PATENT LAW IN CANADA

This article gives a general description of patent law in Canada. The information contained in this article is of a general nature only and is not intended to cover the entire area of law relating to patent law in Canada. Furthermore, this information is not directed toward a particular factual situation, and does not constitute legal advice. If you have any questions of a legal nature, or of how the law applies in a particular situation, please consult with a lawyer.

Canadian patent law provides inventors (or their assignees or legal representatives) with an opportunity to protect their “invention” in Canada by means of a Canadian patent.

A Canadian patent provides the patent owner with the exclusive right to make, sell and use the patented invention in Canada throughout the life of the patent (to also obtain patent protection in other jurisdictions, a patent must also be obtained in those other jurisdictions).

The Canadian Patent Act provides that an "invention" is “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter”. To be patentable, an invention must also be non-obvious. The Canadian Patent Act specifically excludes from patent protection mere scientific principles or abstract theorems.

An example which the Canadian Patent Office uses is as follows:

“The invention can be a product (such as a door lock), a composition (such as a chemical composition used in lubricants for door locks), an apparatus (such as a machine for making door locks) or a process (such as a method for making door locks), or an improvement on any of these”.

A patent contains a description of the invention (often including one or ore drawings) followed by one or more claims which define the scope of protection provided by the patent.

As set out in the Patent Act, the description must (a) correctly and fully describe the invention and its operation or use as contemplated by the inventor; (b) set out clearly the various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter, in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which it pertains, or with which it is most closely connected, to make, construct, compound or use it; (c) in the case of a machine, explain the principle of the machine and the best mode in which the inventor has contemplated the application of that principle; and (d) in the case of a process, explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions.

A complex scheme (which is set out in Sections 28, 28.1, 28.2, 28.3 and 28.4 of the Canadian Patent Act) is used to determine whether a particular patent application was filed soon enough to be eligible for patent protection in Canada. Because the failure to file a patent application on a timely basis will result in the loss of patent rights, and because the complexity of legal scheme set out in the Patent Act is beyond the scope of this article, it is strongly recommended that inventors who may wish to obtain Canadian patent rights for their invention contact and retain the services of a Canadian patent lawyer or patent agent very early on in the invention/development process and certainly prior to any disclosures of their invention to ensure that their Canadian and international patent rights will be protected.

In addition, the drafting of a patent application and the process of dealing with the patent office are very complex legal tasks which require significant professional skill and knowledge of Canadian and international law and procedure. For these additional reasons you are strongly encouraged to retain the services of a patent agent or patent lawyer to assist you in this process.

A list of Canadian patent agents may be found at the Canadian Patent Office.

ABOUT THE AUTHOR

Philip B. Kerr is a Canadian lawyer, patent and trademark agent, and a partner in the firm of Kerr & Nadeau, whose law practice is restricted to patent, trademark, copyright and computer law. He was called to the bar in 1986.

Kerr & Nadeau has two locations:

Ottawa Location:

Kerr & Nadeau
200 Isabella Street
Suite 405
Ottawa, Ontario
CANADA K1S 1V7

Telephone: (613) 238-2002
Facsimile: (613) 230-2725

Halifax Location:

Kerr & Nadeau
1969 Upper Water Street
Purdy's Wharf, Tower II, Suite 2200
Halifax, Nova Scotia
Canada, B3J 3R7

Telephone: (902) 422-6376
Facsimile: (902) 429-5237

For further information on patents, please feel free to visit Canadian Patent Law, a free Canadian Website.