Intel­lec­tual Property Law Resources

What is a Patent?

Patents pro­tect inven­tions. Patents are issued by the gov­ern­ment of each coun­try and grant to the owner the right to pre­vent any­one else from mak­ing, using or sell­ing the inven­tion cov­ered by the patent in that country.

An inven­tion is any new and use­ful machine, device, appa­ra­tus, sys­tem, method, process or com­po­si­tion of mat­ter. Because of the require­ment that the inven­tion be “new”, it is impor­tant that inven­tor not tell peo­ple about the inven­tion prior to fil­ing for patent pro­tec­tion so as to not ren­der the inven­tion no longer “new” and there­fore unpatentable.

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What Can be Patented?

In order to be eli­gi­ble for patent pro­tec­tion, you must show that your devel­op­ment fits within a rec­og­nized cat­e­gory of patentable sub­ject mat­ter. In Canada, your devel­op­ment must either be an art, process, machine, man­u­fac­ture or com­po­si­tion of matter.

Arts and processes are steps or meth­ods which act on objects to achieve a result. Machines are a group­ing of com­po­nents which act together. A man­u­fac­ture is some­thing made by man or a machine and a com­po­si­tions of mat­ter includes chem­i­cal compositions.

To be patentable, and after first fit­ting within one of the fields of patentable sub­ject mat­ter, a devel­op­ment must be new, non-obvious and useful.

New

To be con­sid­ered new, the sub­ject mat­ter must not have been sold, pub­lished, or oth­er­wise avail­able to the pub­lic before that appli­ca­tion is filed. This includes where the inven­tor dis­closes the inven­tion to the pub­lic as well when some­one else dis­closes the inven­tion. A sin­gle prior pub­li­ca­tion can also ren­der a patent not “new” if it dis­closes every essen­tial ele­ment of claimed invention.

This is one of the rea­sons why it is imper­a­tive that a patent appli­ca­tion is filed before the inven­tion is dis­closed to the pub­lic. Although the inven­tor may be able to file an appli­ca­tion up to one year after the inven­tor dis­closed the inven­tion, this abil­ity is lim­ited to select coun­tries, such as Canada and the US. In most other coun­tries, no patent pro­tec­tion is avail­able after the inven­tion has been dis­closed. This one year “grace period” is also lim­ited only to dis­clo­sures by the inventor.

Non-obvious

The devel­op­ment must also be not obvi­ous to a per­son of ordi­nary skill of the art. This is some­times referred to as requir­ing an inven­tive step. The per­son of ordi­nary skill in the art is expected to have nor­mal skill and knowl­edge in the field of the invention.

The prior art that is con­sid­ered avail­able is all patents, patent appli­ca­tions and pub­li­ca­tions avail­able at the claim date of the inven­tion in ques­tion. Essen­tially, if the inven­tion in ques­tion would have been sug­gested to this per­son based on their knowl­edge and the avail­able prior art to arrive at this inven­tion, it is con­sid­ered obvi­ous and there­fore unpatentable.

The deter­mi­na­tion of obvi­ous­ness is a dif­fi­cult legal test to apply in addi­tion to being slightly dif­fer­ent in most coun­tries. If you have any doubt about whether your devel­op­ment is obvi­ous, please con­tact us.

Use­ful

Util­ity requires the devel­op­ment to actu­ally work. This is typ­i­cally the eas­i­est require­ment to sat­isfy. This require­ment is usu­ally met where it can be shown that the device will per­form the func­tion it is intended to do.

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What Can’t be Patented?

In Cana­dian law, sci­en­tific prin­ci­ples or abstract the­o­rems are explic­itly excluded from patentabil­ity. This would include math­e­mat­i­cal for­mu­lae or laws of nature. Sim­i­larly, Cana­dian courts and the Cana­dian Patent Office have indi­cated that they also con­sider other types of sub­ject mat­ter to be unpatentable. Sig­nif­i­cant exam­ples include higher life forms, a series of men­tal steps, schemes or plans of doing busi­ness, meth­ods of med­ical treat­ment and meth­ods rely­ing on pro­fes­sional skill.

