Unless otherwise specified, all question and answers relate to Canadian patents.
- What is a patent?
Patents are a type of intellectual property protection that applies to new inventions and innovations, and are essentially a legal safeguard of proprietorship of the invention. They are essentially a reward and incentive for ingenuity.
- What rights does a patent provide?
Patents provide a time-limited, legally protected right to make, use and sell an invention in a single country.
- How can patents enhance the commercial value of intellectual assets?
A patent can act as legally verified and transferable proof of ownership that essentially creates a state-backed monopoly on your good and prevents market competition. Further, the transferable nature of a patent means that it can be sold for profit.
- What is the difference between a copyright, a trademark, and a patent?
A patent is used to protect inventions such as products, methods of production or machinery. They are largely used to protect innovation. A trademark is used to protect brands, images or slogans that are used for commercial purposes. A copyright is used to protect creative works by individuals.
- What is patentable?
You can patent an invention that is a product, a composition, a machine, a method, or an improvement to any of the above.
- What are the different types of patents I can obtain?
In Canada, you can only obtain a single type of patent protection for the types of inventions described above. In the United States, parents are separated into two categories: utility patents (largely the same as Canadian patents) and design patents (referred to as industrial designs in Canada). You can read more about obtaining a design patent in the United States by referring to our Industrial Design FAQ section.
- What is the difference between patent licensing and a patent assignment?
Licensing a patent means granting permission to another individual or organization to make and/or sell the invention that has been patented. A patent assignment is a complete transfer of patent rights from one person to another (for example, as an inheritance after the original patent owner's death).
- What are the requirements for an invention to be patentable?
In order to be patentable, an invention must be novel, useful and inventive. Novel, in this case, means the first in the world – there must be no prior public disclosure or patent filed for the invention anywhere else in the world. Useful refers to the invention being functional and operative, and contributing to the public well-being. Inventive means that your proposed invention must be non-obvious to a skilled worker in the field or industry to which it belongs, and must display a level of ingenuity.
- What if my idea is old but no one has ever patented it?
If your area has been previously disclosed publicly through someone other than you, and exists in the public domain as common knowledge, you would be ineligible to apply for a patent even if no patent was filed before. If, however, your idea is simply one that you have been conceptualizing for a long time but which is not known publicly, you may apply for a patent to try to protect it.
- What if my idea was patented but the filing expired?
Patents are limited in their longevity; a patent is protected for 20 years in Canada in exchange for full disclosure of how to produce and consume the invention for public benefit. After a patent expires, the invention becomes public property and you are no longer entitled to exclusive production and distribution rights.
- How are patent rights enforced?
Patents are generally enforced in a court of law on the initiative of the patent owner who is defending themselves against infringement. The responsibility for ensuring that their patent rights are fulfilled largely lies with the patent owner.
- Who decides if patents are granted or not?
In Canada, this decision is made by the Canadian Intellectual Property Office (CIPO). In the United States, patents are granted by the U.S. Patent and Trademark Office (USPTO). Other countries have their own intellectual property agencies; a complete list can be found on the World Intellectual Property Organization's (WIPO) website. There is currently no international system for the granting of patents although international patent applications may be filed under the Patent Cooperation Treaty (PCT) which provides benefits relating to filing and prosecuting patent applications globally.
- What is prior art?
Prior art is information that has been publicly disclosed prior to the invention in question and relates in some way to the subject matter claimed in the patent application for the invention. It is used to assess patentability of the invention. Third parties can file prior art in the course of a patent application to bring it to the attention of the patent examiner.
Can I obtain a patent but keep my invention confidential?
Generally, no. In return for obtaining patent protection at the beginning of your invention's life cycle, you agree to fully disclose your invention and eventually transfer your rights to the public domain.
- When should you apply for a patent?
Canada operates on a first-to-file system, which means that patent rights are granted to the first individual to file a patent application for the invention in question. If you have completed your invention and intend on patenting it, it is smart to file an application, or at the very least a provisional application as soon as possible.
- How long does the application process take?
The time for a patent application varies, but generally takes between two and three years in Canada and the United States if you proceed expediently.
