Protecting Business Innovation
- The Patent Advantage
PATENTABILITY / TYPE
OF PROTECTION /
/ THE PATENTING PROCESS / FOREIGN
Although patents can be a cornerstone of a business, they
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?
are four basic requirements for an "invention" to be
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.
chemical compound is an example of a "composition of matter".
terms “art” and
“process” refer to methods of producing functional
The appearance of a device (i.e. "its look") is not patentable
but may be protected as an industrial
programs might be patentable, and aspects may also be covered
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
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
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
inventor should first consult with a patent lawyer or agent before
disclosing an invention.
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.
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.
invention must be useful and should work as the inventor claims.
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
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.
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
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.
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
process (termed "patent prosecution") usually takes at
least one year in the U.S. and three years in Canada (cost:
typically several thousand dollars).
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".
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.
article is intended to provide general information regarding patents and
should not be considered as legal advice.
Any enquiries may be directed to