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Can I Patent My Idea? The Basics of Patentability in Canada
Patent protection fosters greater 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 their initial investments. A patented or patent-pending invention can also help a business attract investors or opportunities to license or sell the invention to others. In exchange for a patent, the invention must be described in the patent application in enough detail to enable a person skilled in the art or science to which it pertains to make and use the invention. That is, describing your idea may not be enough to be awarded a patent if you cannot also describe how to make your new innovation and use it.
As to how to patent an idea in Canada, first you need to file a patent application with the Canadian Intellectual Property Office (CIPO). Typically, patent applications are prepared with the help of a patent agent. However, simply applying for a patent does not mean a patent will be granted to you. Patent applications are examined thoroughly by patent examiners to determine if they meet certain requirements for patentability.
Canada's Patent Act and Patent Rules govern the patent application process and enforcement of patents in Canada. In order to obtain a patent for your idea, several basic criteria for patentability of an invention must be met. Specifically, the invention must be:
- of a patentable subject matter;
- novel;
- useful; and
- non-obvious.
1. Patentable Subject Matter
The topic of patentable subject matter addresses what types of inventions can be patented. To be patentable, an invention must be of an allowable subject matter in the form of an art, process, machine, manufacture, composition of matter, or an improvement to any of these. Moreover, the invention described and claimed must be reduced to a practical form and must not be a disembodied idea or concept. As such, a patentable invention must be a new product, result, process, or a new combination thereof.
Higher life forms (for example, fertilized eggs and totipotent stem cells), scientific principles, abstract theorems, and forms of energy (i.e., electromagnetic and acoustic signals, electric currents and explosions) are not patentable. Isolated nucleotides and some molecules are patentable, but higher, multicellular life forms are not patentable. Further, while diagnostic methods are generally patentable, methods of medical treatment are not patentable in Canada.
Additionally, methods of influencing social interactions or behaviours and ideas that relate to professional skills and judgments are generally considered unpatentable.
Computer-related inventions can be patentable subject matter when the invention has physical existence or creates a physical effect. For this reason, inventions which might otherwise be described as “software” are often framed as “computer-implemented inventions” or the like. Note, however, that while strategic claim drafting can help an inventor secure a patent for a software invention, a computer being an essential element of an invention does not always mean the invention will be considered patentable subject matter.
Overall, in order for an invention to be of a patentable subject matter, it must be reduced to a definite and practical form, which is then described in an application for a patent, which is typically accompanied by drawings and an abstract. These materials must provide enough detail about the invention and its operation to enable 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 non-analogous or unexpected results. As such, a known invention applied to a new use may nevertheless be 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 in producing a generic result, the discovery of a more specific, but nonetheless analogous result may also be patentable. In Canada, new uses that achieve non-analogous and analogous results are patentable.
2. Novelty
Canadian patent law 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 on the date that the invention was first made or its inventive concept first conceived. An invention can be a combination of old things, so long as the combination is new. Consequently, improvements to existing machines or processes may be patented. It should be noted however, that the mere juxtaposition of parts which operate independently of each other, and which provide no common result is not enough. For a combination of pre-existing parts to be patentable, there must be a unitary result.
Additionally, a patent will not be granted for an invention that has previously been disclosed to the public in any country. Such a patent-prohibiting disclosure does not have to be an exact description of the entirety of the invention either. 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, it is generally prudent to research existing patents or to retain a patent lawyer to conduct a patentability assessment prior to filing a patent application.
In order to determine whether an invention is anticipated (i.e., not new), the essential elements of the claimed invention are considered in view of the prior disclosures found in the technical discipline to which the invention pertains. Collectively, these prior disclosures are known as the “prior art” and form the foundation of what CIPO will review, consider, and use to approve or dismiss a patent application.
One-Year Grace Period
A one-year grace period is provided in Canada for public disclosures made by applicants or inventors. If a patent application has been filed, public disclosures that originate from the applicant or inventor are excluded from the prior art starting from a year before the filing date of the patent application.
Put another way, once an inventor makes a public disclosure of their invention, that inventor then has one year to file a patent application with CIPO. So, if an inventor publicly disclosed their invention for the first time in January of 2023, that disclosure won’t constitute novelty-destroying prior art if an application for a patent for the invention is filed within 12 months thereof – i.e., by January of 2024. If the inventor files a patent application more than one year after a public disclosure, CIPO may cite this public disclosure against the application, rejecting the same on the basis that it lacks novelty.
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.
Note, however, that several other countries and regions require absolute novelty. Accordingly, any public disclosure of the invention made before a patent application is filed is ill-advised and may prevent an applicant from obtaining a patent therefor or may invalidate the patent which may eventually be granted in these regions. In all cases, it is better to keep your idea confidential as you further develop your idea and work out how to make and use the invention although you might decide to disclose preliminary details to others under the protection of a non-disclosure agreement and/or after filing a provisional patent application.
Enablement
Furthermore, an enabling prior disclosure may occur when, based on that disclosure, by trial and error, but without inventive skill or undue burden, a person skilled in the art could determine how to make and use the invention. For example, an enabling disclosure may occur if an invention can 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. 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 that which is applied in the United States. Public uses and offers for sale of the invention will 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 for its designated purpose. Accordingly, a lack of utility exists if the invention will not work, operate, or do what it promises.