- What are the steps to patent filing?
CIPO cites the following nine steps to patent filing in Canada:
- Determine if you need a patent agent. (Note: If you choose to hire an agent, they may assist you for the remaining steps.)
- Do a preliminary search (if there is an existing patent, consider ending the process now).
- Prepare a patent application.
- File your application.
- Request examination.
- Examiner does search for prior publications and studies your application.
- Examiner either approves or objects to the application.
- Respond to the examiner's objections and requirements.
- Examiner reconsiders and either approves or calls for further amendments.
- What are the costs of patent protection?
Please refer to CIPO's tariff schedule for a detailed description of the fees involved with the patent process. All of these fees are for the services rendered by CIPO only; enlisting the help of a patent agent will cost extra.
- What is a preliminary patent search and how do you go about conducting one?
A preliminary patent search is a search of prior patent applications and issued patents that is conducted before a patent application is officially filed. Conducting a preliminary patent search can help you identify trends in patent protection, check if your invention has been thought of before, and convey new ideas for meaningful research. You can conduct the preliminary search online such as using Google Patents.
- What does "patent pending" mean?
Patent pending is a marked placed on market goods to inform consumers and competitors that a patent application has been filed in the jurisdiction and is currently pending. It is intended to dissuade competitors from copying the product and to convey to consumers, investors, partners, and potential licensees that the product is innovative.
- What is a patent search, and can I do one myself?
A patent search is a search of all existing patents in your country and in the world that have been applied for and published. You may conduct a patent search yourself to determine whether your application is novel, but it is easy to be overwhelmed by the complexity of the search and the amount of materials available. It is recommended that you consult a patent agent to help you with this search.
- What might prevent a patent application from being granted?
A patent examiner may object to your application on several grounds. He or she may deem it too obvious – that is, someone skilled in the field could easily create such a product; there may also be previous patents or claims that address one or more of the inventions that you have submitted. The objections will be sent to you in a letter; you will have a chance to reply to the claims and improve the chances of your application being accepted.
- May I tell others about my invention?
Patentability hinges on the requirement of novelty, or not having your invention be publicly known prior to a patent application being filed. Although you may tell others about your invention, you must ensure that this information stays confidential such as through a non-disclosure agreement or you may lose your rights on the basis of not fulfilling the novelty requirement. As such, it is advisable to tell as few people as possible about your invention.
- What is an NDA and why do I need one?
An NDA, or non-disclosure agreement, is a binding legal agreement swearing the parties involved (or party, in a one-way non-disclosure agreement) to not reveal information that was discussed confidentially between them. Before a patent application is filed, this may be helpful in preventing public disclosure but still letting individuals in on your invention when necessary.
- What is a provisional patent application?
A provisional patent application may be filed in the United States as a way to hold your place in line when applying for a patent for which you are not yet ready to fill out a full application. It allows you to get an early filing date without submitting a full, formal application, and permits you to use "patent pending" in association with your product or service. There is a similar process in Canada that allows the filing of two applications for the same invention, with the second application taking internal priority from the first application. Both methods have a time limit of twelve months on the filing of the full or second application.
- What are the benefits of filing a provisional patent application?
Filling out a provisional application, or its Canadian equivalent, will place you in front of the line compared to those that have filed a patent application after your provisional filing, but before your second filing for the second matter you describe in that initial application.
- Can I file multiple provisional applications on the same patent?
Yes. However, the non-provisional claiming priority to one or more provisional patent applications can only reach back up to 12 months for the priority claim.
- Can I patent an iPhone app or another mobile app?
Mobile apps, like software, are patentable as long as they meet the main requirements for patentability of being new, non-obvious (inventive) and useful.
- Can I still apply for a patent once I published my research filings?
Unfortunately, publishing your findings in a trade journal or any other form of mass publication, whether industry-specific or mainstream, violates the novelty requirement of patentability and counts as disclosure. However, in the United States and Canada (and a few other jurisdictions), you are given a one-year grace period to file a patent application from the date of earliest disclosure. Provided you fit into that time frame, you may be eligible to apply for a patent for your findings.
