IP Basics

Patent Basics and Registration Procedure in Canada

What is a Patent?

A patent gives the owner the exclusive right to make, use and sell an invention. Inventions which have been covered by patents include devices, improvements, chemical products, methods for producing certain results, and formulas. Patent protection can be obtained for anything that is new, useful and inventive.

In Canada, patent rights are obtained by applying for patent registration under the Patent Act. The criteria of novelty, utility and inventiveness must be satisfied.

Why Obtain a Patent?

A patent discloses the details of an invention. In return for disclosing the invention, a patent owner obtains a monopoly to make, use and sell the invention for a period of 20 years from the filing date. This monopoly can be invaluable to a company for the purposes of obtaining investment funding or for otherwise capitalizing on the invention. An alternative to obtaining patent protection is to keep the invention as a trade secret. Trade secrets may offer certain advantages, especially in that there is no expiry period — they remain valid as long as they are kept secret. Many inventions, however, are difficult to keep secret.

Application for Registration of a Patent

To obtain a registration under the Patent Act, an application for registration of a patent must be filed with the Patent Office of the Canadian Intellectual Property Office. The application must include a description of the invention and claims that specifically describe the scope of the invention. The drafting of claims is very technical.

Priority

The Canadian application can claim priority from certain foreign applications, so long as the Canadian application is filed within 12 months of the foreign application. Canada is also a signatory to the Patent Cooperation Treaty, under which a PCT application can be filed. This is a type of "international application" in which one application is filed and several countries can be designated. The main advantage of filing a PCT application is that it can buy the applicant additional time to have the application entered into specific countries and this in turn can assist with cash flow. At the appropriate time, the applicant can decide in which of the designated countries it wishes to proceed. The application must then be pursued in each individual country.

Examination

The Patent Office examines the application and can either allow the application or can object to registration of the patent. Objections can be raised on various grounds of non-registrability. For example, the Patent Office will object if, in its view, the subject matter is not inventive over the prior art. There are other types of objections that can be raised. In order to determine the chances of success of having a patent issued, searches can be conducted before filing an application.

If there are no objections or if all objections have been satisfied, the application will proceed to registration. The requisite government fee must be paid before an approved application will issue to registration and maintenance fees are payable yearly.

Summary

1. A patent is a valuable business asset.
2. Prior to disclosing an invention, a patent professional should be consulted, since disclosure can destroy novelty, and hence, the chances of obtaining patent protection.
3. Before filing a patent application, a patentability search should be done and an opinion on patentability obtained.
4. Once the invention has been considered patentable, an application for registration should be filed.

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