Furthermore, the invention is required to be directed to a practical use, which must be controllable and reproducible. However, it is not necessary to demonstrate commercial success to meet the utility requirement. Consequently, a process that produces higher quality output, is more efficient, is built to be better or cheaper, or an invention that otherwise provides benefits to the public may be considered useful for the purpose of patentability regardless of whether the invention itself becomes commercially successful (i.e., regardless of whether the public agrees).
Finally, while a mere scintilla of utility will satisfy this requirement, note that the utility must be related to the subject matter of the invention – meaning a non-functional coffee machine is not “useful” because it can serve as a paperweight.
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 a working example to have been built prior to the filing of the application, but a working example must be able to be built according to the description given in the patent application.
Otherwise, if not demonstrated, the utility of an invention may be established by sound prediction where the inventor or applicant makes an explicit promise of a specific result. In assessing whether an invention’s utility was soundly predicted, it will be considered whether:
- there is a factual basis for the prediction;
- the inventor had, at the date of the patent application, an articulable and "sound" line of reasoning from which the desired result can be inferred from the factual basis; and
- there is proper disclosure.
Sound prediction further involves a nuanced analysis of each of the above elements, however, for most inventors and applicants, this isn’t especially relevant as the invention that is the subject of the patent application will have been built and been shown to work (i.e., be useful).
4. Non-Obviousness or Inventiveness
An invention must not have been obvious before the patent application is filed and must have a means of putting an inventive concept into practical form. Non-obviousness or inventiveness is determined by reviewing together the common general knowledge and the state of the art to which the invention relates from the perspective of a person skilled in the art. An invention that is nonobvious, or inventive, involves an innovative departure from the combined teachings of multiple prior disclosures.
A four-step analysis is used when examining obviousness in Canada:
- Identify the person skilled in the art and identify the relevant common general knowledge of that person;
- Identify or construe the inventive concept of the claim in question;
- Identify the differences that exist between the prior art and the inventive concept of the claimed invention; and
- Determine, without any knowledge of the alleged invention as claimed, whether the differences between the prior art and the claimed invention would have been obvious to the person skilled in the art.
The test for obviousness is a highly contextual analysis. The person skilled in the art can generally be construed as having the knowledge and ability of a recent graduate from a pertinent post-secondary program. However, it’s important to note that this hypothetical skilled person has no scintilla of ingenuity. In other words, we aren’t interested in what an inventor or uniquely creative individual would know, think or do, but rather simply someone with the requisite training.
Thus, comparisons are generally made between the inventive elements claimed and what is previously known in relevant technical fields.
In determining whether an invention is obvious, it is helpful to consider if it is more or less self-evident that what is being tried ought to work or if there are a finite number of identified and predictable solutions to the problem solved by the invention which are known to persons skilled in the art. It is also helpful to consider the extent, nature, and amount of effort required to create the claimed invention and if routine trials comprise part of the claimed invention’s discovery process. Lastly, it is helpful to consider whether there is motive in the prior art to find the solution that the claimed invention provides.
Similarities and Differences Between Canadian Patent Law and United States Patent Law
At a high level, United States patent law similarly requires claimed inventions to be novel, non-obvious, useful, and of a patent-eligible subject matter.
In the U.S., the United States Patent and Trademark Office (USPTO) examines the novelty of a patent application by reviewing the prior art available up to the application’s priority date for disclosures identical to the invention being claimed. Also note that while in Canada, a prior disclosure must enable a skilled person to be able to make and use the invention to be novelty destroying, in the U.S., public uses and offers for sale of the invention will destroy novelty irrespective of whether the disclosure was capable of teaching a skilled person to make and use the invention. Moreover, in the U.S., the one-year grace period is calculated from the priority date of the patent application (i.e., which could be an initial U.S. provisional patent application filing), rather than the filing date of the non-provisional patent application.
With respect to utility, U.S. patent law requires some discernable benefit and for the invention to be capable of use. More particularly, guidelines issued by the USPTO describe the standard of utility as requiring a specific and substantial utility whose practical purpose would be considered credible by a person of ordinary skill in the art, a more exacting standard than its Canadian counterpart.
Obviousness under U.S. patent law is assessed from the perspective of a person of ordinary skill in the art, whose knowledge and expertise are once more a contextual question. U.S. case law has provided several factors that help determine what characteristics are embodied by the person of ordinary skill in the art. These factors include considering the types of problems encountered in the art, prior art solutions to these problems, the rate at which innovations are made, the sophistication of the technology, and the education level of the inventor and active workers in the relevant field.
Patent-eligible subject matter in the U.S. is determined with resort to two criteria. First, a claimed invention must fall within one of four statutory categories, namely an invention must be a process, machine, manufacture, or composition of matter. Secondly, the claimed invention must not be directed to judicial exceptions to patent-eligible subject matter unless there are additional limitations amounting to significantly more than the exception. These judicial exceptions include abstract ideas, laws of nature, and natural phenomena.
While there is substantial overlap between Canadian and U.S. patent law with respect to patent-eligible subject matter, there are some industry-specific differences. For example, a review of Canadian and U.S. patent law on methods of medical treatment would uncover that methods of medical treatment are not patentable in Canada but are patentable under U.S. law.
Conclusion
Hopefully this article has provided you with a better understanding of what makes a new innovation patentable. If you believe your idea may be patentable, your next question may be should you patent your idea. This will depend on the commercial opportunity and weighing the potential outcomes against the costs of seeking patent protection and of pursuing the commercial opportunity. If you would like to know more about protecting and commercializing your potential invention, contact us now for a complimentary and confidential initial telephone appointment with a member of our team.
