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Can I Patent My Idea? The Basics of Patentability in Canada

Most successful businesses are built on innovative ideas. To encourage investment in research and development and to help with the commercialization of new technologies, governments grant patents to applicants of allowable patent applications. These patents provide their patent owners with the rights to stop others from making, using or selling an invention for up to a maximum of 20 years starting from the day the patent application is filed.

Patent protection allows for enhanced financial profits by restraining competitive products or services for the time the patent is in force so the patent owner can earn a desirable return on those initial investments. A patented or patent-pending invention can also help a business attract investors or license or sell the invention to others. In exchange, the invention must be sufficiently described in the patent.

To patent an idea in Canada, you first need to file a patent application with the Canadian Intellectual Property Office. Typically, patent applications are prepared with the assistance of a patent agent. However, simply applying for a patent does not mean a patent will be issued to you. Applications for patents are examined by patent examiners to determine if they meet certain requirements for patentability. If you want to know more about how to patent an idea in Canada, you should familiarize yourself with these requirements which need to be met to obtain a patent.

In Canada, the Patent Act and Patent Rules govern the patent application process and enforcement of patents. In order to obtain a patent, the basic criteria for patentability must be met. Specifically, the invention must be:

  1. a patentable subject matter;
  2. novel;
  3. useful; and
  4. non-obvious.

1. Patentable Subject Matter

To be patentable, an invention must be an allowable subject matter in the form of an art, process, machine, manufacture or composition of matter. Moreover, the invention must be reduced to a practical form and must not be a disembodied idea or concept. As such, a patentable invention must provide for a new product, result, process, or a new combination thereof.

By and large, it has been determined that higher life forms, scientific principles, abstract theorems, and forms of energy (i.e. electromagnetic and acoustic signals, electric currents and explosions) are not patentable. While isolated nucleotides and molecules are patentable, higher life forms are not patentable. Further, while diagnostic methods are generally patentable, methods of medical treatments are not patentable in Canada.

Additionally, methods of influencing interactions or behaviours and ideas that relate to professional skills and judgments are generally considered unpatentable.

Overall, the invention reduced to a definite and practical shape may be described in a description that is normally accompanied by drawings which enables others skilled in the field to make and use the invention.

New Uses to Achieve Non-Analogous and Analogous Results

A new use of a well-known prior disclosure may result in a non-analogous or unexpected results. As such, a known invention applied to a new use may nevertheless be considered patentable.For instance, a toxic chemical previously used as a rat poison may be patentable if it is newly discovered to be useful as a growth promoter in plants.

Additionally, where a means is known to be useful to achieve a generic result, the discovery of a more specific analogous result may also be patentable. In Canada, new uses that achieve non-analogous and analogous results are patentable.

2. Novelty

Canada operates on a first-to-file system. As such, a patentable invention must be "new" as of the date that the application is filed (rather than the date that the invention was made). The invention does not need to be revolutionary and can be a combination of old things, as long as the combination is new. As such, improvements to existing machines or processes may be patented. It should be noted however, that the mere juxtaposition of parts is not sufficient.

Additionally, a patent will not be granted for an invention that has previously been disclosed to the public in any country. The disclosure does not have to be an "exact description" of the invention. Examples of public disclosures include the publication of another patent in any country, technical journals or periodicals, or public sale or use of the invention. As such, searching patents is often done before protecting invention ideas.

In order to determine whether an invention is anticipated (i.e. not new), the essential elements of the claimed invention are considered in relation to the prior disclosure. Accordingly, elements that are not essential to the invention are not considered.

One-Year Grace Period

A one-year grace period is provided in Canada for public disclosures made by applicants or inventors. Specifically, public disclosures that originate from the applicant or inventor are excluded as prior art starting from a year before the filing date of the patent application in Canada.

The one-year grace period is not restricted to any geographic location, and the public disclosure may be made anywhere in the world. A public disclosure may be made orally, in writing, or in any other form. Disclosures made beyond the one-year grace period will constitute a legal ground for invalidating a patent application in Canada.

