PATENTS
A patent is a negative intellectual property right: the ability to prevent others from making, using, or selling your invention as claimed. A patent does not grant the owner a right to sell or in certain circumstances use the invention. Think of drugs / pharmaceuticals. The patent protects the formula (composition of matter) but you need regulatory approval to sell the drug. However no one but you as patentee can make the drug.
A patent lasts 20 years from the filing date and it is essential you hire a experienced patent lawyer when seeking to patent intellectual property.
Patents right is limited to what is claimed in the patent.
There is no such thing as a “world wide patent”. Someone can read you Canadian patent in other country, and granted you have no patent in that country, they can make your invention.
The requirements of a matter are generally seen as five.
(1) The Patent Act defines as invention:
“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;
This is known at the subject matter of a patent. Unless the “invention” fits into this subject matter it cannot be patented.
Some subject matter exemptions:
- methods of medical treatment
- life forms
- scientific principles/abstract theorem
- business methods (although this is under appeal)
- computer implemented inventions
- games and methods of playing a game
A patent must fall within the statutory subject matter and:
- Must be new
- Must be useful
- Must not be obvious
- Must be fully disclosed
(2) New is an absolute novelty requirement – can’t exist anywhere on the planet, any time before filing or hasn’t been described in a publication available to the public
(3) Useful means the invention must be operative, controllable and reproducible. Utility must be demonstrated and shown at the time the patent is filed, or a “sound prediction” of utility must be present.
(4) Obviousness is a problematic concept. If it was so obvious, why didn’t someone invent before?
- Identify the notional “person skilled in the art”.
- Identify the relevant common general knowledge of that person.
- Identify the inventive concept of the claim in question.
- Identify what differences exist between the state of the art and the inventive concept.
- Viewed without any knowledge of the alleged invention, do those differences constitute steps which would have been obvious to the person skilled in the art, or do they require any degree of invention?
- Would have been Obvious?
- Is it more or less self-evident that what is being tried ought to work?
- Are there a finite number of identified predictable solutions known to persons skilled in the art?
(5) Disclosure means can a person of skill in the art, without difficulty or undue experimentation, read the patent and perform the invention? Can’t have it both ways – can’t keep your invention a secret and obtain patent protection
- As a manager, you have to weigh the costs of obtaining and enforcing a patent, with the revenue stream that may come out of the monopoly right it provides
- Costs start small and rise exponentially over the time.
Knowing this a client has decisions to make:
- Do I patent – why
- is the life cycle of the invention worth the costs?
- Barrier to competitive entry
- Licensing revenues
- Currency for cross-licensing
- Marketing optics
- Investor optics
- Is a trade secret preferable (technically infinite until independently discovered)
- Do I enforce the patent or offer a license instead
Patent agents draft the actual patent and deal with the Canadian Intellectual Property Office (CIPO), Patents section. It can take 2 or more years for a patent to issue. All patents are made public 18 months from filing.
Patent Co-op Treaty elections must be made within 18 months and commenced within 30 months from the first filing. These allow you to backdate your patent in other jurisdictions to the date of your first patent application.
A patent issues on average within 3 – 6 years and expires 20 years from filing.
A client needs to be advised about this process in a holistic sense, including anticipated costs and timelines. Attendant matters concern licensing, enforcement and reacting to cease and desist letters. Only a patent agent can actually draft and prosecute (push through) the patent. However, all other matters can be addressed by a lawyer, especially licensing and commercial exploitation of the patent.
If you have a patent(s) that need protecting, then we can help! Phone us at 416-366-3538 or use our online contact form here.
