You don't patent the name of a business (that's a trademark), and you don't patent a book, a song or a play (that's copyright).
You do patent an original and useful invention.
A patent is, at its simplest, a monopoly that the Government of Canada, and other governments in other countries, grants to inventors for a period of time (currently 20 years in Canada from the date of filing) for the exclusive right to make, sell, import, use or otherwise commercially exploit a new invention. In exchange, our society gains disclosure of the invention and free use of it after the patent expires, which is how innovation is fostered.
An invention might include a new kind of machine, tool or device, a new method of manufacturing, or even a new composition of matter such as a pharmaceutical, a food or a chemical product. One can also patent a useful improvement to an existing patented invention. The Government of Canada's website on patents indicates that 90 per cent of all new patent applications are for improvements to existing patented inventions. In some cases, a license may be required from the owner of the original invention to make and use the improved invention, in other cases not. Its best to get some legal advice on this.
There are three basic criteria to register a patent:
• An invention must be new in the sense that it was not made publicly available before you filed a first patent application covering it. The applicant has to be the original inventor, or his or her assignee, and not someone who has taken a product or process developed by someone else.
• The invention must show utility in that it is functional and works as it’s supposed to. So if your “ perpetual motion machine” doesn't work (they never do, by the way), then the invention will not be patentable.
• Your invention must show inventive ingenuity and not be obvious to someone who may be skilled in that particular discipline.
Susan Ben-Oliel, a Vancouver lawyer and patent agent with many years of experience with law firms and in the technology industry, says there are some pitfalls to avoid when trying to protect an invention. First and foremost, she recommends inventors be careful not to make any public disclosures before filing a patent application. “If disclosure is necessary for any reason, only do so under a Non-disclosure or Confidentiality Agreement.
“Although Canadian and U.S. laws allow inventors one year ‘grace periods’ to disclose inventions publicly, at trade shows for example, before an application is filed, most other countries don’t extend the same courtesy. So, if long-term plans include protecting your invention in say, Europe or Japan, pre-filing secrecy is paramount.”
Ms. Ben-Oliel recommends taking the time to do comprehensive patent searching before any patent application is filed. “As an inventor, you can get started with some basic searching on your own using Google Patents and Free Patents Online, among other sites. If your idea is not novel, you’ll probably find articles or patents that describe your idea exactly.
“If you don’t find a knock-out in your searching, you should hire a professional for further searching. It’s not enough that you’ve never heard of anyone making your product nor should your searching end after that evening of Google surfing,” she says. “You’ll never regret professional searching. In fact, it will immensely help your patent agent in drafting the best possible patent claims, with the highest chance of getting the patent allowed.”
Remember that patent examiners can reject your claims if they lack novelty or inventiveness based not only on prior published patents and patent applications, but on any prior published material including journal papers, catalogues and textbooks.
Ms. Ben-Oliel also suggests your patent application adequately describe your invention. It’s possible to file provisional patent applications with very little description and no claims in order to secure an early filing date, but it’s best to try to include as much information as possible, even in early-stage applications. Once a non-provisional patent application is filed, it must contain sufficient detail to allow a person skilled in that technical area to make your invention, without undue extra work and experimentation. In other words, critical information cannot be omitted.
In most countries, including Canada, it’s a race to be the first to file a patent application for an invention. If another inventor independently developed the same invention and beats you to the patent office you’re likely out of luck.
“Not everything can be patented in Canada,” Ms. Ben-Oliel notes. “You cannot patent a scientific principle or abstract theorem. Some good examples of patentable subject matter include a new microbiological process for making an antibiotic, a new internal combustion engine or an improved screwdriver. Examples of subject matter that is not patentable include methods of medical treatment, higher life forms, computer programs per se and professional methods, for example a method of speech therapy.”
The Patent Office in Canada is part of the Canadian Intellectual Property Office and it is mandated with vetting patent applications and processing them. Patent applications are normally prepared and filed by registered patent agents. The costs are difficult to estimate and vary widely by the complexity of the invention. Generally, for a simple mechanical device, to prepare and file an application through an agent in Canada would be between $4,000 and $6,000.
For complicated applications and where the application is rejected by the examiner, or there are other factors that make the process more difficult, fees and related costs can double, triple or more, so an inventor is wise to budget accordingly. Due to the cost, patents may not be for the faint of heart but, for better or worse, they have become essential and highly valuable assets in many companies today.
One in a series of columns on intellectual property for small business: Check out branding and the need for trademark protection from March 30, protecting your metadata from April 28, and copyright for small business on May 20.
Special to the Globe and Mail
Vancouver franchise lawyer Tony Wilson is the author of Buying A Franchise In Canada – Understanding and Negotiating Your Franchise Agreement and he is ranked as a leading Canadian franchise lawyer by LEXPERT. He is head of the Franchise Law Group at Boughton Law Corp. in Vancouver and acts for both franchisors and franchisees across Canada, many of whom are in the food services and hospitality industry. He is a registered Trademark Agent, an Adjunct Professor at Simon Fraser University and he also writes for Bartalk and Canadian Lawyer magazines.
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