Canadian patent law is the legal system regulating the granting of
patent
A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A p ...
s for
invention
An invention is a unique or novel device, method, composition, idea or process. An invention may be an improvement upon a machine, product, or process for increasing efficiency or lowering cost. It may also be an entirely new concept. If an i ...
s within
Canada
Canada is a country in North America. Its ten provinces and three territories extend from the Atlantic Ocean to the Pacific Ocean and northward into the Arctic Ocean, covering over , making it the world's second-largest country by tot ...
, and the enforcement of these rights in Canada.
A 'patent' is a
government grant
A grant is a fund given by an end entity grant – often a public body, charitable foundation, or a specialised grant-making institution – to an individual or another entity (usually, a non-profit organisation, sometimes a business or a local ...
that gives the inventor—as well as their
heirs
Inheritance is the practice of receiving private property, titles, debts, entitlements, privileges, rights, and obligations upon the death of an individual. The rules of inheritance differ among societies and have changed over time. Officia ...
,
executors
An executor is someone who is responsible for executing, or following through on, an assigned task or duty. The feminine form, executrix, may sometimes be used.
Overview
An executor is a legal term referring to a person named by the maker of a ...
, and
assignees—the
exclusive right
In Anglo-Saxon law, an exclusive right, or exclusivity, is a de facto, non-tangible prerogative existing in law (that is, the power or, in a wider sense, right) to perform an action or acquire a benefit and to permit or deny others the right to p ...
within Canada to make, use, and/or sell the claimed invention during the term of the patent, subject to
adjudication
Adjudication is the legal process by which an arbiter or judge reviews evidence and argumentation, including legal reasoning set forth by opposing parties or litigants, to come to a decision which determines rights and obligations between the p ...
.
In general, Canadian patent law is administered by the
Canadian Intellectual Property Office.
The granting of Canadian patents is within the
exclusive jurisdiction
Exclusive jurisdiction exists in civil procedure if one court has the power to adjudicate a case to the exclusion of all other courts. The opposite situation is concurrent jurisdiction (or non-exclusive jurisdiction) in which more than one court ...
of the
Canadian federal government
The government of Canada (french: gouvernement du Canada) is the body responsible for the federal administration of Canada. A constitutional monarchy, the Crown is the corporation sole, assuming distinct roles: the executive, as the ''Crown ...
and is governed by the federal ''
Patent Act
Patent Act and Patents Act (with their variations) are stock short titles used in Canada, India, Malaysia, New Zealand, the United Kingdom and the United States for legislation relating to patents.
A Patent Act is a country's legislation that con ...
'', the ''Patent Rules'', and various international treaties and the regulations thereunder. The
enforcement of Canadian patents is the responsibility of the
Canadian Federal Court and the
provincial/territorial Courts.
Definition of a patentable invention
Patents apply to
inventions
An invention is a unique or novel device, method, composition, idea or process. An invention may be an improvement upon a machine, product, or process for increasing efficiency or lowering cost. It may also be an entirely new concept. If an i ...
. To be considered
patentable
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent. By extension, patentability also refers to the substantive conditions that must be met for ...
, an invention must pass three criteria:
*
novelty
Novelty (derived from Latin word ''novus'' for "new") is the quality of being new, or following from that, of being striking, original or unusual. Novelty may be the shared experience of a new cultural phenomenon or the subjective perception of an ...
— the invention must be new, i.e., "first in the world."
*
non-obviousness
The inventive step and non-obviousness reflect a general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive—i.e., non-obvious—in order to be patented. In other words, " heno ...
— it must be inventive, "showing ingenuity and not obvious to someone of average skill who works in the field of that invention."
*
utility
As a topic of economics, utility is used to model worth or value. Its usage has evolved significantly over time. The term was introduced initially as a measure of pleasure or happiness as part of the theory of utilitarianism by moral philosopher ...
— the invention must be useful, i.e., functional and operative.
Novelty
To be patentable, an invention must be
novel
A novel is a relatively long work of narrative fiction, typically written in prose and published as a book. The present English word for a long work of prose fiction derives from the for "new", "news", or "short story of something new", itsel ...
. That is, the invention must not have been described or claimed in a previously filed third-party Canadian patent application, and must not have been previously publicly disclosed by a third party, anywhere in the world. The test for novelty is whether or not a single, publicly disclosed example of
prior art
Prior art (also known as state of the art or background art) is a concept in patent law used to determine the patentability of an invention, in particular whether an invention meets the novelty and the inventive step or non-obviousness criteria ...
