Patent Law Canada

CANADA PATENT PROTECTION

WHAT IS A PATENT

Through a patent, the government gives you, the inventor, the right to exclude others from making, using or selling your invention from the day the patent is granted to a maximum of 20 years after the day on which you filed your patent application. You can use your patent to make a profit by selling it, licensing it or using it as an asset to negotiate funding.

In exchange, you are expected to provide a full description of the invention so that all Canadians can benefit from this advance in technology and knowledge. The Patent Office will lay open your application 18 months from the earlier of, a) your filing date in Canada, or b) your filing date abroad under an international treaty; this date is known as the "convention priority date." (See Applying for a patent outside Canada.)

People may then read about, though not make, use or sell, your invention without your permission. Only after your patent has expired, or lapsed for non-payment of maintenance fee, may anyone freely make, use or sell your invention. The idea is to promote the sharing of technological information while giving you a monopoly on your creation.

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.

People occasionally confuse patents with trade-marks, copyrights, industrial designs and integrated circuit topographies. Like patents, these are rights granted for intellectual creativity and are forms of intellectual property. However:
  1. patents cover new inventions (process, machine, manufacture, composition of matter), or any new and useful improvement of an existing invention;
  2. a trade-mark is a word, symbol or design (or combination of these features), used to distinguish the wares or services of one person or organization from those of others in the marketplace;
  3. copyrights provide protection for literary, artistic, dramatic or musical works (including computer programs), and three other subject-matter known as: performance, sound recording and communication signal;
  4. industrial designs are the visual features of shape, configuration, pattern or ornament (or any combination of these features), applied to a finished article of manufacture
  5. integrated circuit topographies refer to the three-dimensional configuration of the electronic circuits embodied in integrated circuit products or layout designs.
There are three basic criteria for patentability.
  1. First, the invention must be new (first in the world). Second, it must be useful (functional and operative). Finally, it must show inventive ingenuity and not be obvious to someone skilled in that area.
  2. The invention can be a product (a door lock), a composition (a chemical composition used in lubricants for door locks), an apparatus (a machine for making door locks) or a process (a method for making door locks), or an improvement on any of these. Ninety percent of patents are, in fact, for improvements to existing patented inventions.
  3. A patent is granted only for the physical embodiment of an idea—e.g., the description of a plausible door lock—or for a process that produces something saleable or tangible. You cannot patent a scientific principle, an abstract theorem, an idea, a method of doing business, a computer program, or a medical treatment.
NOVELTY, UTILITY, INGENUITY

Novelty To be granted a patent you must be the original inventor of your door lock (or the assignee of the inventor). And it must be the first such door lock in the world.

What's more, you cannot obtain a valid patent in Canada if your invention was made public before you filed the application. There is, however, a one-year exception. If you, or someone who learned of the invention from you, discloses it publicly, you can still file in Canada within the year following that disclosure. (This applies to Canadian patents, but not necessarily to foreign ones.)

Utility A valid patent cannot be obtained for something that doesn't work, or that has no useful function. If your door lock does not work, it will fail the utility test.

Ingenuity To be patentable, your invention must be a development or an improvement that would not have been obvious beforehand to workers of average skill in the technology involved. You can't offer an electric door lock that's merely a bit faster or stronger than others and that any door lock designer could easily come up with. Your door lock must elicit a "why-didn't-I-think-of-that" reaction from other designers in the field.

You may obtain a patent for an improvement to an existing patented invention, but keep in mind that the original patent may still be in force. Hence, manufacturing or marketing the product with your improvement would probably be an infringement. This situation is often resolved by agreement between the patentees to grant licences to each other.

REGISTERED PATENT AGENTS

Registered patent agents must pass rigorous examinations in patent law and practice before they may represent inventors before the Patent Office. Patent agents' fees are not regulated by the Patent Office. You and your agent should agree on fees before work on your application begins.

Once you've appointed a patent agent, the Patent Office will correspond with no one else about the prosecution of your application. You may, however, change patent agents at any time.

The Patent Office provides a list of registered agents.

WHEN TO APPLY FOR A PATENT

In Canada patents are given to the first inventor to file an application. Therefore, it's wise to file as soon as possible after completing your invention, in case someone else is on a similar track. Even if you can prove that you were the first to conceive of the invention, you lose the race if a competing inventor files before you do.

