Intellectual Property Patents

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					Intellectual Property: Patents

What is a patent?

A patent is a method of protecting and promoting the ingenuity of inventors. Patents are an agreement
between the inventor and the public. The patentee has a monopoly over the use of his/her invention for a
set period of time. In exchange for this monopoly, the invention is completely disclosed to the public in
the patent. The premise of patents is to get inventors to share their inventions with others, and allow for
the growth of public knowledge. Patent protection is set out in Canada and the US by their respective
Patent Acts, and internationally by the World Intellectual Property Organization (WIPO). Patent criteria
are as follows: your invention/discovery must be patentable subject matter, it must be novel, it cannot be
obvious to someone skilled in the art, and it must serve some useful purpose (utility). A patent will
typically afford protection for 20 years, and it is country specific.

How long does patent protection last?

The length of patent protection depends on the jurisdiction, the following is a list of jurisdictions, the
length of protection, and the date the protection commences.

Type of Patent                      Length of Protection from the Filing date of the Application

Canada , United States &
                                    20 years
American Provisional Patent         12 months
PCT – Patent Cooperation
                                    The international phase lasts 30 months from the 1st filing date

What can be protected by a patent?

In general, any new and useful art, process, machine, manufacture or composition of matter, or any new
and useful improvement of any art, process, machine, manufacture or composition of matter is patentable.
However, certain inventions/discoveries are not patentable in Canada, and elsewhere. The following is a
brief description of commonly patented material:

Higher Life Forms

         The definition of a higher life form in Canada is not crystal clear, but courts generally interpret
higher life forms to mean multicellular plants, animals, and fungi. In Canada, higher life forms are not
technically patentable subject matter; however, their gene sequences are patentable. As a result, if a
transgene is inserted into a higher organism, the resulting cells can be protected by patents, effectively
giving protection for the entire organism. Outside of Canada, there is no distinction and an entire higher
life form, excluding humans, can be patentable. Human beings are not patentable, though in the future it
may be possible to patent human related products, such as organs, tissue, etc.

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Discovery or Invention

Technically, a mere discovery may not be patentable subject matter. There has to be a practical solution
that can be solved with your discovery. If your discovery is a practical solution to a problem, then the
method or resulting device created to solve the problem could be patentable. A possible test involves
asking the following questions; is there a new process, a new result, a new product, or a new combination
for producing an old product? Answer yes to any of these questions and you could have a patent.

Discovery of a New Use/Improvement for a Previously Known Article

Ninety percent of Canadian patents are improvements on previous inventions. There can be a patent for
the idea of a new use or improvement for a previously known article. The inventive ingenuity is in the
discovery of a new solution to a problem or to the improvement. A patent in this regard will only extend
to the new use or to the improvement, and not to the article itself. Certain improvements are not regarded
as patentable, such as,

    -   Adding an inert carrier to a drug
    -   Diluting or concentrating a substance
    -   Perceiving an advantage of something that was always present yet never recognized (this is mere

Combination of Articles

For a combination of articles/matter to be patentable subject matter and considered an invention there
needs to be the following:

    -   Synergy between the elements
    -   The elements must combine to form a unitary result. If any element in the arrangement gives its
        own result, without any result flowing from the combination there is not an invention

Professional Skill or Judgement

Matters of professional skill or judgment are not patentable. A patent that is autonomous with a
professional skill, such as the skill of a doctor, is not patentable. A method to clean teeth with a certain
chemical will not be patentable. However, the chemical itself will be patentable if it meets the criteria of
the Patent Act. If a proposed patent could have an economic value and it used in conjunction with, and
not synonymous with professional skill, then it could be patentable.

What are the different kinds of patent protection?

Canadian Patent

The Canadian Patent regime is one of the most stringent patent regimes in the World.

American Patent

Obtaining an American patent is seen as one of the most advantageous patents, since it provides access
and protection in one of the world‟s largest markets. The American Patent process and Canadian Patent
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process are nearly identical. Like Canada, once an invention has been disclosed there is a one year „grace
period‟ to apply for a patent.

There are three main kinds of US Patents: Utility Patents, Design Patents, and Plant Patents. Utility
patents are patents over any new or improvement of a machine, process, article of manufacture, or
composition of matter. Design patents are granted for any ornamental design for an article of
manufacture. Finally, plant patents protect any new, asexually reproducing variety of plant.