"contained all of the information which, for practical purposes, is needed to produce the claimed invention without the exercise of any inventive skill." If a third party previously filed a Canadian patent application disclosing the invention, or if a third party document or device previously publicly disclosed the invention anywhere in the world, then a subsequently applied-for Canadian patent application for that invention is lacking in novelty and is invalid. A lack of novelty is often referred to as "anticipation". For example, if a piece of prior art has each of the elements of a claimed invention, the piece of prior art is said to "anticipate" the claimed invention, or alternatively, the claimed invention is said to have been "anticipated by" the piece of prior art.
In Canada, the requirements for novelty are codified under s. 28.2 of the ''
Patent Act
Patent Act and Patents Act (with their variations) are stock short titles used in Canada, India, Malaysia, New Zealand, the United Kingdom and the United States for legislation relating to patents.
A Patent Act is a country's legislation that con ...
'':
The section does not restrict disclosure to prior patents, giving a broad description of what includes prior disclosure; so long as the subject-matter was disclosed "in such manner that the subject-matter became available to the public", the subject-matter is barred from being patented.
This may include prior patents, publications or the invention itself being put on display. Disclosures in a private document, such as an internal memo that is not available to the public, do not count.
There is an eight-pronged test to determine whether ''anticipation'' occurs in Canada. The prior art must:
#give an exact prior description;
#give directions which will inevitably result in something within the claims;
#give clear and unmistakable directions;
#give information which for the purpose of practical utility is equal to that given by the subject patent;
#convey information so that a person grappling with the same problem must be able to say "that gives me what I wish";
#give information to a person of ordinary knowledge so that he must at once perceive the invention;
#in the absence of explicit directions, teach an "inevitable result" which "can only be proved by experiments"; and
#satisfy all these tests in a single document without making a mosaic.
Non-obviousness
The test for
non-obviousness
The inventive step and non-obviousness reflect a general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive—i.e., non-obvious—in order to be patented. In other words, " heno ...
(also sometimes referred to as "inventive ingenuity" or "inventive step") is whether an "
unimaginative skilled technician, in light of their general knowledge and the literature and information on the subject available to them on (the date that the application is filed in Canada), would have been led directly and without difficulty to
heinvention."
The requirement for non-obviousness is codified under s. 28.3 of the ''
Patent Act
Patent Act and Patents Act (with their variations) are stock short titles used in Canada, India, Malaysia, New Zealand, the United Kingdom and the United States for legislation relating to patents.
A Patent Act is a country's legislation that con ...
''.
In ''
Apotex Inc. v. Sanofi‑Synthelabo Canada Inc.'', the
Supreme Court of Canada
The Supreme Court of Canada (SCC; french: Cour suprême du Canada, CSC) is the Supreme court, highest court in the Court system of Canada, judicial system of Canada. It comprises List of Justices of the Supreme Court of Canada, nine justices, wh ...
affirmed the test for non-obviousness laid out in the 1985 English case of ''Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd.'':
# Identify the notional "person skilled in the art" and the relevant common general knowledge of that person;
# Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
# Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
# Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
Utility
For a product to have
utility
As a topic of economics, utility is used to model worth or value. Its usage has evolved significantly over time. The term was introduced initially as a measure of pleasure or happiness as part of the theory of utilitarianism by moral philosopher ...
it must perform some useful function. The requirement for utility originates from the definition of invention as a "new and useful art" The requirement is generally easy to meet, however, it does limit the scope of protection by excluding methods that would not be useful.
Subject matter
In addition to the three criteria above, in order to be patentable the invention must also be:
* a product (e.g., a door lock)
* a composition (e.g., a
chemical composition
A chemical composition specifies the identity, arrangement, and ratio of the elements making up a compound.
Chemical formulas can be used to describe the relative amounts of elements present in a compound. For example, the chemical formula for ...
used in lubricants for door locks)
* a machine (e.g., a machine for making door locks)
* a process (e.g., a method for making door locks)
* an improvement on any of the above
As such, there are number of
matters that cannot be patented. Among such matters include certain new
plant matters, and medical treatments within the body (diagnoses based on, for example,
blood tests, are patentable). Some types of
computer programs
A computer program is a sequence or set of instructions in a programming language for a computer to execute. Computer programs are one component of software, which also includes documentation and other intangible components.
A computer program ...
are also not patentable by law, as
computer code
A computer is a machine that can be programmed to carry out sequences of arithmetic or logical operations ( computation) automatically. Modern digital electronic computers can perform generic sets of operations known as programs. These pr ...
by itself is not something physical.
