The Patent Act establishes that patent protection is available for an 'invention'. What does the word 'invention' mean? The precise definition is that an invention means 'any new and useful art, process, machine, manufacture or composition of matter or any new and useful improvement in any art, process, machine, manufacture or composition of matter'.

The word 'art' does not refer to paintings or sculptures but rather to learning or knowledge and is used interchangeably with the words 'process' or 'method'. These words refer to a connected series of steps or operations for accomplishing a physical result. The other words are pretty much self explanatory. Machines include automobiles, televisions, telephones, VCR"'s and printers. Examples of a manufacture would be a hammer, book or knife. Compositions of matter include gasoline, glue, paper, soap and plastics.

What subject matter is NOT patentable?

Patents are not granted for scientific principles or abstract theorems. Thus no one can claim to have invented gravity. This is more of a discovery where the veil is lifted by a scientist on a truth, rather than an invention where a positive act is involved.

Methods of medical or surgical treatment do not qualify as processes and thus are not patentable. Computer software is not patentable because in its' pure form it is an algorithms.

A "'combination' of elements is patentable; an aggregation of elements is not. The test is whether the parts co-operate to produce a novel result. A typical aggregation is a pencil where the lead and the wood do not interact.

What are the requirements for patentability?

The three requirements for patentability are that the invention must be new or novel, non-obvious, and useful. That is it must have industrial application.

The first two of these requirements establish what we call an absolute novelty system. That basically means that if your invention was known publicly prior to your filing date then you can not obtain a patent for your invention. Examples of situations where your invention might be known publicly would include another inventor having an issued patent, or laid-open patent application describing your invention. Or perhaps there is a publication describing your invention. Or you tell someone about your invention such that it becomes public knowledge.

Who can assist me with my patent application?

In Canada, there are two main groups practising in the patent field - patent agents, and lawyers specializing in patents.

Patent agents are usually engineers and/or lawyers who have completed a set of examinations conducted by Industry Canada.

Lawyers specializing in patents who are not patent agents do not file patent applications but advise on legal matters such as licencing, rendering legal opinions and taking legal proceedings before the courts.

Industry Canada and the Patent and Trademark Institute of Canada maintain a list of all firms and individuals who are registered to practice as patent agents. In addition many of these firms advertise under the 'Patent Agents - Registered"' section of the Yellow Pages.

Where should I file for patent protection?

Patents are national in scope. This means that you must usually file a separate application for each country in which you wish to seek protection.

Two main exceptions to the 'one application per country' rule exist. It is possible to file a single application for Europe under the European Patent Convention (EPC), and it is also possible to file a single application under the Patent Co-operation Treaty (PCT) of which Canada is a member.

Normally, Canadian clients file their first patent application in Canada or the U.S.A. and consider filing additional applications within the convention priority period described below. If you do consider filing your own patent application in Canada without the assistance of a patent agent, you should contact one within the convention priority period to review your options to protect your invention in additional countries.

Corresponding applications can be filed in other countries and this decision is made upon a number of factors including where potential markets or competitors are located, and the costs involved. Our firm files patent applications world-wide for our Canadian clients through our network of associates.

What is convention priority?

Canada is a signatory to a number of international agreements which state that a national of one country, individual or company, who has filed an application in his home country may then file a corresponding application in Canada and claim their original foreign filing date as their Canadian filing date. In return, Canadians receive the same benefits.

This means that for patents you can file your Canadian application today and will be granted one year in which to file a corresponding application in a foreign country and use today's date as the date of your foreign application.

How much will my application cost?

For patent matters, the Canadian Government fees are as follows: Filing fee $400.00; Examination fee $800.00; Final fee $300.00; and Maintenance fees $4550.00.

Those applicants who qualify for small entity status are entitled to pay reduced fees of 50% of the above fees. A “small entity” in respect of an invention means an entity that employs 50 or fewer employees or that is a university, but does not include an entity that (a) has transferred or licensed, or is under a contractual or other legal obligation to transfer or license, any right in the invention to an entity, other than a university, that employs more than 50 employees, or (b) has transferred or licensed, or is under a contractual or other legal obligation to transfer or license, any right in the invention to an entity that employs 50 or fewer employees or that is a university, and has knowledge of any subsequent transfer or license of, or of any subsisting contractual or other legal obligation to transfer or license, any right in the invention, to an entity, other than a university, that employs more than 50 employees.