International Patent (PCT)

A PCT is an international notice of a pending patent application. It was designed so that inventors can file
one application to obtain the right to protection for their inventions in participating countries. The patents
are obtained in two phases, the international phase and the national phase. The international phase
involves submitting the application and an initial, international patent search to determine if there are any
prior similar patents filed. The national phase involves applying for protection in individual countries, or
a particular regional group of countries (Eurasian, African, etc.).

If international protection is sought, then this method provides the simplest method to preserve the right
to protection as opposed to applying in each individual country. It is one application, and one set of initial
fee payments.

This method is also the most expensive, and depending on the potential gain from a particular invention,
it may not be the most viable.

The biggest difference between North American and all other patent systems is the lack of a one- year
„grace period‟ after disclosure to apply for patent protection. Eligibility for a PCT patent will depend
on many factors, namely whether an invention is disclosed publicly or sold anywhere in the world
prior to the PCT application, as this will bar patent protection in most countries outside of North
America. Importantly, there are different eligibility requirements in different countries that must
be taken into account when filing for full patent protection. For more information contact the Office
of Research Services or go to

US Provisional Patents

A provisional patent is a simpler, cheaper way to initially obtain patent protection. Provisional patents
were created when the North American patent system changed from first to discover to first to file. The
intent was to provide a vehicle that would facilitate filing of patentable material as close as possible to the
time of invention. The requirements for obtaining a provisional patent are much less stringent than a
regular US patent. This is important when you would like to disclose your invention or research.
DOMAIN OUTSIDE OF US AND CANADA. The provisional patent application allows the benefit of
an earlier filing date when all material and information for a regular patent are not ready.

A provisional patent lasts for 12 months. A patentee may chose to file a non-provisional, or regular patent
application at, or before the expiry of their provisional patent. In filing a non-provisional, or regular
patent application, all regular fees of a US patent apply.
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IT IS IMPORTANT TO NOTE that you must have an application for a full patent in place BEFORE
the expiry of the 12 month period. If an application is not in place, then your work will become a part of
the public domain.

Which patent is best for my invention?

There are a number of criteria used to determine the best kind of Intellectual Property protection such as,

        The cost of invention,
        Patenting cost of a particular jurisdiction vs. the profitability of the invention.

Please contact the Office of Research Services to help you determine the best course of action.

What are the criteria for obtaining a Patent?

Patentable Subject   In most jurisdictions, what can be patented is any new and useful machine,
Matter               process, article of manufacture, or composition of matter, or any new or useful
                     improvement of any of the above. Certain articles are not presently patentable,
                     such as genetically modified organs, professional skill, and abstract scientific
                     theorems (e.g. e=mc2).
Non-Obvious          Was the invention/discovery not obvious to someone with average skill in your
Novel                The invention/discovery must be new compared to anything that came before it.
Utility              It must be useful, i.e. does it do something?
Does your invention already exist? Do a preliminary search of what is invented or already patented

    -   Go to the Canadian Patents Database on the Candian Intellectual Property Office at
    -   The US Patent and Trademark Office
    -   Search any scholarly publications for your invention
    -   Or sign up for the CIPO client database for more comprehensive search options

Preparing a Patent Application

Under the collective agreement, you are under a duty to disclose your application for a patent at least
thirty (30) days before the filing of that patent to the Provost and/or Office of Research Services.
Deciding what to include in a patent application is a very complicated and time consuming process, it is
recommended at this point that you speak to the Office of Research Services and/or retain a Registered
Patent Agent skilled in your field to assist you.

Who do I name as a patent as an inventor to the invention?

As a rule, an inventor(s) is the only person who can apply for a patent. Contributors are not inventors, and
are not included in the application. An inventor is someone who contributes their own ingenuity to a

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patent, and this can include colleagues, researchers and graduate students. When including any names on
a patent, your legal name must be used, ie. the name that appears on your birth certificate or citizenship

In the United States the actual inventor(s) must authorize the patent application by way of oath or
declaration. However it is the owner of the invention that has the ability to licence, assign, share, or sue
for patent infringement. Ownership is determined by the particular state contract law, or could be found
in applicable employment agreements.

