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Intellectual Property Law Aird & Berlis LLP

A Canadian patent gives you the right to exclude others from “making, using or selling” the invention for 20 years from the patent application filing date. A Patent Primer A Canadian patent protects an invention only in Canada. To date, there is no such thing as a “world-wide” or “international” patent, though a number of world-wide treaties allow you to file a There are three basic criteria for BY JOHN LONGO single application to cover a number of patentability, as follows: different countries, such as the “Patent WHAT IS A PATENT (a) the invention must be new. In Cooperation Treaty.” Generally speaking, patent is a government issued order to be novel, the invention a separate patent must be obtained in document which bestows on must not have been disclosed in each country of interest. However, you its owner, the patentee, the such a manner that it became can obtain a single European patent to A exclusive right to manufacture, available to the public before the cover a number of different European sell and use the invention claimed in filing date of the application of the countries. the patent until the patent expires. In patent. However, you are also A patent is property you can sell Canada, patent law is governed by the provided a one year grace period (assign) or license. If you (the Patent Act, R.S.C. 1985, C.33 (3rd Supp). from your own disclosures or for “assignor”) sell a patent it becomes the Patent protection rests on the concept those by people who have property of the buyer (the “assignee”). If of a bargain between the inventor and obtained information from you; you license your patent to another the public: in exchange for statutory (b) the invention must be useful (ie, person (the “licensee”), the patent monopoly rights for a limited time, the functional and operative); and remains your property, but the licensee, inventor must provide full disclosure of under conditions set out in a licence the invention to the public for the general (c) the invention must be inventive, or agreement, can use the invention. benefit of society. This means that the not “obvious” to someone skilled inventor must describe the invention in in the field of the invention. sufficient detail so as to permit anyone WHAT DOES Generally speaking, a new and skilled in the field relating to the patent “PROTECTION” MEAN unobvious product, process, apparatus to make or use the invention after Patent infringement occurs when or composition of matter, or any new or reading the description. someone makes, uses or sells your useful improvement thereto will be patented invention without your perm- patentable. ission in a country that has granted you WHAT CAN BE PATENTED a patent, during the term of the patent. Only “inventions” are patentable. The WHY OBTAIN A PATENT If your patent has been infringed, you Patent Act defines an invention to mean can sue for damages in the appropriate Patents are worth acquiring since they “any new and useful art, process, Court. You may also seek injunctive relief provide the possibility of protecting, machine, manufacture or composition of to stop the infringing activity. and keeping exclusive, commercially matter or any new and useful important technology. improvement” thereto.