The professional fees charged by patent agent firms vary depending upon the complexity of the invention. You should discuss the question of fees with your patent agent.

Who may file a patent application?

The inventor, or someone who has obtained rights to the invention from the inventor (the assignee), may file a patent application.

Canada has a first-to-file system which means that the first inventor to file for the same invention is entitled to obtain patent protection.

Are there any time limits for filing in Canada?

In Canada, you must file within one year of any public disclosure by you of your invention.

What do I put in my patent application?

The format for your patent application is set out in the Patent Act and Patent Rules. Essentially, your patent application needs to have:

a petition, which is a request for the granting of a patent. The petition identifies the name and address of the applicant, the name and address of the inventor and whether the applicant qualifies for small entity status.

an abstract, which summarising the subject matter contained in your application. It allows for a clear understanding of the technical problem, the gist of the solution of that problem through the invention and the principle use or uses of that invention. This is used as a scanning tool by searchers and Patent Office Examiners.

the specification, which includes:

the title of the invention, which should be short and precise,

the field of the invention, which is the technical field to which the invention relates,

a background of the invention, which describes the background art or information related to your invention that is useful to have as a basis for searching and examining the invention.

brief description of the drawings, which, as the phrase implies, briefly describes the figures in the drawings, if there are any,

and a detailed description which sets forth at least one mode or one manner contemplated by you for carrying out the invention,

a set of claims that define the monopoly that you intend to seek. Claims are formally worded sentence fragments that set out the scope of the invention.

and drawings, if appropriate.

As of October 1, 1996, it is possible to file an abbreviated version of an application, without claims, which is called a 'provisional' application. This application is temporary in nature and is intended to help inventors establish an early filing date while they consider the market possibilities for their invention.

The 'provisional' application must be replaced by a properly completed application within 15 months after it is filed. It should be noted that your convention priority runs from the filing date so any foreign application claiming this date must still be filed within 12 months.

It should also be noted that the 'provisional application must be detailed enough to support the claims which are later filed as part of your complete application.

What happens after my patent application is filed?

Once your application is filed together with a filing fee the Government will acknowledge receipt of your application by sending you a filing certificate. This is merely an acknowledgement of receipt of your application and will tell you your application number. You need to include that number on all your correspondence with the office.

Eighteen months after your filing date, your patent application will be laid open to the public for viewing in the Patent Office search room and on computer databases.

When will my application be examined?

Your patent application is not automatically examined. You must request examination within five years of your filing date. At that time the Examiner will review your application to see if it is proper format.

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 reject what is old, obvious or improper in your claims. He does this in what is called an 'Official Action'.

You then reply to the Official action perhaps by amending your application, modifying your claims etc..

If successful, you obtain a patent.

What is the term of protection for patents?

The term of protection for patents is twenty years from the filing date.

What rights will I have once my patent issues?

The patentee has the exclusive right, privilege and liberty of making, constructing, and using the invention and selling to others to be used.

A patentee to an improvement in any art, process, machine, manufacture or composition of matter does not thereby have rights to the original invention over which the improvement was made. You would usually need to seek a licence from the original patentee who may in turn like your improvement such that you both will cross-licence.

What are maintenance fees?

Maintenance Fees are fees paid to the government to keep your application alive.

For patents, a maintenance fee must be paid annually beginning two years from your filing date. Thus maintenance fees are payable for applications as well as issued patents.

Maintenance fees were introduced primarily to force inventors to decide annually whether they are really interested in their application. This removes unwanted applications and reduces the burden on the Patent Office.

What should I mark on my product to indicate that I have applied for a patent?

While your patent application is pending, you can put the phrase PATENT PENDING on your product. This phrase has no legal significance but may serve to warn those who might consider copying your product that you are serious about protecting your idea.

Once your patent is granted, you should mark your product with the Canadian Patent Number, 2,xxx,xxx.