Wilson Lue LLP Patent & Trademark Agents, Intellectual Property Counsel

An introduction to patents

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What is a patent?

A patent is a legal document that gives you, as patentee (the patent owner), the right to exclude others from making, using, or selling the invention, as defined in the patent’s claims. The exclusive right can last for a maximum of 20 years from the date an application for patent was filed, and the rights are limited to the jurisdiction in which the patent was issued; there is no worldwide patent. Patent rights can be sold or licensed to others.

A patent is infringed when another party interferes with the exclusive rights defined by the patent, for example by making or selling the patented invention, or importing for the purpose of sale. When your patent is infringed, it is up to you as the patentee to enforce the patent in court. You can potentially obtain a number of remedies, such as compensation for your lost sales or a disgorgement of the infringer’s profits, injunctions against the continuation of the infringing activity, and delivery up or destruction of infringing articles.

The patent document includes a general description of the technical background of the invention and the problem that the invention addresses, a detailed description of the invention and how it operates, and drawings where the invention is capable of being illustrated. The text of the patent ends with at least one claim that defines the scope of the exclusive right in the invention conferred by the patent.

Why obtain patent protection?

Patents can be a powerful tool. They can help protect your market share by discouraging or preventing competitors from copying your innovative products. If you are able to license your patent rights to others, they can also create new revenue streams. The potential leverage that a patent confers can bolster the value of a company and attract investors. 

Patents do not give you government approval to market your invention. Making, using, or selling your invention may be subject to other laws or regulations (such as health and safety regulations). Your invention may also be subject to intellectual property rights held by others. For example, you may invent an improvement on an existing device; but you may not be able to make, use, or sell your invention if someone else holds a valid patent on the original device. You would need their permission, or else consider whether the risk of liability for infringement is worth it. An assessment whether you are free to practice an invention without infringing another party’s patent rights requires a legal opinion.

Regardless, you can still obtain a patent for an improvement on someone else’s patented technology without infringing the other patent, because merely patenting an invention does not constitute infringement. The patentee of the original device would then need your permission to use your improvement.

How do you obtain a patent?

Obtaining a patent is not a quick or simple process. It requires careful drafting of a patent application, and a substantive examination of the application by the patent office. The entire process can take several years.

The process begins with the filing of the patent application with the patent office, and payment of required fees. The patent application includes certain formal documents as well as the description of the technical background and problem, detailed description of the invention, drawings, and an initial set of claims. The application undergoes scrutiny by a patent examiner, who will determine whether the application meets the requirements for patenting. These requirements include novelty and inventiveness criteria, discussed below. In the meantime, the application will be published, whether you ultimately obtain a patent or not.

If the examiner determines that the application meets the requirements, the application is allowed, and will issue to patent on payment of a fee. If the examiner considers that the application is lacking, she will write a report setting out the deficiencies, and may reject the application. You can respond by arguing against the examiner’s conclusions, or by making amendments to the application to address the deficiencies, as long as the amendments do not add new subject matter. The examiner will reconsider the application based on your response, and either allow the application or issue another report. This process can continue for several rounds. You do have the option of appealing an examiner’s rejection within the patent office, and escalating the matter to court if the outcome is not favourable.

What makes an invention patentable?

To be patentable, the invention must be novel, inventive (or “non-obvious”), have utility, and be the right kind of subject matter. The invention does not actually need to be made or prototyped to be patented, as long as you have conceived of a practical form of the invention that will work.

The novelty requirement. When the application is filed, the invention must be novel, or not “anticipated” by anyone, anywhere in the world. If someone else invented your invention before you did, and publicly disclosed the invention, then your invention is not new.

You can potentially destroy the novelty of your own invention by making a premature public disclosure. Most countries have an absolute novelty requirement that mandates that you must obtain a patent application filing date before you share your invention publicly. A small group of countries, including Canada, the United States, and Australia, have a “grace period” for your own public disclosures; you may file a patent application in those countries up to 12 months after your earliest public disclosure of your invention.

A disclosure to the public may occur in many ways, for example by publishing a description of the invention, publicly demonstrating the invention, describing the invention to investors who are not legally bound by an obligation of confidentiality, or showing or providing the invention to a customer who is not legally bound to keep the invention confidential. This public disclosure may be made anywhere in the world, and is not limited to the country in which the patent application is filed.
However, not every disclosure is necessarily a novelty-destroying disclosure; a legal opinion may be required to determine whether the circumstances of a disclosure will prevent you from obtaining a valid patent.

The inventiveness requirement. The invention must also be inventive, meaning that it must not have been “obvious” to the person of ordinary skill in the field of the invention, based on publicly available information and the common knowledge in the field at the time your application was filed, with the exception about information that you made publicly available yourself, if you only made it available within 12 months prior to filing your patent application.

The utility requirement. An invention must also be useful. This is often an easy test to meet, but bear in mind that patents are not granted for lucky guesses. If you have not actually made your invention and are simply predicting that it can be built by others or that it will work, it’s important that you have a good factual basis and reasoning supporting your assumptions.

The subject matter requirement. Legally, appropriate forms of subject matter are new and useful processes, machines, articles of manufacture, compositions of matter, or improvements in one of these categories. While these categories of subject matter seem to cover just about anything, they don’t: patents are not granted for primarily intellectual or aesthetic products, such as fine arts or writing, bare scientific principles, or abstract concepts. There are also certain types of subject matter that are excluded from patenting as a result of court decisions. For example, in Canada, the courts have created prohibitions against patenting higher life forms, methods of medical treatment, and applications of professional skill; however, not all of these prohibitions exist in other countries.

Deciding whether or not an invention is the right kind of subject matter is not always straightforward. Developments in case law result in changes in practice from year to year, and sometimes even month to month. Plus, there can be ways to structure a patent application to protect certain aspects of a seemingly unpatentable invention. For example, there may be ways to describe a medical invention that places it in one of the permissible categories for patenting in Canada.