The Patent System
The patent system is based on the principle that, as a matter of public policy, it is desirable to encourage the disclosure and dissemination of advances in science and industry. To that end, the patent system relies on a bargain between the inventor and the public. The inventor is required to make a full disclosure of the invention in the form of a patent application which is submitted to a government patent office and which defines the scope of the monopoly sought. The disclosure must be sufficient to enable other workers skilled in the same technological area to practice the invention. In exchange, the inventor is granted a time-limited monopoly on the making, using, or selling of the invention as set out in the claims of the patent. The claims are statements at the end of the patent description which describe the unique aspects of the invention and which define the scope of the monopoly provided by the patent.
The patent system is governed by a complex series of rules and regulations. The requirements for the content and style of the patent specification describing and claiming the invention are unique and require considerable care. Failure to meet deadlines or follow certain procedures can have severe consequences. Consulting a patent agent or lawyer as early as possible during development of a new technology or business can improve the chances of obtaining effective patent protection. Until a patent application is filed, it is critical that any new developments be kept confidential.
What is a Patent?
A patent can be characterized as a negative right, in that it gives the patent owner the right to exclude others from making, using or selling anything falling within the scope of the claimed invention; it does not necessarily give the patent owner the right to make the invention. For example, where an invention is an improvement on some existing technology, for which one or more earlier patents are still in force, the owner of an improvement patent may require permission (such as a license agreement) from the owner of an earlier patent to commercialize the invention if the invention falls within the scope of the claims of the earlier patent.
To obtain a patent it is necessary to first file a patent application that will be examined by a national or regional patent office. Patent applications must be filed or registered in each country where patent protection is desired. The patent term will be governed by national law, which for many countries is 20 years calculated from the filing date.
Why Obtain a Patent?
Obtaining patent protection for an invention may provide the patent owner with a competitive advantage and may help secure both investment and market position for a new product or technology. A patent enables the owner to exclude competitors from making, using or selling the invention except by the patent owner’s permission. This exclusivity allows inventors and patent owners to profit from their inventions. Patents can be monetized in the same way as other types of property. For example, a patent can be sold or licensed to others. Patent rights may also serve as a security interest for lenders and/or investors. For many technologies, in particular those in the life sciences and engineering fields, patents represent a valuable asset that can be used to leverage and secure funding for a company.
In deciding whether patent protection should be pursued, one major issue is whether the potential financial return may justify the costs of pursuing, maintaining, and where necessary, enforcing a patent. Another issue is how easily competitors can independently develop valuable inventions and whether they will pursue patent protection should you decide to keep the invention secret. Protection may be particularly desirable where a new product can be readily reverse engineered by competitors.
In addition to the costs of obtaining the patent, patent owners are responsible for enforcing their own patent rights. Companies or individuals found by a court to infringe a valid patent may be ordered to pay damages, surrender infringing products or be subject to a court order preventing them from making, selling or using the patented invention.
What Sorts of Inventions are Patentable?
To be patentable, the aspects of the invention that are claimed must encompass patent-eligible subject-matter, which is defined by the courts and laws of the country where patent protection is desired.
The invention must also be novel, useful, and unobvious (inventive). The specification of the patent application must provide an enabling disclosure of the invention which means the description of the invention must have enough details so that a person of general skill in the field of the invention will understand how the invention is made and works, and be able to carry out the invention.
In Canada and the United States, inventions are defined by reference to specific categories such as any new and useful method, use, process, machine, manufacture, or composition of matter or improvement thereof. If the invention is embodied in equipment or apparatus, it will generally be patent-eligible subject-matter although special circumstances apply for software-based inventions. Similarly, processes or methods (e.g., chemical processes or methods of moulding articles), are generally considered to be patent-eligible subject-matter. However, ideas or creations that do not have practical application, or which are purely artistic, will not be considered patent-eligible. Pure scientific principles, abstract theorems, or works of art are also excluded from patentability.
The boundary between patentable and unpatentable subject-matter has become controversial and in some countries may be uncertain. Since what constitutes patentable subject matter in different countries is an area of some uncertainty, a patent agent or lawyer can help review your invention and advise on how best to proceed.
Novelty and Inventiveness
A claimed invention must also be both 'novel' and 'inventive'. The test for novelty in Canada, the US and many other countries, is whether the invention has previously been made available to the public in a single piece of ‘prior art’ in a manner sufficient to enable a skilled person to practice the invention. The ‘prior art’ generally includes disclosures made by any means (e.g., printed publications of any sort, oral disclosures, or simple uses of the invention) anywhere in the world, in any language, before the filing date of the first patent application directed to the invention. Prior art may include any disclosures made by others as well as disclosures by the inventor(s).
Certain countries, including Canada and the United States, have limited ‘grace periods’ within which a public disclosure made by the inventor(s) before filing a patent application will not be considered as prior art against the patent application. The rules applicable to the grace period are not the same in Canada and the United States and it is not recommended to rely on the grace period if a patent application can be filed before a public disclosure is made.
