INTELLECTUAL PROPERTY

What is a Patent?

In Canada, a patent is a statutory monopoly in an invention which is granted by the federal government to a patentee in exchange for disclosing the invention to the public. Until the patent expires, the patentee has the exclusive right in Canada to make, construct, use and sell the invention to others.

What is eligible for a Patent?

A patent may granted for inventions which involve applied science or engineering, namely “any new and useful art, process, machine, manufacture or composition of matter” or improvements to same. In Canada, as in many other countries, patents are not available for mere scientific principle or abstract theorems, for higher life forms per se, for methods of medical treatment, or inventions which have an illicit object in view.

To be eligible for a patent, an invention must satisfy three criteria:

1. Novelty: The invention must be new. This means that be it cannot be previously known to other third parties anywhere in the world and that the applicant cannot disclose the invention to the public prior to filing a patent application or the expiry of any available grace period. In Canada, there is a one year grace period within which to file a patent application after public disclosure. In many other countries, there is no such grace period available and patents are not available if there is any public disclosure of the invention prior to filing a patent application.
2. Usefulness: The invention must be useful. This means that the invention creates a vendible product or achieves some technical result, such as the transformation of matter from one form to another.
3. Inventiveness: The invention must be inventive or non-obvious. This means that the invention must exhibit some inventive “spark” or “leap” over what was previously known in the same field. To be patentable, an invention must be more than a routine improvement to a product or a process that could be arrived at without difficulty to solve an identified challenge.

Who is Entitled to a Patent?

“First to File” Principle
In some fields where research is ongoing and competitive, it is not unusual for the same invention to be independently developed by two or more parties in a relatively short period of time. In Canada, as in most other countries in the world, the first party to file a patent application for the invention is entitled to the patent. Consequently, the first party to invent may be barred from making, using and selling the invention if they are not the first party to file. For this reason, the timely filing of patent applications can be important.

Inventors, Employers and Educational Institutions
An inventor is an individual who makes a contribution to an invention as it is defined in the patent claims. All contributing inventors must be identified in the patent application for an invention as the failure to identify all of the inventors may be grounds for invalidation of the patent. In the absence of any agreement to the contrary, the general rule is that the inventor is considered the owner of the invention and related patents.

However, where the individual responsible for developing an invention does so in the course of their employment, the employer may be entitled to an assignment of title to the invention and related patents. When an inventor was a student or professor with a university or other educational institution during the relevant time, a review of that institution’s policies and employment agreements is necessary to determine ownership. Likewise, there are statutory rules governing the ownership of inventions made by public servants or employees of Crown corporations.

Where more than one individual is responsible for developing an invention and they do NOT do so in the course of employment for a single employer, the invention and related patent applications may be subject to complex rules for the joint ownership and exploitation of such property.

When does a Patent Expire?

For all patent applications filed in Canada after October 1, 1989, the issued patent will expire 20 years after the date of filing the application in Canada.

Can Patents be Sold or Licensed?

Yes, patents can be assigned or licensed wholly or partially by written agreement. Such agreements may be subject to a virtually unlimited variety of limitations as to territory, term and means of manufacture, use and sale.

Recording a patent assignment with the Canadian Patent Office is recommended because the Patent Act provides that an unregistered assignment is void against a subsequent assignee’s claim under a registered assignment.

What are the Steps to Obtain a Patent in Canada?

1. Patentability Search & Opinion

While not required, it is advisable to have patentability searches conducted before drafting and filing a patent application. Patent searching is typically conducted electronically since many patent offices maintain patent records in publicly accessible databases. Patent searches are intended to locate any issued patents and any pending patent applications filed for related inventions worldwide. Where appropriate, searches may also involve a review of scientific journals and other trade publications for relevant references. Clients are strongly encouraged to assist in this process by identifying any references already known to them, including pending patent applications as well as any relevant material appearing in scientific journals, trade publications and/or web sites.

A patentability search provides: (a) guidance as to whether the invention is likely to be entitled to a patent; (b) guidance as to the potential scope of the monopoly that may be granted; and (c) guidance as to how the patent application should be prepared to highlight the improvements embodied in the invention over what was previously known in the same field.

Upon receipt, the search results are reviewed and analyzed and, where requested, a written patentability opinion prepared. The cost of such a search and an opinion depends on the complexity of the invention and the number of the references located in the search.

2. Preparation and Filing the Application

A Canadian patent application will generally include the following parts:

• an abstract summary the technical problem and the gist of the solution of that problem by means of the invention and the principal use or uses of the invention;
• formal drawings of the preferred embodiment of the invention
• a specification fully describing the invention so that any person skilled in the field could reproduce it; and
• a series of claims specifying the scope of the monopoly sought by the applicant.