However, according to the
Canadian Intellectual Property Office, a computer program may be patentable if it offers a new and inventive solution to a problem by modifying how the computer works.
Some things that cannot be patented include:
* "disembodied
ideas
In common usage and in philosophy, ideas are the results of thought. Also in philosophy, ideas can also be mental representational images of some object. Many philosophers have considered ideas to be a fundamental ontological category of being. ...
,
concepts
Concepts are defined as abstract ideas. They are understood to be the fundamental building blocks of the concept behind principles, thoughts and beliefs.
They play an important role in all aspects of cognition. As such, concepts are studied by sev ...
or discoveries"
* "
scientific principles and abstract
theorems
In mathematics, a theorem is a statement that has been proved, or can be proved. The ''proof'' of a theorem is a logical argument that uses the inference rules of a deductive system to establish that the theorem is a logical consequence of the ...
"
* "methods of
medical treatment or
surgery
Surgery ''cheirourgikē'' (composed of χείρ, "hand", and ἔργον, "work"), via la, chirurgiae, meaning "hand work". is a medical specialty that uses operative manual and instrumental techniques on a person to investigate or treat a pat ...
"
* "higher
life forms
Life form (also spelled life-form or lifeform) is an entity that is living, such as plants (flora) and animals (fauna). It is estimated that more than 99% of all species that ever existed on Earth, amounting to over five billion species, are ex ...
"
* "
forms of energy
In physics, energy (from Ancient Greek: ἐνέργεια, ''enérgeia'', “activity”) is the quantitative property that is transferred to a body or to a physical system, recognizable in the performance of work and in the form of heat ...
"
* "features of solely intellectual or aesthetic significance"
* "
printed matter
Printed matter is a term, mostly used by mailing systems, normally used to describe mechanically printed materials for which reduced fees are paid which are lower than first-class mail. Each postal administration has it own rules for what may be p ...
"
The list of prohibited matters notably differs from the United States. With respect to patents for software, while mere algorithms are not patentable ''per se'' (mere algorithms may be protected by Canadian copyright law), software may be protected by Canadian patent law if it meets the traditional criteria for patentability (that is, it must be new, non-obvious and useful). In other words, if for example the software is new and non-obvious, it would be patentable in Canada if the software directly provided a functional ''real world'' useful result (and not merely the calculation of a mere algorithm).
Filing a patent
For patent applications filed in Canada prior to 1 October 1989, a patent would expire 17 years after it was ''issued''. For those filed on or after 1 October 1989, a patent would last to a maximum of 20 years after the patent application was ''filed''.
In Canada, all patent applications (unless they are withdrawn by the applicant) are made public 18 months from the earlier of: the filing date in Canada (or
priority date
Priority date is a United States immigration concept – it is the date when a principal applicant first reveals his or her intent of immigration to the US government. For family-sponsored applicants, the priority date is the date an immigration ...
), or the filing date in another country if one requests it and satisfies certain conditions.
The goal of public access is to give the public the ability to learn new technological information while protecting the right of the inventor to profit from the invention.
First-to-file system
In Canada, since 1 October 1989, generally speaking, patents are granted to the first inventor to file an application for an invention (that is, Canada has a "first-to-file" system), which may result in a "race to the patent office" by inventors of competing technologies
In some cases, an application may effectively receive an earlier filing date, to improve the chances of an applicant winning the "race to the patent office".
One year grace period
In Canada, inventors have one year (i.e., a "
grace period
A grace period is a period immediately after the deadline for an obligation during which a late fee, or other action that would have been taken as a result of failing to meet the deadline, is waived provided that the obligation is satisfied durin ...
") after their first public disclosure of their invention in which to file a Canadian patent application.
However, disclosing the invention to the public prior to filing a Canadian patent application will result in the loss of significant international patent rights. Additionally, as Canada has a modified "first to file" system, any delay in the filing of a Canadian patent application may result in "losing the race to the patent office."
Requesting an earlier filing date
To facilitate the international protection of inventions, by way of
international treaties
A treaty is a formal, legally binding written agreement between actors in international law. It is usually made by and between sovereign states, but can include international organizations, individuals, business entities, and other legal pers ...
and the application of Canadian law, in some circumstances,
priority may be requested in a subsequently filed patent application to an earlier filed foreign or domestic patent application by the same inventor for the same invention to provide an earlier "effective filing date" for the subsequently filed application.
For example, if a subsequently filed patent application is filed in Canada within 12 months of the earliest date on which any corresponding previously regularly filed application was filed in Canada, or in any country belonging to the
Paris Convention, or in any
World Trade Organization
The World Trade Organization (WTO) is an intergovernmental organization that regulates and facilitates international trade. With effective cooperation
in the United Nations System, governments use the organization to establish, revise, and e ...
