Patents are the most well-known way to protect intellectual property, but they are also the most expensive and most difficult to acquire. In Canada, patent law is governed by the Patent Act. This article outlines the basics of patenting an invention, including:

  • Who can apply for a patent
  • What can be patented
  • When you should apply for a patent
  • How to apply for a patent
  • Where patent protection applies

A patent is the means by which an inventor claims ownership of an invention. Inventions that can be patented cover a broad spectrum, ranging from a machine to a drug composition.

To obtain a patent the inventor must apply for the patent or assign their rights to another party who then applies.

If the patent is granted, the inventor has the exclusive right to that invention for a twenty-year term.

This means that others are excluded from using the invention. If someone else wants to use the invention, they must obtain the patent holder’s permission.

Who can apply for a patent?

The owner of the invention can apply for a patent, or they can assign someone else to apply on their behalf.

There are some instances where the inventor might not be the owner of the invention. For example, if an employee makes an invention as part of their job, the invention may be owned by the employer. Pay careful attention to the employment agreement, as it usually sets out specifically whether the employee or employer owns any inventions and the process involved.

Who can apply for a patent for an invention?

The owner of the invention can apply for a patent, or they can assign someone else to apply on their behalf.

There are some instances where the inventor might not be the owner of the invention. Where an employee makes an invention as part of their job, the invention may be owned by the employer. Pay careful attention to the employment agreement, as it usually sets out specifically whether the employee or employer owns any inventions and the process involved.

What can be patented?

In Canada, patent law is governed by the Patent Act. The Patent Act defines an invention as “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.”

This definition covers a broad spectrum; there are, however, specific criteria for patentable inventions:

  • Novelty: The invention must not have been publicly disclosed in writing or in any other form anywhere in the world prior to filing of the application. Descriptions or related inventions that already existed are referred to as “prior art.”
  • Utility: The invention must be useful for the purpose for which it was designed.
  • Non-obviousness: The invention cannot be obvious to someone who has the relevant technical experience and knowledge, in other words, a person of ordinary skill in the art.

Examples of patentable items in Canada

  • New medications
  • Improved methods for making a chemical compound
  • Software as part of a machine

Examples of items that cannot be patented in Canada

  • Ideas
  • Higher life forms

When should a patent application be made?

In some jurisdictions, such as Canada and the United States, an inventor has a one-year grace period to file a patent application after making an initial disclosure.

If the invention is described at a conference or in a paper, the clock then starts ticking for availability of patent protection. In Europe there is no one-year grace period—once disclosure of the invention is made, it cannot be patented.

How do you apply for a patent?

Before filing a patent, conduct a patentability search to determine whether there is relevant prior art and whether the invention is patentable.

Conducting this search can help control cash flow and minimize expenses by determining if the costs associated with drafting, filing and prosecuting a patent are worthwhile.

In Canada, patent applications are made to the Canadian Intellectual Property Office (CIPO). The CIPO website explains how to draft a patent and what goes into a patent application. Patents are usually drafted and submitted to the patent office by patent agents on behalf of the inventor.

Where does the patent protection apply?

A patent must be obtained separately for each country or jurisdiction in which you require protection. Patents are most commonly filed in the jurisdictions of the United States, Europe and Japan.

Once a patent application is made in one country, patent protection can generally be sought in other countries or jurisdictions within one year.

Alternatively, although there is no such thing as an international patent, a Patent Cooperation Treaty (PCT) application can be filed. Once this is filed, applications can be made for national or regional patents.

References

Patent Act, R.S.C. 1985, C. 33 (3rd. Supp.). (2005, May 14.) Retrieved December 8, 2009, from http://www.canlii.org/en/ca/laws/stat/rsc-1985-c-p-4/latest/rsc-1985-c-p-4.html

Canadian Intellectual Property Office. (2009, November 11,). Retrieved November 25, 2009, from www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/Home

World Intellectual Property Organization. Retrieved December 8, 2009, from http://www.wipo.int