement and/or freedom to operate legal opinions
• Hiring a foreign firm to give a validity, infringement and/or freedom to operate legal opinion in another jurisdiction
• Correspondence related to patent infringement
• Litigating Canadian patent infringement and validity issues
• Reporting to and billing your client for all of these services  (whether provided by us or you, with our assistance)

Broad patent and legal experience of DSL Patents Inc.

We are a registered patent firm based in the GTA (Markham-Stouffville region). However, we operate a location-independent practice.  As a result, we support Canadian firms from coast to coast.

Drafting experience

We have 20+ years’ experience drafting and prosecuting Canadian, US and international patent applications, on inventions including:

• high-tech (communications, electronics, computer and optical)
• medical
• FinTech
• automotive
• oil and gas
• agriculture
• building technologies
• simple and complex mechanical devices,
• gaming
• sports
• consumer and
• recreational inventions.

Litigation experience

We also have general, IP and patent litigation experience.  Our principal Dennis Leung (his LinkedIn profile is here), is a lawyer (non-practising) and registered patent agent. While a lawyer, Dennis worked at many leading Canadian full-service law firms (McCarthy Tetrault, Ogilvy Renault (Norton Rose Fulbright)) and IP boutiques (Smart & Biggar, Ridout & Maybee, Shapiro Cohen (Aventum IP)).

Dennis was counsel before the Supreme Court of Canada in the leading case on patent claim construction (Whirlpool v. Camco).

Licensing experience

Dennis worked in-house with a leading reverse engineering firm.  He set out strategies, reviewed contracts and supported its clients’ international patent licensing programs.

Teaching experience

Dennis taught Patent Law  at Queen’s University’s  Faculty of Law for several years.  He wrote the Canadian chapter in a leading text on Global Patent Claim Construction. Finally, he trained many of today’s current registered patent agents on each of the topics of the patent agent exams.

White Label experience

Finally, DSL Patents Inc. has provided white label patent advice for leading national IP law firms and boutique patent agencies.

Bridging the gap between legal advice and patent advice

We don’t currently practise law.  That means we don’t compete with you.  However, we have lots of related experience.  Thus, we give you context while you decide whether and how much legal advice you provide on patent issues.

Not practising law gives us some advantages.  First, we don’t compete with you.  Second, we don’t follow conventional legal conflict of interest rules. (Our proprietary ethical rules are here)  The legal rules would prevent us from providing this program.  At the same time, when appropriate, we  respect your business conflict concerns.

For further information

If the DSL Patents Inc. Patent White Label service is of interest to you, please contact us for a free consultation at your convenience:

+1.613.668.2746 (phone or text)
+1.866.599.6608 (fax)
www.dslpatents.com/Contact