What is a patent?
A patent enables its owner to exclude others from making, selling or using
an invention.
Patent protection lasts for the term of the patent, provided maintenance
fees are paid as discussed below. In Canada, the United States and most
other countries, the term ends 20 years from the patent application filing
date. Back to Top
Territorial Scope
A separate patent must be obtained in each country of interest. A Canadian
patent protects an invention only in Canada. To protect the same invention
in the United States, a separate United States patent is required.
There is no such thing as a "world-wide patent". In some cases,
international treaties can simplify the foreign patenting process, as
discussed below. Back to Top
What can be patented and what cannot be patented?
Only "inventions" are patentable. An invention must be new, useful and
involve an inventive step compared to the closest prior art. A new and
unobvious product, process, apparatus or composition of matter will
generally be patentable; as will a new, unobvious improvement to an existing
product, process, apparatus or composition of matter.
Most types of subject matter are potentially patentable, although some areas
are excluded. Problematic areas include medical treatment procedures,
marketing or business plans, teaching methods, cosmetic procedures, hair
dressing, pedicure, flower arranging, painting pictures, playing musical
instruments, etc. However, materials and instruments used in these arts may
be patentable.
Special considerations may also apply in the case of some inventions such as
computer software, games, living matter, and others.
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Premature disclosure can destroy patent rights
In Canada, a patent application must be filed no later than one year after
the earliest public disclosure of the invention. Public disclosure includes
distributing samples of an article embodying the invention, selling or
exhibiting such articles for sale, publishing details of the invention in
advertising or other printed material of any sort, public use or testing of
the invention, etc. Disclosure to just one person can constitute "public"
disclosure in some circumstances.
The United States has a similar one year "grace period." Europe and many
other jurisdictions have no grace period whatever. Any public disclosure of
the invention, before filing a patent application, can result in loss of
patent protection in such countries.
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Non-Disclosure Agreement
To preserve potential patent rights, the invention should not be disclosed,
prior to the filing of a patent application, to anyone who has not signed a
properly drafted Non-Disclosure Agreement.
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Who can apply for a patent?
The right to apply for a patent belongs initially to the inventor(s),
although there are exceptions. If an inventor sells the rights to an
invention to another party, then that party may apply for the patent. If an
invention is made during the course of an inventor's employment the employer
may automatically acquire the right to apply for the patent, although not
always. If an inventor dies or is incapacitated, the right to apply may vest
in the inventor's executor, administrator or other representative.
In most countries, including the United States, the inventor's signature on
the patent application is usually required.
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First to file gets patent
If two or more parties apply to patent the same invention most Patent
Offices will award only one patent. In Canada and most other countries, that
patent will be awarded to whichever party files the first patent
application, regardless of who made the invention first. It is therefore
important not to delay filing a patent application.
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Patentability Searches
Time permitting, it is always wise to conduct a search before applying for a
patent. If the invention has been disclosed, anywhere in the world, in a
previous patent or publication then the invention may not be patentable.
Worldwide searches are impractical, so a limited search is usually made in
only one country. Normally, the search is conducted in the U.S. Patent
Office, since it has a large volume of well classified prior art.
Computer databases can also be searched quickly and relatively
inexpensively. Database searches are most useful in searching sophisticated
inventions which can be described by precise, well known terms of art. They
are much less useful in searching mechanical gadget type inventions.
No search will "guarantee" the patentability of any invention. The object is
to make a reasonable assessment of the prospects for obtaining worthwhile
patent protection. Search results are also useful in preparing a patent
application. Back to Top
Information required to conduct search
To conduct a search we need a description, drawings or photographs of the
invention, showing how it is made, operated and used. Also helpful are:
details of any known prior art; a summary of the prior art's shortcomings;
an explanation of how these are overcome by the invention; a list of any
other advantages of the invention; and, details of any possible variants or
modifications that could be made without departing from the general concept
of the invention. Back to Top
The patent application
and claims
A patent application must provide a complete description of the invention
(including drawings, where appropriate) sufficient to enable a skilled
person to construct a working embodiment of the best mode of the invention
known to the inventor. The patent application includes "claims" to define the scope of patent
protection requested.
Several claims are typically included to protect different features or
combinations of features of the invention.
Claims must be carefully worded. Broad claim language is preferable so that
competitors cannot avoid infringement by making minor changes to the
invention. But, if claims are worded too broadly, they may be invalid; for
example, if the claim wording covers not just the invention but also some
prior art. Back to Top
Examination by the Patent Office
Most patent offices employ technically trained examiners who scrutinize
patent applications for novelty, inventiveness and compliance with formal
requirements. Particular attention is given to the wording of the claims.
More often than not, examiners raise objections that are usually answered by
amendment of the application, argument, or both. Sometimes, examiners'
objections are fatal to the patent application, but in most countries
various appeal procedures are available.
If the examiner is ultimately satisfied with the merits of the application,
it is allowed and a patent grant fee must be paid. Grant of the patent
usually follows within a few 2-3 months after the payment of the grant fee.
In most countries, it takes two or more years after filing to "prosecute" an
application through to the grant of a patent. Back to Top
International considerations and
Patent Cooperation Treaty
Most countries belong to the "Paris Convention." This allows a patent
applicant to claim priority in respect of an earlier filed patent
application. Applications filed in such countries within one year of the
filing date of the original application are treated as though they were
filed on the original filing date.
As previously indicated, to obtain a valid patent in most countries it is
essential to file a patent application before the invention is publicly
disclosed. An important exception applies if priority can be claimed as
above. It is normally sufficient to file priority-claiming applications in
most countries within one year of the date on which the earliest application
was filed, provided that the earliest application is itself filed before any
public disclosure of the invention anywhere in the world.
A few countries, e.g. Afghanistan, Andorra, Ethiopia and Saudi Arabia, are
not members of the Paris Convention, and special consideration must be given
to filing applications in such countries to avoid loss of patent rights
there.
The
Patent Cooperation Treaty (PCT) provides a simplified procedure enabling
Canadian citizens or residents to obtain patents in many countries. A single
English language PCT application may be filed and assessed as to
patentability on a preliminary basis, before the applicant has to decide
whether to incur the additional cost of proceeding with individual patent
applications in the various foreign countries of interest. Back to Top
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