On the other hand, filing too soon, while you're still developing your invention, may mean omitting essential features from the application. You may then have to reapply, adding to your expenses and risking possible patent disputes.

It's imperative, also, not to advertise, display or publish information on your invention too soon. Public disclosure of your invention before filing will make it impossible to obtain a valid patent. There is an exception in Canada if the disclosure was made by the inventor, or someone who learned of the invention from the inventor, less than one year before filing. Most other countries require filing before use or written disclosure anywhere.

Steps Towards Patent Protection

The preliminary search
The first step your agent will likely recommend is a preliminary search of existing patents. This will determine if your door lock, or a similar one, has ever been patented before. If so, there's no point in proceeding further, and knowing this beforehand can save you much time and money. Obtaining the information, however, is not as simple as it may sound. You must compare your invention to others and weigh similarities and differences. That's where you are wise to rely on the expertise of your patent agent.

Preliminary searches are not always successful. That is, sometimes the patent examiner finds prior patents or literature that did not turn up in the preliminary search. So don't count on obtaining the patent until it's actually in hand.

Canadian Patent Database online
You can now do a preliminary search of patent bibliographical information and have access to descriptions and image documents on issued patents in Canada since 1920. Applications published in Canada are also available since October 1989. Searches can be conducted using key words in the title, the name of the inventor, owner or applicant, the international or Canadian Patent Classification, the PCT information, the abstract or claims text. It is also possible to search specific documents like PCT documents, non-PCT documents or licence availability.

Canadian Patent Database
The Patent Office in Place du Portage I, Gatineau, Quebec, holds over 1.5 million Canadian patents. Patent documents filed prior to October 1, 1989, are classified according to the Canadian Patent Classification system. Patent documents filed on or after October 1, 1989, are classified and searchable according to the International Patent Classification (IPC) system. These documents can be consulted on the World Intellectual Property Organization (WIPO) Web site at: WIPO Web site.

The Patent Search Room, in the Client Service Centre, is open from 8:30 a.m. to 4:30 p.m., Eastern Time, Monday through Friday, except on legal holidays.

1.PREPARING A PATENT APPLICATION

A patent application consists of an abstract, a specification and often drawings.

The abstract is a brief summary of the contents of the specification. The specification comprises:
  1. a clear and complete description of the invention and its usefulness;
  2. claims which define the boundaries of patent protection.
Your specification must be so clear and complete that it will enable anyone with average skill in the technology to make or use the invention.

Information you specify as protected by your claims cannot be used freely (copied, manufactured or sold) by others until the patent expires. Information not protected by your claims can be used immediately by anyone.

The challenge is to draft the claims so that your invention is defined broadly enough to provide maximum protection against potential infringers, while at the same time being sufficiently specific to identify your invention and distinguish it from all prior inventions.

Appendix A shows an example of a patent application.

Carefully prepare a statement covering the following points:
  1. Subject-matter of the invention.
  2. A broad description of the invention.
  3. Objectives of the invention—its main practical advantages over existing practices or products.
  4. The "preferred practice", that is, the most appropriate use of your invention, giving details of at least one practical application. (For example, if you invented a new knitting machine, you should specify what items, such as stockings, sweaters, bags, etc., the machine makes best. You should also mention normal variations to be expected, e.g., how many stockings in a batch of 10,000 knitted by your machine will be defective.)
  5. Features of the invention that are new and distinguish it from what has come before. State these features regardless of whether they may be patented.
  6. The scope of the invention—the materials, compositions, conditions, etc., used to obtain good results.
  7. Limitations. Can one obtain satisfactory results throughout the given range of the invention, or are there exceptions?
  8. Results of laboratory or commercial tests illustrating both preferred practice and the conditions under which one could expect unfavourable or hazardous results.
  9. Lists of relevant patents or technical articles you've already found in any literature search, including full details such as name of inventor, number of patent, country and date of issue, or name of periodical and date. Indicate the similarities and differences of practices or products relevant to your invention.
  10. An indication of any disclosure you have made.
  11. Your name, address and citizenship.
  12. All countries in which you would like to file for a patent
2. Filing your application

Filing a patent application means preparing a formal application and asking the Commissioner of Patents to grant you a patent.