- Can I establish a priority date or proof of date of invention by sending a letter to myself?
No. This method, sometimes referred to as "the poor man's patent", will not hold up in the face of another patent application filed before yours or a public disclosure.
- What kind of services does a patent agent offer to their clients?
A patent agent is able to navigate virtually the entire patent process for you. They will be able to perform a prior art search as part of a patentability assessment, as well as prepare and file an application for a patent. They will also be able to advise you on whether your application has a high or low chance of succeeding, and the steps you can take toward framing or improving your invention to increase the odds of obtaining a patent.
- Why are laboratory notebooks important?
If you find inventorship or ownership of your invention contested, or have to contest inventorship or ownership of the patent application of a competitor, laboratory notebooks can prove useful as proof that you are the inventor of the good in question, or, alternatively, act to contest ownership of an application by your competitor.
- What's in a patent application?
A patent application consists of an abstract, a specification, and, in most cases, drawings. Further, it includes your personal information, filing fees for processing and a formal request for a patent examination in order for your application to be granted. The application is a lengthy process that can often take up to three years from its start date to be completed in its entirety.
- How can I help my patent agent?
CIPO lists the following guidelines for aiding your patent agent and speeding up the patent application process, and recommends preparing them to give to your agent:
- Field of the invention
- A broad description of the invention
- Objectives of the invention (that is, its main practical advantages over existing practices or products)
- The preferred practice (that is, the most appropriate use) of your invention, with details of at least one practical application
- Features of the invention that are new and distinct from what has come before, whether these features are patented or not
- The scope of the invention—for example, the materials, compositions, conditions, etc. used to obtain good results
- The invention's limitations—for example, if good results can be obtained throughout the given range of the invention, or if there are exceptions
- The results of laboratory or commercial tests showing your patent's preferred practice (item 4, above) and the conditions under which poor or dangerous results could be expected
- Lists of relevant patents or technical articles you have already found in any literature search, including full details such as: name of the inventor, number of the patent, country and date of issue or name of the periodical and its date with a list of the similarities and differences of practices or products that are relevant to your invention
- Any disclosure you have made (for example, people you may have told about your invention)
- Your name, address and citizenship
- All countries in which you would like to file for a patent
- Is a prototype required to file a patent application?
No, a prototype is not required to file a patent application. However, you will have to provide clear and concise, to-scale drawings of your patent, as well as a detailed description which will help separate confidential, patented information from information that will translate into the public domain. All of these components of the patent application may be much easier if there is a prototype in place to aid you with completing the application.
- Why do I need to indicate who the inventor is?
Indicating who the inventor is allows the rights that come with the patent to be conferred onto that individual, team, or company.
- What is examination and what happens during it?
Examination of a patent application is the process by which the relevant governing body in your country assesses your patent application for novelty, usefulness and non-obviousness to determine whether a patent should be granted. This examination largely forms the basis for the acceptance of your application, or for the claims that the patent examiner makes against your application. You must formally request an examination and pay the examination fee for your application to be examined in Canada – it is not automatic upon filing. You must request examination within five years of your filing date, or your application will be considered abandoned.
- Can my application be accelerated?
Yes, there are various mechanisms available for accelerating examination of a patent application: including requesting accelerated examination and paying the requisite fee, requesting expedited examination under the Patent Prosecution Highway (PPH) on the basis of allowed claims in a corresponding application in another jurisdiction, or the accelerated examination available for green technologies.
- Who owns the patent?
The rights to the patent belong to whoever was listed as the inventor or inventors absent an employment relationship or assignment which may transfer the inventor's rights to another. If there are multiple inventors listed, the patent will be jointly owned.
- What should I do if my patent application is rejected?
An initial rejection is not uncommon, as the patent examiner may find that there is prior art similar to your invention or that the invention can be obvious to someone in the field of question. The examiner will state their objections to your application, which may object to either part of your application or the application in its entirety, and send this to you in a document called an examiner's report or office action. They will set out a date for you to respond to these objections. You or your patent agent may respond to these objections by the stated date by sending a response with or without an amendment to your application, which may lead to issuance of the patent should the examiner's objections be withdrawn.