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What is a Trade-Mark?

Trade-marks pro­tect the name or logo of a com­pany. Trade-marks grant their owner the right to pre­vent any other party from apply­ing the same or a con­fus­ingly sim­i­lar mark to sim­i­lar prod­ucts and ser­vices or to closely related prod­ucts and ser­vices in some cases.

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What Can Be Trade-Marked?

A trade-mark may be a word, design, logo, sound or color. Trade-marks is used to dis­tin­guish the wares and ser­vices of the owner from their com­peti­tors. A trade-mark may also be a com­bi­na­tion of more than one of these elements.

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Reg­is­tered Trade-Marks vs. Unregistered

Trade-marks may be reg­is­tered, how­ever, the mere adop­tion and use of a mark may pro­vide some pro­tec­tion to the owner as an unreg­is­tered mark. An advan­tage of reg­is­tra­tion of a trade-mark include pre­vent­ing infringe­ment or pass­ing off across Canada as opposed to only locally in the case of unreg­is­tered marks. Addi­tional advan­tages include the right to file cor­re­spond­ing trade-mark appli­ca­tions in other coun­tries and pre­vent­ing oth­ers from fil­ing appli­ca­tions for sim­i­lar marks.

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Require­ments for Reg­is­ter­ing a Trade-Mark

Unlike patents, there is no need for secrecy before fil­ing a trade-mark appli­ca­tion. The require­ments for reg­is­ter­ing a trade-mark in Canada are that the mark must not be:

  • ·    The name of a person;
  • ·    Descrip­tive of the prod­ucts or ser­vices it is used with;
  • ·    Con­fus­ingly sim­i­lar to a pre­vi­ously used or reg­is­tered mark; or
  • ·    Pro­hib­ited in as an “offi­cial mark” in Canada, such as the flag crest or arms of a gov­ern­ment body.

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What is a Copyright?

Copy­right pro­tects orig­i­nal lit­er­ary, dra­matic, musi­cal, artis­tic and other sim­i­lar works. Copy­right pro­tec­tion may also extend to soft­ware. Copy­right arises auto­mat­i­cally and is held by the orig­i­nal author of the work in ques­tion. The copy­right owner has the exclu­sive right to pro­duce, repro­duce, per­form or pub­lish the copy­righted work.

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What are Indus­trial Designs?

Indus­trial designs (called “Design Patents” in the United States) pro­tect the shape, pat­tern or orna­men­tal fea­tures of a man­u­fac­tured arti­cle. Indus­trial designs are pro­tected by obtain­ing an indus­trial design reg­is­tra­tion (design patent) in that coun­try and have a term of 10 years (14 years for US design patents).

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What Indus­trial Designs are Registrable?

An indus­trial design is lim­ited to the aes­thetic fea­tures of the arti­cle that appeal to and are judged solely by the eye. The reg­is­tra­tion may also pre­vent the use by oth­ers from sell­ing arti­cles hav­ing designs which sub­stan­tially sim­i­lar to the reg­is­tered indus­trial design (or design patent).

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What Indus­trial Designs are Not Registrable?

An indus­trial design is not per­mit­ted to cover aspects of the arti­cle which are dic­tated by the way the arti­cle func­tions. Sim­i­larly meth­ods or processes of con­struct­ing that arti­cle are also not reg­is­ter­able. Either of these aspects are more prop­erly pro­tected by a patent.

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What Are the Time Lim­its for Reg­is­ter­ing an Indus­trial Design

In Canada and the United States, sim­i­lar to patents (often called “util­ity patents” in the United States), an indus­trial design appli­ca­tion must be filed within one year of the first pub­li­ca­tion of the design or sale of the arti­cle hav­ing the design applied to it. In many other coun­tries, a design is not reg­is­ter­able if it has been dis­closed to the pub­lic (for exam­ple by describ­ing, sell­ing, pub­licly dis­play­ing or dis­trib­ut­ing it) before a design appli­ca­tion is filed. There­fore, in prac­tice, a design appli­ca­tion should be filed before the design is pub­lished or any arti­cles hav­ing the design applied thereto are sold.

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