What if there is more than one inventor to a patent, what are the rights of each inventor?

In Canada, absent any agreements to the contrary, co-owner/joint inventor of a patent cannot sell or
transfer his or her portion, nor can he or she license a patent without the permission of the other co-
owners/joint inventors.

In the US, the opposite is true, subject to any agreements to the contrary, an individual co-owner/joint
inventor can sell or transfer his or her full portion or any part of a patent, as well as license 3rd parties
without the permission of the other co-owners/joint inventors. In each case, it is prudent to have an
agreement between the joint inventors/co-owners of a patent to set out the rights of each owner, that
agreement will take precedence in law.

Can I disclose my invention before I apply for a patent?

The short answer is NO. The more complicated answer is that it depends on where you want to patent
your invention. In Canada and the US, there is a one year grace period to apply for a patent from the time
the invention is disclosed publicly. Once the one year time period has passed any ability to obtain patent
protection will be lost. Public disclosure includes: publishing the details of an invention in a peer
reviewed journal, presentation of the invention at a conference or speech. In the US, applying for funding
from any government agency (NIS, NCBI, etc.) is disclosure. In the US these agencies are not under any
non-disclosure agreements, and there exists American freedom of information legislation that allows the
application to be accessed by anyone.


What if I don’t disclose my invention, how long do I have to apply for a patent?

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If no one else has come up with your invention, then technically you can apply anytime after your
invention is made. However, this is not recommended. IT IS IMPORTANT TO NOTE, if someone
else comes up with the same invention and files an application and you do not, then you will not have
patent rights for your invention. In Canada the first person to file, and NOT the first person to invent, is
the one that obtains patent rights.

Another type of intellectual property protection, a Trade Secret, might be useful here. Trade secrets (like
the formula for the ingredients in Coca Cola) are exactly that, secrets that are not easily ascertainable and
allow you to have an advantage over competitors. It protects information through non-competition and
non-disclosure agreements that bind employees, suppliers, and clients. HOWEVER, the secret is only
protected when it is not disclosed; if it were to become public knowledge then it will no longer be

Trade secrets can be difficult to maintain over time, especially as more and more people become aware of
the secret. If someone comes up with your secret independently, and commercialize it (obtain patent,
copyright or trademark protection) then there it can be difficult to stop them.

How much does it cost to get patent protection?

Patent costs are a combination of fees charged by the Patent Offices and legal costs. Since obtaining
patent protection is difficult without a Patent Agent/Lawyer, it is a very costly venture. As of May 2009,
the fees payable and the approximate legal costs of obtaining different patents are:

Patent Type              Approximate Application Cost
Canadian Patent          Application Fees: $3000. Legal Fees: $10,000 & up.
US Patent                Application fees: US$1620-$2900, Legal Fees: US$40,000-$70,000.
US Provisional Patent    Application Fees: US$270. Legal Fees: US$5000
PCT                      International Application Fees: approx. $3400-$4200, Legal Fees: $10,000 & up.
                         In addition to the International application fee, an application fee must be paid in
                         each individual country that you wish to obtain protection. Often there is a set fee
                         for a region or group of countries.
Once a patent is obtained, there are also maintenance fees to preserve the patent, each country is different.
In Canada, the maintenance fees over the life of the patent are $2 400. In the US, the total maintenance
fee is US$7 570.

Should I vest ownership of the Patent personally, or should I vest ownership of the Patent to the

There are advantages and disadvantages to both. The most important advantage to vesting ownership of a
patent to the University is that the University is less likely to go bankrupt, as opposed to a private citizen.
Bankruptcy results in the forfeiture of all patent rights.

What is a Software Patent and what qualifies as a software patent?
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An entire computer program cannot be patented, but some parts may be eligible. Software patents and
software in general is a highly contested area of the law. Software protection can usually be an amalgam
of both Copyright and Patent Protection. The separation lies in the protection of the implementation of an
idea versus the protection of the expression of that idea; the latter is copyright, the former is patent. One
way to think about it is that patents protect the method used to perform a function in a program, not the
program itself, while a copyright protects the way that method is expressed, through code as a part of that

What is the meaning of Invention as a patent criterion?

