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I live in Canada and came up with a product idea for the archery industry and through my research I came across a United States Patent that is very similar to what I had made (prototype).I was also unable to find the patented product on the market anywhere and are still looking.

Question 1a. Can I apply for a patent in Canada for this similar product that has a patent in the United States if my version has a significant improvement ?

Question 1b. Can I apply for a patent in the United States for the improvement on the already patented product?

Question 3. Can I manufacture and sell my own version (or exact version) of the patented product in Canada if it is only protected in the United States?

Question 4. What could potentially happen (financially) if I were to sell my improved version in the United States without a patent on the improvement?

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1a - Patent improved version in Canada ? Yes if the improvement is novel (never done before anywhere) and has an inventive step = meaning the improvement is not considered obvious in light of everything that has ever been on in the field or an analogous field. "Significant" isn't really a patent law concept. It might be a small improvement with a small benefit but still be novel and inventive.

1b - Patent improved version in U.S.? Yes, approximately the same as above in relation to Canada. But, that doesn't mean you can make or sell it in the U.S. If your improved version still falls under the wording of the U.S. patent claim, it still infringes. This seems to be very hard for many people to understand. Your patent is not a right for you to make the invention, it is a right to try to stop others from making your invention.

  1. Make it in Canada? Yes, as long as there is not a counterpart patent in Canada or some other Canadian patent you have not yet found. If you make and sell and import only into places with no patent you are OK.

  2. (Edited due to correcting comment) You do not need a patent to sell something. IF your improved version infringes the US patent the patent owner can initiate a patent infringement proceeding either in court or with the ITC to stop you and your product whether or not you have a patent of your own. An improved version might infringe the patent of the original or it might not. Very simplified, if you add something to the original, it probably still infringes. If you subtract something or solve the same problem a different way then it probably doesn't infringe.

  • The answer to Q4 is not right IMO. Without your patent you cannot stop others from copying and selling your improved version because you do not have the patent for that version. The US company (or any other) may produce and sell your improved version too. What you state can happen, but you should not be precluded from selling your improved version if it not reads on the US patent of the company (i.e. they can sue you but that does not mean they will be able to prove that you infringe their patent). If the improvement is interesting for customers, you want to protect it for commercial reasons. – the Europeist Oct 5 at 8:15
  • @the Europeanist Thank you very much- I mis-read the question and have just edited the answer. – George White Oct 5 at 16:12
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• Yes, the product which is an improvement of already patented product can be patented. However, This is subject to the fact that the improved product patent application must satisfy the patentability criteria (i.e. it must be novel, industrially useful and non-obvious) to get it granted.

  • This answers part of the original question, but not all of it. More to the point, it doesn't mention freedom to operate which some people don't get. You can very well get a patent on an improvement, but not be able to sell it if you still infringe on the original patent. For instance if when the original pneumatic tire was invented, if someone then patents the radial tire before the first tire patent expires might need a license to sell radial tires (depending on claim, of course). – Eric Shain Oct 31 at 19:27

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