(WTO) member country, the subsequently filed patent application can request priority back to the date of filing the earlier filed foreign or domestic patent application, effectively, for the purposes of determining patentability of the invention in the subsequently filed patent application, giving the subsequently filed patent application the filing date of the earlier filed foreign or domestic patent application to the extent that the claimed subject matter of the subsequently filed patent application overlaps with the disclosed subject matter of the earlier filed foreign or domestic patent application.
Patent infringement
Once an invention is patented in Canada,
exclusive rights
In Anglo-Saxon law, an exclusive right, or exclusivity, is a de facto, non-tangible prerogative existing in law (that is, the power (sociology), power or, in a wider sense, right) to perform an action or acquire a benefit and to permit or deny ot ...
are granted to the patent holder as defined by section 42 of the ''
Patent Act
Patent Act and Patents Act (with their variations) are stock short titles used in Canada, India, Malaysia, New Zealand, the United Kingdom and the United States for legislation relating to patents.
A Patent Act is a country's legislation that con ...
''.
Any interference with the patent holder's "full enjoyment of the
monopoly
A monopoly (from Greek language, Greek el, μόνος, mónos, single, alone, label=none and el, πωλεῖν, pōleîn, to sell, label=none), as described by Irving Fisher, is a market with the "absence of competition", creating a situati ...
granted by the patent" is considered a patent infringement. Making, constructing, using, or selling a patented invention without the patent holder's permission can constitute infringement.
Possession
Possession may refer to:
Law
* Dependent territory, an area of land over which another country exercises sovereignty, but which does not have the full right of participation in that country's governance
* Drug possession, a crime
* Ownership
* ...
of a patented object, use of a patented object in a process, and inducement or
procurement
Procurement is the method of discovering and agreeing to terms and purchasing goods, Service (economics), services, or other works from an external source, often with the use of a tendering or competitive bidding process. When a government agenc ...
of an infringement
[''Windsurfing International Inc. v. Trilantic Corp.'' (1986), 8 C.P.R. (3d) 241 (F.C.A.)] may also, in some cases, count as infringement.
The Patent Cooperation Treaty
Since 1990, Canada has been bound by the provisions of the
Patent Cooperation Treaty
The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed und ...
(PCT). Pursuant to the PCT, the
Canadian Patent Office
The Canadian Intellectual Property Office (CIPO; French language, French: ''Office de la propriété intellectuelle du Canada, OPIC'') is responsible for the administration and processing of the greater part of intellectual property (IP) in Cana ...
may receive an
international patent application as a "Receiving Office" if the applicant is a
national
National may refer to:
Common uses
* Nation or country
** Nationality – a ''national'' is a person who is subject to a nation, regardless of whether the person has full rights as a citizen
Places in the United States
* National, Maryland, c ...
or resident of Canada (or if there is more than one applicant, at least one of the applicants is a national or resident of Canada). Additionally, the Canadian Patent Office acts as an International Searching Authority and as the International Preliminary Examining Authority. Where an international patent application has been filed in which Canada has been designated and elected, the Canadian Patent Office is the elected Office pursuant to the PCT. Additionally, the Canadian Patent Office receives Canadian ''National Phase'' patent applications in accordance with the provisions of the PCT and Canadian legislation, and the rules thereunder.
See also
*
Intellectual property law in Canada
Canadian intellectual property law governs the regulation of the exploitation of intellectual property in Canada. Creators of intellectual property gain rights either by statute or by the common law. Intellectual property is governed both by prov ...
*
Canadian Intellectual Property Office (CIPO)
*
World Intellectual Property Organization
The World Intellectual Property Organization (WIPO; french: link=no, Organisation mondiale de la propriété intellectuelle (OMPI)) is one of the list of specialized agencies of the United Nations, 15 specialized agencies of the United Nation ...
(WIPO)
References
External links
Patents— information about Canadian patents via the
Canadian Intellectual Property Office (CIPO)
Canadian Patent Database— CIPO maintains and publishes a list of
patent agents who are registered with the Canadian Patent Office and who prepare and file patent applications in Canada on behalf of inventors.
''Canadian Patent Office Record''— a weekly publication by the CIPO, containing various important notices and information on new issued patents, laid open to public inspection applications,
Patent Cooperation Treaty
The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed und ...
(PCT) applications entering the "National Phase," and patents that are available for licence or sale.
Further reading
*
{{Authority control
Canadian intellectual property law