Patents

We regularly advise clients on how to approach and manage their investment in obtaining and protecting patents. Of all the areas of intellectual property (IP), patents requires the greatest amount of planning and management. This is so because the costs involved in obtaining and protecting a patent are often significantly greater than that required for other forms of IP such as copyrights or trade-marks.

The first step we take with all of our clients is to walk them through the patenting process. This often starts with an explanation of the nature of patents and patenting system in Canada. Although the Canadian and United States systems for patents are largely similar, they are not exactly the same; this results, unfortunately, in confusion as to the scope and extent of one’s rights. The confusion is further complicated by national nature of the patenting system (in short, there is no such thing as a “world patent”). In order to help our clients understand patents, we provide the following brief outline of the nature of patents and the patenting system in Canada.

A patent for an invention is a right granted to the inventor, by the government or other government authority, to exclude others from making, using, or selling the invention from the day the patent is granted to a maximum of 20 years after the day on which the patent application was filed.

In exchange for that right, the patent owner is expected to provide the complete description of the invention and its manner of use in sufficient detail that anyone trained in the field in which the patent is directed would be able to practice the invention after reading the description.

The rights conferred by a Canadian patent extend throughout Canada, but not to foreign countries. You must apply for patent rights in other countries separately. Conversely, foreign patents do not protect an invention in Canada.

A patent can be obtained for any new and unobvious invention. An invention is basically any process, product, machine, or composition of matter, or improvement thereof that is both new and useful.  

However, for an invention to be patentable it must meet the following conditions:

• the invention must be of a patentable subject matter (i.e. within the Patents Act)
• the invention must be novel
• the invention must be useful
• the invention must be non-obvious or inventive

The first requirement is requires that the invention be a process, product, machine, or composition of matter, or improvement thereof. As a patent is granted only for the physical embodiment of an idea, one cannot patent a scientific principle, an abstract theorem, an idea, a method of doing business, a computer program, or a medical treatment; these are not appropriate subject matter for a patent.

Novelty

For a invention to be patentable, it must be new. In order to be novel, the invention must not have been made known or available to the public and the invention must not have been built before or described in a single document that included sufficient information to allow someone to make the invention. However, there is a one year exception period. If the invention was made known publicly, a Canadian patent application may still be filed within the year following disclosure.

Utility

The invention must be “useful” for the purpose for which it was designed. Utility generally refers to a requirement that the invention has industrial or commercial value to the public as defined within the patent itself. A valid patent cannot be obtained for something that doesn’t work, or that has no useful function.
Non-Obviousness or Inventive Ingenuity

The subject matter of the patent must be non-obvious or “inventive”. A determination that the invention is non-obvious is made by deciding whether “a person skilled in the art,” possessed of all the relevant prior art but deficient of any ingenuity would have been led directly and without difficulty to the solution disclosed and claimed in the patent.

In Canada, patents are given to the first inventor to file an application. Accordingly, it is prudent to file a patent application for your invention as soon as possible after completing your invention, in case someone else is on a similar track.