Invention is judged from the claim date of your invention/discovery. The claim date can have two
meanings. If the patentee filed the same patent in another country, then they can use that date as their
claim date. The patentee will have to use the filing date of their Canadian patent application as their claim
date in two circumstances. Firstly, if the patentee did not file the patent in another county, or if their
previous international patent lacked the subject matter present in their current patent application, then
they would have to use their Canadian filing date.

The test for invention is:

        “Would an unimaginative skilled technician at the date of the invention light of his general
        knowledge and the literate and information on the subject available to him on that date, have been
        led directly and with out difficulty to your invention?”

If the answer to this question is yes, then the invention was obvious to the court. However the answer to
this question is not simple and many factors are involved. The skilled technician is a fictitious person
created by the courts. They can be a composite person with an unheard of skill set, yet they are not an
expert of their field, just a technician. The skilled workman in this test must not have a “scintilla of
inventiveness or imagination.” They must be able to arrive at the invention without difficulty. Some trial
and error is permitted. However only the kind that involves no inventive skill, which would be akin to
figuring out the proper screw (note this is an unsettled area of the law). The knowledge that the skilled
technician possesses may be a mosaic of knowledge. There needs to be evidence for the judge to decide
what could be done commercially, what was practical, and what was seen as not being commercially
predictable at the time. There cannot be any tailoring of the existent state of knowledge at the time of the
invention. Also the skilled workman is only expected to have a reasonable or an industry standard amount
of knowledge in mind. For instance, an unpublished foreign manuscript that no one would think to read is
not a piece of knowledge that a skilled workman in the area would possess. The court recognizes that in
hindsight everything is obvious. Thus a defence to this test is; it could not have been that obvious if it was
not thought of before.

What is novelty?

A patent can be void for anticipation; meaning it is a clever invention but it was already known. This
criterion usually hinges on the dates of the disclosure of your invention. In some cases it can be any
disclosure of your invention will inhibit your chances for a patent. Or there is a year grace period where

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you could have disclosed your invention without any penalty. It is best not to disclose your invention,
especially if you plan to patent internationally; any disclosure could hinder your chances for a patent.

What can be used as evidence of Anticipation?

As the law stands any enabling disclosure can be considered evidence of anticipation. Enabling is
synonymous with instructions for your invention. The question becomes does your type of disclosure
allow others (namely the skilled yet unimaginative technician) produce your invention? The prior
disclosure must provide clear and unmistakeable directions on how to make your particular invention.
What is considered enabling disclosure depends on your invention. For instance showing a pill at a
conference that you state could solve hair lost possibly will not be considered an enabling disclosure. The
mere sight of a generic pill without the opportunity for anyone to perform a chemical analysis is not an
enabling disclosure. However if the colour itself was the key ingredient to the invention, which would be
obvious to any skilled yet unimaginative technician, then this is enabling disclosure.

What is the meaning of Utility?

Patents are empirical in nature. The patent specification (directions) must produce its stated results. If the
patent does not do what it has promised, then the patent is inoperative and thus invalid. However the test
for utility is very low. Patent specifications which omit essential steps could result in the patent being
revoked. The court will assume a skilled technician of the area is reading the specification, and they
would know certain conventions. For example, a patent specification that calls for a technician to make an
ionic solution that is compatible for normal skin. Depending on the knowledge of chemist at the time, this
could be common knowledge to a skilled chemist. However, if creating an ionic solution suitable for
human skill is the invention, then it must be described completely in the specification.

Chemical/pharmaceutical patents can involve “sound predictions.” Patentees in discovering that a
chemical composition has a certain property can expand their claim to cover all similar classes of
compounds. Thus the patentee will have patent rights over all the derivatives of those compounds.
However if the prediction is proven to be unsound, then the entire claim could fail. Unsound meaning that
a compound in the prediction does not produce the specified result or have the claimed property.

Are there any Citizenship issues I should be concerned about?

Both the United States and Canada are members of international patent treaties. As a result, there are no
such citizenship requirements to file patent applications in the US & Canada. However for a foreign
patentee applying for an American patent an oath/declaration must be taken as a formal requirement of
their application. The oath may be taken within the Untied States or abroad at an American consulate
office. When applying for a patent be sure to discuss these considerations with the Office of Research
Services or your patent agent.

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