Patents are complex documents that often, by necessity, employ obscure language conventions in the manner in which they are drafted. Errors may not be easily corrected and can be fatal to the success of the application. It is therefore recommended that a patent agent be retained to file all patent applications.

Again, the cost of preparing a new patent application varies depending on the complexity of the invention and the amount of references that must be considered by the patent agent. Other costs generally include the professional preparation of formal drawings. Once a new application has been prepared, it may be used as the basis for filing corresponding applications in other countries, though minor amendments may be necessary to comply with the unique conventions of each country.

Again, the cost of preparing a new patent application varies depending on the complexity of the invention and the amount of references that must be considered by the patent agent. Other costs generally include the professional preparation of formal drawings. Once a new application has been prepared, it may be used as the basis for filing corresponding applications in other countries, though minor amendments may be necessary to comply with the unique conventions of each country.

3. Examination

In Canada, a new application is not examined until a request is filed. If no request for examination is filed on or before the 4th anniversary of the application filing date, the application will be considered abandoned.

After a request for examination is filed, a patent examiner will first review the application to determine whether it is in the proper format. The patent examiner will then conduct a search of other patents issued and patent applications pending in Canada and elsewhere as well as other technical literature for relevant references. Based on a review of the search results, the examiner will issue a report identifying any objections to form and content of the application, particularly focussing on the scope language of the claims.

The examination process typically takes anywhere from 1 to 5 years to complete after the request for examination is filed, depending on: (a) the complexity of the invention; (b) the number of references that must be considered; and (c) the workload of the available patent examiners in the relevant field. The cost of responding to the examiner’s objections, and amending the application as necessary, will depend on the number and nature of the objections raised by the examiner.

4. Maintenance Fees

Starting on the second anniversary of the application filing date and each year thereafter until the patent expires, fees must be paid to the patent office to maintain the patent application. If not paid in a timely manner, the patent will be considered abandoned. The official patent fees due will gradually increase over the life of the patent. We track the maintenance fees requirements for our clients in each country and, where possible, will remind our clients when a maintenance fee is due for payment.

5. Issuance

Once the patent application is found to be in compliance with all of the requirements of the Patent Act, a notice of allowance will issue. After the applicant has paid the statutory issuance fee, Letters Patent will be issued.

6. Filing in Other Countries

A Canadian patent only grants a monopoly to the patentee in Canada. To obtain similar monopolies in other countries, corresponding patent applications must be filed in each relevant country.

Most countries in the world adhere to an international treaty which regulates the orderly filing of patent applications in multiple countries. This treaty stipulates that if a patent application is filed in one or more additional countries within 12 months of the filing of the first application for the same invention, these additional patent applications will be effectively backdated to the filing date of the first application. In other words, the invention will not lose its status as “novel” for a period of 12 months on the ground that it has been disclosed to the public by virtue of filing the first patent application

We file patent applications in other countries through associate law firms located in those jurisdictions whom we know are qualified in this specialized area of the law. In countries where English is not an official language, we may also be required to obtain official translations of the patent application.

PCT Applications
The Patent Cooperation Treaty is a more structured administrative system available for filing patent applications in multiple countries. With very few exceptions, most countries participate in the PCT System. Although often referred to as an “international application”, a PCT application does not result in an “international patent”. Instead, the PCT System offers more streamlined administration, deferred costs and the opportunity for a preliminary assessment of patentability.

Under this treaty, a single patent application may be filed in one patent office designating all participating countries, essentially reserving the right to file patent applications in as few or as many of the reserved countries as desired. The applicant is not obliged to pursue patents in all or any of the designated countries. As PCT applications are accepted at the Canadian Patent Office, we can file the international application without the cost of retaining foreign agents and preparing translations at the initial stage.

The applicant has approximately 30 months from the priority date of the PCT application to make its final selection of the countries complete the national requirements for filing applications in those countries. It is only when filing so-called “national phase” applications in the selected countries that the cost of retaining foreign agents and preparing required translations must be incurred.

Under the PCT System, a preliminary patent search is automatically conducted. This search and written opinion is available to patent examiners in the designated countries where “national phase” patent applications are subsequently filed, but each examiner is entitled to conduct their own searches and come to their own conclusions as to patentability.

Where can I get more information?

You can get more information by visiting the web sites for:

Canadian Intellectual Property Office
www.cipo.ic.gc.ca

US Patent & Trademark Office www.uspto.gov

Or contact:
Valerie Edward Edward-IP
100-5063 North Service Road
Burlington, Ontario
L7L 5H6
Telephone: (905)-975-7768
Email: valerie@edward-ip.com