To receive an official filing date in Canada, you must submit no less than the following:

Statement that a patent is sought;
Document describing an invention;
Name of the applicant;
Address of the applicant or the applicant's patent agent;
Prescribed filing fee.
If you do not supply a proper description of the invention, the Patent Office will not give you a filing date and will return the papers you have submitted and refund the filing fee.

Bear in mind that a complete patent application further includes the following:

formal petition;
abstract of the invention;
claim or claims to the invention;
any drawings mentioned in the description;
paper and computer-readable copies of nucleotide sequence listings, if applicable;
appointment of a patent agent or representative when required.
It is in your best interest to file as full a description of your invention and as complete an application as possible right at the outset. Any of items 1 to 6 not supplied at the time of filing may be submitted, without charge, within 15 months after the priority date (See Applying for a patent outside Canada), or the filing date if there is no priority date. However, if your application is still incomplete after 15 months, you will be notified by the Office, and you will then have to pay a completion fee and complete the application within a prescribed time which will be indicated in the notice.

Don't submit models or specimens of the invention unless the Commissioner requests them.

Once accepted for filing, your application is assigned a number and filing date, and you will be informed of these. This is no guarantee of a patent. It simply means your application is pending. The application will be laid open to public inspection 18 months after the filing date or priority date. You may request to have your application laid open earlier, if you wish.

3. Requesting examination

Your application will not automatically be examined simply because you've filed it. You must formally request examination and attach the examination request fee. This request must be made within five years of the Canadian filing date, otherwise your application will be considered as abandoned. If this happens, you may request reinstatement through a letter to the Commissioner of Patents and the payment of the prescribed fee.

Why would you file an application and not automatically request examination? Perhaps you need time to assess the feasibility or marketability of your invention. Filing gives you some protection for your invention without having to fully commit yourself to the patent procedures. Your competitors will likely be wary of infringing on your invention after your application is published because you could seek retroactive compensation in the event that you are granted a patent.

However, if you do not request examination within the five-year period, anyone will be able to freely make, use or sell the products or processes described in your application.

Once you've requested examination, you'll probably be eager to see results quickly. Remember that the Patent Office receives some 30,000 requests for examination a year, and that patent examiners consider cases in the order in which they are received. The examination process may take two to three years.

Filing prior art and protests Patent applications are made public 18 months after their Canadian filing date, or an earlier foreign filing date, if applicable. Anyone else may raise questions about the patentability of your invention or one of its claims by filing what is known as "prior art"—information that might cause the patent examiner to object to one or more of your claims. The prior art can be patents, patent applications which have been open to public inspection, and published material that has a bearing on the case. An explanation of how the information is pertinent is also required.

Anyone may also file a protest against the granting of a patent. Such protests will be made public.

Special order examination
Perhaps you have special reasons for wanting an early examination of your application. You expect imminent competition or you hope to establish a business once you've received protection for the invention. If your case is exceptional in this way, you may ask for advanced examination by means of a "Special Order" request. A "Special Order" request no longer requires an affidavit. Anyone may ask for advanced examination by means of a "Special Order" request accompanied by a fee and an indication of the reasons for the request.

Note, however, that a "Special Order" request will not be considered unless the application has been laid open to public inspection and a request for examination has been made.

4. The prosecution

The examiner's task

The patent examiner will assess your application to determine whether it's in the proper format. The next step is a study of the claims and a search among prior patents and other technical literature to find what is most closely related to the features covered in your claims. The examiner will object to what is old, obvious or improper in your claims through a report to you or your agent.

Patent Office letter of objection
The examiner's search often results in the objection to some claims. This is the result of patent agents drafting broad claims in an attempt to obtain the fullest possible protection. The examiner may discover previous patents or publications which show every feature of one or more claims in your application. Or the examiner may judge some claims to be obvious to a person having ordinary skill in the field. The examiner's objection will be in a report or letter called a "Patent Office Action." The Action may object to your whole application or only some claims, or it may request other changes in your application.

Responding to examiner's objections
If the examiner objects to some of your claims, don't despair. You may respond to the objections as long as you do so within the period specified in the Patent Office Action. Your patent agent must send the response, called the "amendment letter," to the Commissioner of Patents.

