What Is a Patent?

We see it all the time - a great idea can go a long way. The common recognition of that fact, however, means that a great idea unprotected is likely to be appropriated faster than you can call “dibs”. This is where a patent comes in. A patent represents a time-limited monopoly on the manufacture, use and sale of an invention. The owner of a patent has legal recourse against competitors who copy the patented invention during the lifetime of the patent, which, in Canada, is from grant to 20 years from the date of filing the application.

Patent Rights

A patent gives the owner the exclusive right to make, use and sell the invention described therein. Like all intellectual property rights, it is the responsibility of the patent owner to enforce this right. The precise scope of “the invention” in which the monopoly is granted, is defined by a set of claims. Anyone who makes, uses or sells something comprising all of the essential elements of any of these claims infringes the patent. Note that the monopoly provided by a patent is territorial in nature. A Canadian patent gives the owner the exclusive rights above only in respect of Canada. For this reason, in today’s global market, patents are often obtained for the same invention in multiple jurisdictions around the world.

Patentable Inventions

For an invention to be patentable, the invention must meet certain basic eligibility requirements. First, the invention must be new. The requirement of novelty means that the same thing cannot have previously been patented, applied for, or disclosed to the public. Thus, the fact that someone hasn’t patented something, does not entitle someone else to apply for the patent because the invention has been made publicly available. There is an exchange that serves as the foundation for the practice of granting patents – an inventor obtains monopoly rights to the invention for 20 years in exchange for their disclosure of the invention to the public – leading to further innovation and advancement. Where the invention is already public, the applicant has nothing to exchange. In Canada, an applicant’s own public disclosure of the invention is subject to a 12-month grace period. This means an applicant can apply for patent protection within 12 months of their initial public disclosure of the invention and the invention will not be patent ineligible on the basis of that disclosure. After 12 months, the applicant’s disclosure will be cited against the application for a patent as evidence that the invention does not meet the novelty requirement – in other words that the applicant has nothing to bargain with. When considering novelty, the patent office considers patents, applications, and other public disclosures around the world, and not solely in the country in which the patent is sought.

Second, the invention must be inventive or non-obvious. If an invention has not been publicly disclosed, such that it is new, but does not involve an inventive step over and above what is publicly available, it will be deemed obvious and ineligible for patent protection. For example, if both a mechanical pencil and a wooden pencil with an eraser were publicly available, an invention comprising a mechanical pencil with an eraser could be considered obvious. The determination of whether an invention is obvious is a highly nuanced one and the test to be applied has evolved over time through the decisions of the courts. If you have doubts about whether your invention is inventive, consider consulting a patent professional.

The third requirement an invention must meet is that of utility, and this tends to be the requirement that is most easily and commonly met. Utility simply requires that the invention work.

Finally, the invention must constitute eligible subject matter. In Canada, certain inventions, despite being new, inventive and useful, are not eligible for patent protection. These include inventions directed to mere scientific principles or abstract theorems, higher life forms, and methods of medical treatment.

Inventors may choose to pursue a patentability assessment before filing a patent application. The results of a patentability assessment will give inventors a sense of the likelihood of obtaining a patent in a particular jurisdiction by highlighting some of the potential objections to the patentability of the proposed invention. The patentability assessment will also give inventors a sense of existing patented inventions, comprising some of the prior art, that may have identical or similar features to their proposed invention. Consequently, inventors may choose to tweak their inventions to add further new features to improve their chances of getting a patent. For more information on patentability assessments, please consult our additional resource on What Is the Difference between a Patent Search and a Patentability Assessment.