- What should I do if the Patent Office issues a final rejection?
If your application is rejected by the patent examiner, you may appeal the rejection to the Commissioner of Patents. This review will be conducted by the Patent Appeal Board, a special committee of senior patent officials. You may appear before the board if you wish to make a case. If your application is also rejected as the result of this appeal, you may appeal to the Federal Court.
- Will the government help enforce my patent?
A patent means that you have leverage in a court of law as the rightful owner of the patented invention, and may thus receive damages from anyone that has infringed on your patent rights. However, the government does not investigate instances of infringement, or monitor the actions of your competitors. Finding out whether your patent has been infringed is your responsibility as the owner, but the government has created an avenue for you to commence legal action if necessary.
- How do I keep track of competitors' patents?
All patents and patent applications publications are published in a publicly accessible database run by the Patent Office of a particular jurisdiction. Conducting preliminary searches can give you an understanding of what inventions your competitors are trying to patent and whether they are in direct conflict with any patent applications you are planning to file.
- How can I oppose a competitor's patent application?
You can submit evidence of prior art or prior disclosures by the application that is older than 12 months before the filing date of the patent. These can include examples of your product, technical papers that you have published or disseminated, or essentially any documentary evidence that a competitor's product is not new and inventive.
- How do I object to a competitor's patent after issuance?
You can submit prior art for re-examination even after issuance of the competitor's patent.
- What is a validity opinion?
A validity opinion is a legal assessment of your patent that can help you estimate how enforceable your patent is in a court of law if someone was to infringe on your patent. It involves an assessment of prior art, as well as the circumstances involved in the prosecution of the application. Generally, all patents that have been granted and properly maintained are presumed to be valid, but patent strength can vary.
- Can a competitor make small changes to my invention and avoid my patent?
That depends on the enforceability of your patent, the scope of the patent claims within it and the nature of the changes made by your competitor, and is largely a case-by-case assessment. Please contact one of our patent lawyers if you need more help regarding this situation.
- Can I infringe on someone else's patent if I have a patent?
Yes. Your patent protects explicitly only what has been submitted as confidential information for the making of your invention. If your patent is an improvement on prior patented technology for example, you may still infringe on their patent by making your improved technology.
- Is there patent insurance that can help me against litigation?
Yes, there are companies with which you can obtain insurance for your patent in cases of patent infringement which may help minimize the costs of litigation, and, if applicable, the damages that have to be paid out.
- Can I create derivative works using an item that is already patented?
Yes. In fact, most patents that are granted worldwide right now are for improvements or modifications on already existing items. However, you may have issues with having to negotiate with the owner of the previous patent in order to obtain rights to produce your invention even after your patent is granted.
Patents and Business
- How are patents relevant to my business?
There is a common misconception that patents only aid those that have created groundbreaking inventions or big corporations. On the contrary, most patents are filed for improvements on existing inventions, and owners of those patents a chance to make and sell their invention without competition. Patents can help your business focus on the innovative aspect of producing new inventions, rather than figuring out how your invention will compete in the market if other companies begin scaling it.
- What happens if I don't patent my invention?
If you do not patent your invention, other companies may be able to produce it as well as soon as you disclose your idea to the market. This will put you in direct competition immediately, and may put you at a disadvantage if other people are able to product your idea cheaper or market it better. Further, not having legal ownership of your idea may eliminate your ability to sell it or license it to others for production.
- Can I sell my patent?
Yes. You can license your patent to allow another individual or company to make or sell your patented invention, or transfer your patent rights completely to another individual or company.
- Can I discuss details of my application with a potential investor before filing the patent?
Yes. However, you have to be careful to make sure that this does not violate disclosure requirements. It is advisable to get the investor to sign a non-disclosure agreement, and to limit your sharing to those who already expressed clear interest in the invention.
- Am I required to file a patent before I can sell products in Canada and the United States?
No. You can sell products without a patent as long as you don't infringe upon the patent rights of others. However, this can create business challenges for you as noted above under What happens if I don't patent my invention?
- How do I maintain my patent?
