Protecting Business Innovation 
- The Patent Advantage


Although patents can be a cornerstone of a business, they remain a mystery to some in the business community.  To shed some light on
the issue, some typical questions asked of patent lawyers are

·       Is this patentable?

·       What kind of protection do I get, and for how long?

·       What are the steps to obtaining a patent?

·       Can I get a world-wide patent?

·       How much does it cost, roughly?


There are four basic requirements for an "invention" to be patentable.

(  (1)            Proper subject matter

Most functional items are proper subject matter for a patent.  The Patent Act requires that an “invention” be “any new and useful art, process, machine, manufacture or composition of matter”, or any new and useful improvement to these items.  The Act excludes abstract items like scientific principles.

A chemical compound is an example of a "composition of matter".

The terms  “art” and “process” refer to methods of producing functional results.

The appearance of a device (i.e. "its look") is not patentable but may be protected as an industrial    design.

Computer programs might be patentable, and aspects may also be covered by copyright.


(2)       Novelty

An invention must be "new" in two ways.  First, for most countries except the U.S.A., an inventor must file a patent application before the invention is publicly disclosed anywhere in the world by the inventor or anyone else.  Canada has a one year grace period, meaning that an inventor has up to one year to file a patent application after the inventor discloses the invention.


Secondly, for most countries except the U.S.A., an inventor must be the first to file an application for the invention before another inventor does, regardless who was the first to invent it (the proverbial "race to the Patent Office").  Unfortunately, the one year grace period in Canada does not protect an inventor if another inventor is the first to file an application for the same invention.


An invention should therefore be kept secret prior to filing a patent application.   Since this is not always possible, any disclosures must be made in strict confidence and preferably under a confidentiality agreement.


An inventor should first consult with a patent lawyer or agent before disclosing an invention.

(3)              Inventiveness


An invention must have at least a  “scintilla” of inventive ingenuity,  meaning that the invention should not be “obvious” to a skilled technician with access to relevant prior art (i.e. prior publications, devices, common general knowledge, etc.).   A small difference between the invention and the prior art may be sufficient to obtain a patent.

A preliminary patentability search  is recommended prior to preparing a patent application to obtain an initial indication of the likelihood of obtaining a patent.   A favourable search does not guarantee that an item is patentable, but the search can save significant future expense if it reveals something substantially identical to the invention.

(4)     Utility

 The invention must be useful and should work as the inventor claims.


A patent gives its owner the exclusive right to make, use and sell the invention claimed in the patent for a term of 20 years.  The term starts on the day the patent application is filed, although rights  are  not  enforceable until  after the  application is (hopefully) allowed (i.e. after it "issues to patent").  A patent owner can sue an infringer for various damages and can seek an injunction to terminate the infringing activity.

There is no requirement in Canada to mark inventions.  However, to ward off potential infringers, an invention should be marked "patent pending" during the patent application stage and with "Patented (insert year of issue)" after a patent issues.


The preparation of a patent application (cost: several thousand dollars) by a qualified patent lawyer or patent agent is the usual first step.  An application is an involved document which includes a comprehensive description and drawings of the invention, and a "claims" section which defines the scope of exclusive rights which the inventor seeks.

In Canada, after requesting the Patent Office to examine the application, a series of reports and replies are then exchanged between the Patent Office and the applicant.  Eventually all or part of the application may be allowed, though this is by no means a certainty.

This process (termed "patent prosecution") usually takes at least one year in the U.S. and three years in Canada (cost:  typically several thousand dollars).



There is no such thing as obtaining a world-wide patent.  Patents must be obtained on a country-by-country basis, although there are ways  of  initially lumping together numerous  foreign  patent applications under multinational agreements, such as the "Patent Cooperation Treaty".

Once a first patent application is filed, for example in Canada, applications in foreign countries ordinarily must be filed within 12 months of filing the Canadian application. If this procedure is followed, the foreign applications will be deemed to have the same filing date as the Canadian application.  This gives an inventor time to decide which foreign patents are worth pursuing.

This article is intended to provide general information regarding patents and should not be considered as legal advice.   Any enquiries may be directed to Tom Malyszko.


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PATENTS CANADA is a Trade-Mark of Thomas E. Malyszko

* In association with Field LLP, Alberta, Canada 
Last updated:August, 2010