A number of other countries and regions require "absolute novelty". Accordingly, any public disclosure of the invention made before a patent application is filed may invalidate the patent.

Enablement

Furthermore, an enabling prior disclosure may occur when trial and error experimentations can be made to arrive at the invention without inventive skill or undue burden. For example, an enabling disclosure will likely be made when an invention may be understood through non-inventive means or reverse engineering from a previously sold product containing the invention.

The same enablement principle applies to a product containing the invention being offered for sale. In other words, an offer for sale may constitute a prior disclosure if it enables the invention to be known without inventive skill or undue burden. As a result, a disclosure that enables the invention may trigger the start of the one-year grace period.

It is important to note that the Canadian enablement principle is different from the United States. Under the amended U.S. Leahy-Smith America Invents Act, public uses and offers for sale of the invention outside the United States will not trigger the start of the one-year grace period in the United States. Furthermore, the one-year grace period is calculated from the priority date of the patent application in the United States, rather than the filing date.

3. Usefulness or Utility

An invention must be useful to be patentable. This means that the invention must work or be advantageous for its designated purpose. Accordingly, a lack of utility exists if the invention will not work, operate, or do what it promises.

Additionally, the invention is only required to be directed to a practical use, which must be controllable and reproducible. It is not necessary to demonstrate commercial success to meet the utility requirement. Consequently, a process that is built to be better/cheaper or an invention that provides benefits to the public may also be considered useful.

Demonstrated Utility and Sound Prediction

A patent application may demonstrate the utility of the invention by, for example, describing working examples of the invention. Describing a working example does not require that a working example has been built prior to the filing of the application, but rather that it could be built according to the description given in the patent application.

Otherwise, in certain instances, the utility of an invention may be established by sound prediction where the inventor or applicant makes an explicit promise of a specific result. To describe the soundness of the predicted invention, the patent application must include:

  1. a factual basis for the prediction;
  2. an articulable and "sound" line of reasoning from which the desired result can be inferred from the factual basis; and
  3. proper disclosure.

Overall, the disclosure cannot be merely speculative. The line of reasoning must connect the factual support to the claimed invention. Where there is no explicit promise in the patent disclosure, a spark or scintilla of evidence outlining the invention's utility will suffice.

4. Non-Obviousness or Inventiveness

An invention must not have been obvious before the patent application is filed and must have a way of putting a concept into practical form. Non-obviousness or inventiveness is determined by whether the invention is obvious when considered by a person skilled in the art in light of the common general knowledge and the state of the art as a whole. As such, obviousness may be identified by its measure over the combined teachings of multiple prior disclosures.

The following four-step analysis is used when examining obviousness in Canada:

  1. (a) Identify the "person skilled in the art";

    (b) Identify the relevant common general knowledge of that person;
  2. Identify or construe the inventive concept of the claim in question;
  3. Identify the differences that exist between the prior disclosure forming part of the "state of the art" and the inventive concept of the claimed invention; and
  4. Viewed without any knowledge of the alleged invention as claimed, determine whether the differences constitute steps which would have been obvious to the person skilled in the art or whether they require inventiveness.

Thus, comparisons are generally made between what was invented and what has taken place before the invention. Incidentally, inventiveness may be a quantum leap or merely a scintilla or spark of invention.

Where there are only a finite number of identifiable and predictable solutions or where the solutions are more or less self-evident, the invention will likely be considered obvious. For example, the brute force approach of making something bigger if it doesn't work may be obvious. Hence, there is a halo or region of obvious solutions surrounding every old solution or the common general knowledge. Stretching beyond this is the inventive solution.

Conclusion

Hopefully this article has given you a better understanding of what makes a potential invention patentable. If you would believe your idea may be patentable and you would like to know more about how to patent an idea in Canada using a patent agent, please do not hesitate to contact us for a complimentary and confidential telephone appointment.