In order to maintain your patent application or patent, you have to pay regular maintenance fees to the Canadian Intellectual Property Office. They are paid annually, beginning on the second anniversary year from when your patent application was filed, up to the 19th anniversary after the filing date. If you do not pay the maintenance fees, your patent application or patent will go abandoned or lapse. The quantum of maintenance fees to be paid increase on the 5th, 10th and 15th anniversary of when the patent has been granted. You can find the full schedule of maintenance fees here.
- How do I exploit my patent? Where do I find advice and funding schemes?
Creating a business plan for your patent is largely a case-by-case situation that depends on the nature of your invention, whether you intend to produce and sell it yourself or license it to another company, and the general market demand for your patented invention among other factors. You can browse our resources section for general strategic information and a list of available grants and awards for prospective and current patent holders, but are encouraged to contact a lawyer for strategic advice tailored to your particular circumstances.
- What does publication of patent applications entail?
All applications are published in their patent office's patent eighteen months after their priority or filing date. If your patent is granted, this disclosure will not constitute permission for others to make your patented invention. The database is there largely to inform businesses and aspiring inventors of the boundaries of others' inventions, and to bring information into the public domain.
- How does a licence work?
A licence means that you have given another individual or business permission to make, use or sell your patented invention. This can be done if you do not want to or do not have the capacity to make your invention yourself, or if you want an additional channel of distribution. There is no one process for licensing your invention; it is generally done on a case-by-case basis between the two parties in the negotiation. However, it is advisable to research the business to which you are planning to extend a licence, the general market potential of your invention in that jurisdiction before entering into any sort of binding contract.
- When can I say "patent pending" in my promotional materials?
You can say "patent pending" once you have filed either a provisional or a non-provisional or full patent application in the jurisdiction in which you are distributing these promotional materials.
- Can I get a tax break by donating my patent?
You are eligible on a case-by-case basis deduction dependent on the market value of your patent or the donating property's tax basis (the lesser of the two values).
- My employee has invented a new product or process. Who will get the rights to the patent?
Generally, if an employee creates an invention while employed at the company, using company time and/or resources, the company will be seen as the owner of the innovation for patenting purposes. However, it may be useful to specify such provisions in a contract, such as an employment agreement. An intellectual property assignment agreement should be used for contractors, where by default rights belong to the contractor.
- Are there alternatives to protecting my invention?
There are some alternatives that may work better for your business than patent protection, depending on the situation. If your invention is a small improvement to an existing technology, and you do not think that it is novel or innovative enough to be patentable, you may be able to protect yourself with a utility model in some countries. If you are hesitant about disclosing your invention, it may be better to keep it is a trade secret instead, especially in circumstances where it is difficult to reverse engineer how to make and use the invention.
Transfers across Jurisdictions / Differences in Jurisdictions
- How long does a patent last in Canada and the U.S.A.?
A patent issued in Canada or the United States is valid for 20 years from the filing date.
- Is a patent valid in every country?
No; a patent is only valid and in force in the country in which it is issued.
- Can I get an international or worldwide patent?
No. At present, there is no international patent. There is an international patent application, a PCT patent application, but ultimately it requires patents to be issued in individual countries.
- Can you get a patent in a jurisdiction of which you are not a citizen or resident?
Yes, you can file in any jurisdiction regardless of citizenship or residency status.
- When do I need to file my foreign applications?
Because of the protections allotted by the Paris Convention, you may claim priority to your earliest filing date when filing applications in other countries. It is thus best to file your foreign applications within twelve months of your initial filing.
- What is the Paris Convention?
The Paris Convention for the Protection of Industrial Property is a global agreement regarding patent protections of which Canada, and approximately 170 other states are signatories. Its main purpose for patent holders is largely to provide priority protections for international filing retroactive to the original domestic filing date.
- What role does WIPO play in regard to patents?
WIPO, or the World Intellectual Property Organization, is "the global forum for intellectual property services, policy, information and cooperation". They are a self-funded agency of the United Nations. By and large, their purpose is to provide information about and access to national intellectual property agencies, as well as act as an enforcer of internationally accepted standards.