The claimed invention must also be considered inventive or non-obvious in view of the prior art. The standard of obviousness varies from country to country, and can be difficult to predict. Unlike the novelty test, an obviousness rejection can be based on two or more documents or disclosures, and the question often is: would it have been obvious to a notional skilled person (i.e. a person of general skill in the technological field of the invention) to combine the different disclosures to form the claimed invention. Where an invention is made contrary to conventional teaching, or produces some new and unexpected result, then it may be inventive or non-obvious, and hence patentable.
Inventorship and Ownership
The rights to an invention start with the inventor. An inventor is any individual who has made a significant contribution to the creative process of developing an invention. Persons who merely contribute to verification, or to collection of experimental data, are not likely inventors. Many inventions are made in the course of employment, and inventions are routinely assigned to the employer. To avoid any dispute on this issue, companies employing technical staff who may make inventions should ensure that their contracts of employment govern ownership of inventions. This should also be considered when employing a contractor or working with third parties on projects that may result in an invention. Further, once an invention is made an assignment document that transfers rights to the invention, and to any patents and patent applications that pertain to the invention, should be obtained as soon as possible.
The Patentability Search
Before preparing and filing a patent application, it is usually worthwhile to do a patentability search to assess whether it is likely that a patent may be obtained for the invention. A patentability search can also help assess the breadth of the scope of protection that might be obtained, so that a better set of claims can be prepared for an initial patent application. Since searching is an imprecise skill, pertinent documents can come from anywhere in the world and patent applications are kept secret for a certain period of time, searching may not reveal all pertinent documents. However, searching usually provides greater insight into the state of the existing patents, other publications, and publicly available information to assess whether the invention is likely to be considered novel and inventive. The results of such searches should be interpreted by a qualified lawyer or patent agent.
When Should an Application be Filed?
The rights to a patent are awarded to the first person to file a patent application (assuming that person is the genuine inventor or has obtained rights from the inventor). For this reason, it is always advisable to file a patent application as soon as possible, since another person may independently make the same invention and file earlier.
A further and more practical consideration when deciding to file is that the novelty of an invention is judged against any information that is publicly available at the earliest filing date. Hence, the later an application is filed, the more information there is that may potentially become available, upon which an examiner may rely on to challenge the novelty or obviousness of the claimed invention. For many countries it is essential that the first application be filed before the invention has been in any way "publicly disclosed" by the inventor or anyone else.
As mentioned above, for North America, in some circumstances, it may be possible to file a patent application after a public disclosure by the inventors during the one-year grace period. However, most countries require absolute worldwide novelty and do not provide the inventor with any grace period in which the invention can be made available to the public prior to filing. Thus if an imminent non-confidential disclosure of an invention is planned, e.g. at a trade show or as a bid for work from a customer, a patent application should be filed before the disclosure is made.
Obtaining Foreign Patent Protection
Canadian patents are only enforceable in Canada. Patent protection in foreign countries must be obtained separately. This may be done either by applying directly to the patent office of the relevant foreign country, or applying for the foreign patent through a deferred filing route, such as an International Patent Application filed under the Patent Cooperation Treaty (PCT). Whichever approach may be chosen, the local laws of the relevant country will ultimately apply.
Marking Patented Products
Products no longer have to be marked as "patented" in Canada, but incorrect marking is an offense under the Patent Act. It is generally advisable to mark patented products as "patented" or "patent pending" if a patent application has been filed as appropriate, to warn potential infringers. The law governing marking patented products varies in different countries and inappropriate markings can potentially result in significant fines. Consult a qualified lawyer or patent agent in order to develop a suitable marking strategy for your product.
Alternative Protection - Trade Secrets
Certain inventions can be practised, sold, or licensed in secret. Persons to whom the invention is communicated in confidence, or who are under a contractual obligation to keep it secret, can be restrained from using it in an unauthorized manner and may be liable to pay damages for any unauthorized use.
However, there is no recourse against persons who independently make the invention, and such a person could obtain a patent and thereby obtain exclusive rights to that invention. Such a patent would prevent you from further exploiting the invention, subject only to the availability of ‘prior user’ rights which are often quite limited. Also, trade secret protection is only available as long as secrecy is maintained. Maintaining secrecy can be very difficult in many technology areas for any prolonged length of time.
It is important to treat any information you wish to maintain as a trade secret as confidential and put measures in place to ensure that the relative secrecy of the information remains intact. We recommend consulting with a patent agent or lawyer when a decision is made to keep an invention as a trade secret in order to maximize the availability of any legal protection.
For certain inventions, it may be possible to keep an invention secret while exploiting it commercially, so as to maintain the option of filing for patent protection at a later date. For example, for many industrial processes, if the process is kept secret, only the product of the process is sold publically and the public sale reveals no details of the process, then it may be possible to keep the process secret for some time. In another example, where the invention is to be used in countries in which it is difficult either to obtain or to enforce patent rights, an alternative strategy is to keep part of the invention, such as inventive processing software, in secret in a country in which trade secrets can be maintained, while only providing non-secret hardware or output results to the less secure jurisdiction.
As noted above, there are risks associated with relying upon trade secrets, namely, risks in maintaining secrecy, and the risk that another person may independently make the invention and obtain a patent for it.
Micheline Gravelle, Partner
Bhupinder Randhawa, Partner