The response may ask the Commissioner to amend your application by changing or cancelling some claims, or adding new claims. You must meet or overcome each objection raised by the examiner.

Helping your agent with amendments
Your agent will carefully study the Patent Office Action to help you decide whether to abandon your application now, thus avoiding further expense. If you decide to continue, you may be able to help prepare the amendment letter. You are in the best position to know the practical details of your invention, and can point out its novel features and advantages, as compared with others cited in the Patent Office Action. If you want to make changes to your invention, inform your agent promptly. He or she may recommend filing a new application, in accordance with Patent Office rules, to obtain the full protection you need.

Reconsideration by the examiner
On receiving your response, the examiner will study it and prepare a second Office Action. This may be a "notice of allowance" telling you that you will be granted a patent. Or it may be a call for further amendments. This exchange of Office Actions and responses may be repeated until the examiner allows your application or states that the Action is final.

Appealing
If the examiner makes a final objection to your application, you still have the right to appeal to the Commissioner of Patents by requesting that the Commissioner review the examiner's objection. The review is conducted by the Patent Appeal Board, a special committee of senior Patent Office officials. If you wish, you can appear before this board. If the Commissioner objects to your appeal and refuses to grant a patent, you may take your case to the Federal Court of Canada, and from there to the Supreme Court of Canada.

Re-examination of a granted patent
Great!You've been granted a patent. But you still may have hurdles to overcome. After issue, the Commissioner of Patents or a third party may ask that one or more claims of your patent be re-examined. This can happen at any time during the term of your patent. The request must be based on "prior art" documents, i.e., written descriptions of the invention that are available to the public. The Commissioner of Patents may appoint a re-examination board which will issue a certificate cancelling, confirming or amending your patent claims as appropriate. You may appeal decisions that cancel or amend claims to the Federal Court of Canada. You cannot, however, appeal the Commissioner's refusal to set up a re-examination board.

Reissue and disclaimer
If you own a patent that inadvertently contains omissions or mistakes, you may apply to have it reissued within four years of its issue to broaden or amend its claims, or you may apply for a disclaimer any time after issue to narrow the scope of some or all of the claims of your patent.

NON-RESIDENT APPLICANTS

An applicant for a patent who does not appear to reside or carry on business at a specified address in Canada shall, on the filing date of the application, appoint as a representative a person or firm residing or carrying on business at a specified address in Canada.

APPLYING FOR A PATENT OUTSIDE CANADA

Obtaining a Canadian patent does not protect your invention in another country. If you wish such protection, you will have to apply for foreign patents.

Suppose, for example, you've invented a mountain-climbing snowmobile and hope to corner the market in countries where the machine may be in demand. You'll probably want a patent not only in Canada, but also in the United States, Austria, Germany, and so on, wherever a mountain-climbing snowmobile could be used. You might also want a patent in Japan, where many snowmobiles are manufactured. Otherwise, someone in one of those countries might copy your invention and market it in competition with you.

You may apply for a foreign patent either within Canada, via the Patent Office under the Patent Cooperation Treaty (PCT), or directly to the patent office of the foreign country concerned. But no matter how you apply, you will have to abide by the patent laws of that country. Bear in mind that these laws may differ from Canadian laws.

In some countries, for example, you lose the right to a patent if your invention is disclosed before the filing date. (Remember, in Canada and in the United States there is an exception. This is not the case in most other countries.)

Many countries require that your patented invention be manufactured or otherwise worked in that country within a certain period, usually three years. In some places you may have to allow some other company or individual to manufacture your invention. (This is called granting a compulsory licence.)

CONVENTION PRIORITY

Many countries, like Canada, belong to the Paris Convention for the Protection of Industrial Property, a treaty that allows you to invoke what is called "convention priority." This means that your filing date in one member country will be recognized by all the others provided you file in those countries within a year of first filing. For example, if you filed in Canada on January 1, 2000, you could file up to one year later in most countries (January 1, 2001) and still be accorded the same rights as if you had filed there in 2000.

Under the Paris Convention, you can file an application abroad, and then in Canada. The Patent Office will recognize the earlier filing date as your convention date if you claim "convention priority" within four months of the Canadian filing date. The Canadian filing date must be within 12 months of the convention date. However, your application will be published 18 months after your convention date, not your filing date in Canada.