Patenting an Invention

PPatenting an invention starts with preparing and filing a patent application. The content of the application and degree of formality will depend on the type of application being filed. Many Canadians seeking patent protection begin the process, for strategic reasons, in the United States with a provisional patent application, a unique feature of U.S. patent law. This application is less costly and less onerous to prepare than a regular/non-provisional application. For more detail relating to provisional patent applications, see our dedicated resource, “What is a Provisional Patent Application?”. While a provisional may omit one or more of these sections, or may present them in lesser detail, a complete, regular application will include a title, an abstract, a detailed description of the invention including an introduction to the problem the invention purports to solve, figures depicting the invention, and a set of claims. The set of claims is a critical piece of the application because it sets out the scope of the patent owner’s monopoly once the patent is granted. The content of an allowed patent application becomes the content of the resulting patent.

A patent application is subsequently subject to examination by a patent examiner. The delay between filing and examination may be as many as 20 months. The patent examiner reviews the application for compliance with formal requirements and for the invention’s eligibility for a patent based on novelty, inventiveness, utility, and patentable subject matter. If the examiner considers that certain requirements are not met, or that the invention is ineligible for patent protection, the examiner will communicate this to the applicant or their agent and offer them the opportunity to respond with argument and/or by amending the application so as to render it compliant and allowable. At least one such communication is common in all applications; some applications will receive and respond to several examiners’ requisitions before being allowed.

Once the application is deemed to be in condition for allowance, a final fee is paid and a patent issues. The granted patent will remain in force for 20 years from the date of filing so long as regular maintenance fees are paid in a timely fashion. These fees are due every year, starting from the 2nd anniversary of the application’s filing date. The amount of the fee depends on the identity of the applicant but increases every few years as the patent approaches the end of its 20-year life.

Patent Agents

Although you may prepare, file and prosecute your patent application without the involvement of a patent agent, the patenting process is complex and requires significant specialized knowledge and experience to effectively navigate, making engaging a patent agent highly recommended. Having the benefit of a patent agent can significantly reduce the amount of time spent responding to various substantive and non-substantive objections from the patent office, increase the likelihood of being granted a patent at all, and ensure that the patent you are granted will effectively protect your invention. Before independently drafting and filing your patent application, consider the many pitfalls of drafting your patent application yourself and whether the benefits (most notably, the instant cost savings) outweigh the risks.

Types of Patents

In Canada, there is only one type of patent. Although Canada’s southern neighbour categorizes patents as either utility or design patents, the Canadian equivalents are patents and industrial designs. An industrial design (or, in the U.S., a design patent) protects visual features of shape, configuration, pattern or ornament, or any combination of these features, as applied to a finished article. In other words, an industrial design protects a product’s appearance, whereas a patent protects its functionality. Examples of products for which industrial design registrations are sought include shoes, handbags, kettles, and cars among many others. An application for an industrial design is distinct from an application for a patent and is subject to different requirements but is generally simpler to prepare. Many products are covered by both patents and industrial designs.

Patent Pending

Patent pending is a phrase used to indicate that an invention is the subject of a pending application for a patent. Although an application for a patent does not grant the applicant any rights in the invention, there are advantages to using “patent pending” on an invention, its packaging, or in marketing materials.Further, if the subject patent application has been published, any activity engaged in between its publication date and the date the patent is granted (if this date arrives) which would infringe the claims of the application (were they the claims of a patent) can later be grounds for compensation of the patent’s owner.

The phrase “patent pending” may indicate that a regular patent application has been filed but may also be used where only a provisional patent application has been filed to date.

Alternatives to Patent Protection

Although patent protection should be an inventor’s first choice for protecting their invention, there are other avenues to consider. Where an invention is publicly disclosed but cannot be reverse engineered, resort to trade secrets can be an alternative to protecting the invention with a patent. A famous example of a trade secret is the recipe for Coca-Cola. Quite simply, protecting an invention as a trade secret means keeping the information required to make, use or sell it secret. There are certain requirements that should be met if an inventor wants to be sure legal recourse is available to them should the information be disclosed in the future. While legal recourse may be available, nothing will restore the secrecy of the information. For this reason, among others, patent protection is often preferable.

If you would like to discuss the possibility of patenting your invention, and learn how Heer Law can help, contact us now for a confidential and complimentary initial telephone appointment with a member of our team.