Canadian and intl patent application-in-process beat me to it

Question

I had an idea for an invention. I found nothing similar on uspto.gov. Then I discovered Google Patents. I immediately found that someone from Canada is filing a patent for the same invention on the Canadian Intellectual Property Office (CIPO).

The application is active and the most recent payment was a "Maintenance Fee - Application - New Act" paid in Feb of this year with a "due date" coming up.

I then found that they have also filed an international patent.

I am so so so disappointed as I have already put in time and have been excited beyond belief about starting this business. I already have a first draft business plan and a home made prototype not to mention hours of patent search and educating myself. And I thought everything was fine when there was no prior art on uspto.gov (thank goodness for Google Patents)

Do I have any options?

Can I go ahead with the business anyway and hope I am not sued? Scary. How often does this happen successfully/unsucessfully?

If the Canadian guy's patent is rejected, can I try? (His application is badly written, definitely not by an attorney) His "description" is different from my idea but his "claim" is so broad that it encompasses mine easily with no loopholes.

Given where he is in the process, how do I find out if his application is rejected? If it is, I know he has a chance to edit and reapply. But if he drops it, then its public domain right? And no one can patent it?

Any advice appreciated. About anything. Even if you just have part of the answer to my post. I really want to do this business. Please help! sophie

Answer 1

A pending patent application does not provide the owner with any enforceable exclusionary rights to stop others from making, using, offering for sale, selling or importing the claimed invention. So, you cannot be sued for infringement until a patent issues, if ever.

When a patent application is laid open (published) in Canada, the prosecution history (the communications between the Canadian Intellectual Property Office (CIPO) Examiner and the patent applicant) are also available for public inspection. I assume the prosecution history is available via the patent database available on the CIPO website.

Answer 2

Regarding "if the Canadian guy's patent is rejected, can I try", I assume you mean "can I try to patent it".

The answer is no, insofar as what you want to patent is contained in (or obvious in light of) his patent application. You can only get a patent for something that is new, not something that is already in public knowledge (e.g. published for all to see). His patent application is published for all to see (as you correctly pointed out), so whatever he described is no longer patentable, even if he eventually abandons his application.

Now, you say that his patent application is badly written, so it could be that he left out some important parts of the invention. If those things he left out are inventive (not something that would be obvious based on his application) and not known to the public, you may be able to protect those things with a patent.

As for your right to commercialise the application, it really depends where you want to do it and where he enters national phase with his international application. You need to transform your international application into a national one in all the countries you want a patent in. In almost all countries, the deadline is 30 or 31 months from the original filing date (it can go to 42 in Canada, but that is an exception and he already has an application there). So if it's been long enough, you'll be able to check whether he got a patent pending in the market you want to commercialize in. If he doesn't, you're clear in that market as far as that patent holder is concerned. (Be aware that there can be some delays before national phases are published.)