NOVEMBER 2005 PAGE 1 Aird & Berlis LLP INTELLECTUAL PROPERTY LAW WHEN TO APPLY FOR A (e) keep track of the work of a time, being sufficiently specific to PATENT particular individual or company identify your invention and distinguish it by seeing what patents they from all prior inventions. In Canada, a patent application must have been granted. The writing of a patent specification be filed no later than one year after the requires specialized legal and technical earliest public disclosure of the invention skills and should be done by a registered by you (the inventor) or someone who THE PATENT APPLICATION patent agent. derives information from you. This grace In order to obtain a patent, it is period does not apply to disclosure necessary to prepare and file a patent made by anyone else and your application with the Patent Office in the EXAMINATIONS BY THE application must be on file before any country or countries in which protection PATENT OFFICE such disclosure. However, in general, it is is sought. The federal agency Once a patent application is prepared, better to keep an invention secret until responsible for granting patents in it is filed with the Patent Office. after a patent application is filed as, in Canada is the Canadian Intellectual After filing, a technically trained Canada, if two or more parties apply to Property Office, directed by the examiner will scrutinize the application patent the same invention, the patent Commissioner of Patents. for novelty, inventiveness and comp- will be awarded to the party which files A patent application contains a patent liance with formal requirements. The the patent application first, regardless of specification comprising a background examiner will also conduct a search for who made the invention first. to the invention, a summary of the previously issued patents and previously invention and a detailed description of the issued patent applications (in order to PATENTABILITY SEARCHES invention, including a preferred example(s) compare the invention to the prior art) of the invention, often including drawings. and reject or accept the claims as Before applying for a patent, it is wise The patent specification must describe proposed. As the applicant, you have to conduct a preliminary search of exiting the invention in sufficient detail to an opportunity to respond to the patents. The search will provide a good allow a person of ordinary skill in the examiner’s comments, and may choose indication of the “state of the art” and art to carry out the invention without to modify the claims to address the therefore help in determining if your undue experimentation. examiner’s concerns. invention may be patentable. The patent application includes Determining whether your invention is “claims” to define the scope of patent patentable is not an easy task. At this TIMING protection requested. The claims are stage of the process, we recommended After a patent application has been critical because they define the scope of that you rely on the expertise of a patent filed, an examination will not take place the patent rights being sought. Anything agent, who will assist in comparing your until you have requested it. The request disclosed in the specification but not invention to others and weigh similarities must be made within 5 years of the claimed is not covered in the application. and differences. It is important to note Canadian filing date, failing which, The claims must define the essential that no search will “guarantee” the your application will be treated as having elements of the invention. At the same patentability of any invention. been abandoned. time, the claims must not cover anything A search through a patent data base The Patent Office receives approximately that has previously been publicly known. can also help you: 30,000 requests for examinations per A claim in a patent may be invalid if it year. As a result, after an examination fails to adequately distinguish the (a) identify trends and developments has been requested, it is not uncommon invention from prior inventions. Invalid in a specified field of technology; for patent applications to remain claims are unenforceable. On the other pending for 2 or 3 years before resulting (b) understand what information is hand, claims that are too narrow in in an issued patent. required in the patent application scope may permit the patent to be to fully define the invention; circumvented by others. (c) identify unproductive avenues Several claims are typically included PROTESTS of inquiry by reading about the to protect different features or Patent applications are made public or current state of the art; combinations of features of the “laid open” for inspection 18 months invention. As reflected above, the after their Canadian filing date, or an (d) determine whether the invention objective is to draft the claims so that earlier foreign filing date. At that time, is in a “crowded art” where the invention is defined broadly enough anyone can raise questions about the broad protection may be to provide maximum protection against patentability of your invention or one of difficult to obtain; and potential infringers, while at the same- its claims by filing “prior art” (ie,

PAGE 2 NOVEMBER 2005 INTELLECTUAL PROPERTY LAW Aird & Berlis LLP information that might cause the examiner to object to one or more of your claims). The “prior art” can be patents, patent applications which have been open to the public for inspection or other published materials that have a bearing on the case.

FEES There are three kinds of fees you pay to obtain a patent: filing fees, examination fees and grant of patent fees. Yearly maintenance fees are required to maintain an application or a patent in force.

(a) patent application preparation and filing costs: the cost for preparing and filing a patent application in Canada for a simple invention is approximately $6,000.00. Costs are higher for more complex inventions. (b) prosecution costs: these are the costs incurred to negotiate with the examiner at the Canadian Intellectual Property Office. These costs vary widely, but are typically anywhere from $3,000.00 to $5,000.00 over a period of two to five years. (c) maintenance fees: most countries charge “maintenance fees” which must be paid periodically throughout the patent application process and throughout the term of the granted patent. These fees vary widely, but range from approximately $100.00/year in the early stages to approximately $450.00/year in later stages.

FOREIGN CONSIDERATIONS Most countries, including Canada, belong to the “Paris Convention.” Applications filed by applicants in Convention countries within one year of the first application for a patent are entitled to priority from the date of the application abroad.

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If you have questions regarding any aspect of BCE Place, Suite 1800 P.O. Box 754, 181 Bay Street Intellectual Property law, please contact any member Toronto, Ontario, Canada of the Aird & Berlis LLP Intellectual Property Group: M5J 2T9 T 416.863.1500 F 416.863.1515 Lawyers: www.airdberlis.com

R. Grant Cansfield 416.865.7741 [email protected]

Don Johnston 416.865.3072 [email protected]

John Longo 416.865.7785 [email protected]

Lori Mattis 416.865.7707 [email protected] Editor: John Longo Karen Ng 416.865.4644 [email protected] T 416.865.7785 Howard Winkler 416.865.3062 [email protected] E [email protected] Any of the articles or papers written by our professionals can be viewed at: www.airdberlis.com

Intellectual Property Law offers general comments on legal developments of concern to business organizations and individuals and is not intended to provide legal opinions. Readers should seek professional legal advice on the particular issues that concern them.