Note that being granted a patent in one country may bar you from obtaining one in another if you delay too long in filing for the second patent. That is, if your invention is patented and therefore public in Sweden, it will not be considered "new" in Canada, and vice versa. You must file your various applications all within one year in order to receive the benefits of "convention priority" in the other countries.

Under the current Act it is now possible to claim priority based on an earlier filed Canadian application.

THE PATENT COOPERATION TREATY

Application for a foreign patent within Canada is made possible through a treaty called the Patent Cooperation Treaty (PCT), administered by the World Intellectual Property Organization (WIPO), in Geneva. It provides a standardized international filing procedure, which is shared by our principal trading partners, including the United States, Japan, and most of the European Community.

Under the PCT, you may file for a patent in as many as 115 member countries through a single application filed in Canada. This procedure is simpler than filing separate applications and enables you to defer costs. For example, instead of filing in the language of each country and paying, within a year of first filing, all translation, filing and agent's fees, you can file in one language and have up to 20 or 30 months to pay some of these fees. This gives you more time to raise capital, conduct market studies, etc.

When you file under the PCT, you will get a "prior art" search, which checks your application against other applications and patents, and a preliminary examination with an opinion on the patentability of your invention. This is no guarantee of a patent. Local patent offices in the countries to which you apply reserve the right to conduct their own examinations, but they often accept the preliminary examination report. This means you will receive a fairly reliable indication of whether it's worthwhile to seek multiple patents in foreign countries before fees are due.

Your application for foreign patents filed under the PCT through the Patent Office must be in English or French. You may also be required to provide for translation into the languages of the designated countries if you choose to continue in those countries. Eighteen months after filing, your application will be made available to the public.

Only nationals and residents of Canada can file under the PCT in Canada.

Your application made in Canada under the PCT automatically qualifies for a normal national filing for a Canadian patent if you have designated Canada.

PATENT INFRINGEMENT

Patent infringement would occur if someone made, used or sold your patented door lock without your permission in a country that has granted you a patent, during the term of the patent.

If you believe your patent is infringed, you may sue for damages in the appropriate court. The defendant may argue that infringement did not occur, or may attack the validity of your patent. The court will determine who is right, basing its decision largely on the language of the claims. If what the defendant is doing is not within the wording of any of the claims of your patent, or if the patent is declared to be invalid for any reason, there is no infringement.

FEES

There are three kinds of fees you must pay to obtain a patent: filing fees, examination fees and grant of patent fees. Yearly maintenance fees are required to maintain an application or a patent in force.

Maintenance fees encourage applicants and patent holders to re-evaluate the economic value of their applications and patents on a yearly basis. Owners of valuable patents who are benefitting from the patent system must pay these fees or their patent rights will expire before the maximum 20 years. On the other hand, owners of inactive patents may choose not to pay maintenance fees, thus letting the patents lapse and enabling others to use freely, at an earlier date, the technology described in those patents.

For applications filed after October 1, 1989, and for patents issued on these applications, maintenance fees are payable starting on or before the second anniversary of the application filing date; but for patents issued after October 1, 1989, as a result of applications filed before October 1, 1989, maintenance fees are payable starting on or before the second anniversary of the patent issue date.

In all cases, maintenance fees must now be paid on or before the starting date of the period covered, rather than before the expiry date of the period as was the practice prior to October 1, 1996. Failure to do so, will result in the abandonment of an application. However, reinstatement of the application is possible. For a patent, on the other hand, maintenance fees may be paid late within a one-year grace period, subject to a late payment charge, but failing this the patent will lapse with no possibility of revival.

You'll find more details about fees at the Tariff of Fees page.

Payments may be made by credit card (VISA, MasterCard or American Express), direct payment, deposit account, postal money order or cheque payable in Canadian dollars to the Receiver General for Canada. Do not add federal and provincial taxes.

PATENT OFFICE

Business with the Patent Office is normally done in writing. Address all correspondence to:

Patent Office
Canadian Intellectual Property Office
Industry Canada
Place du Portage I
50 Victoria Street
Gatineau, Quebec K1A 0C9

General enquiries: (819) 997-1936