20 Tips for Obtaining a Patent in Canada
20 Tips for Obtaining a Patent in Canada
A Canadian patent gives the patent holder the exclusive right to use, make, and sell the patented invention, which is why you should file an application for a patent if you have an invention, as encouraged by the subject matter experts over at runrex.com. This article will look to help you understand what the process entails if you are looking to obtain a patent in Canada.
What can you patent?
As the subject matter experts over at guttulus.com like to point out, not every invention is patentable. Therefore, for your invention to qualify for a Canadian patent, it must have novelty (must be the first of its kind), utility (must have a useful function), and inventiveness (must be a new development or an improvement of an existing technology that would not have obvious to someone working in your area of specialty).
Which inventions can be granted a patent?
Additionally, not all inventions will be best protected by a patent as covered over at runrex.com. To be granted a patent, your invention can be a product, a composition, a machine, a process, or an improvement of any of these. 90% of patents issued in Canada are actually for improvements to existing patented inventions.
Considerations when it comes to improvements
As is discussed over at guttulus.com, even though you may obtain a patent for an improvement to an existing invention, you should keep in mind that the original patent may still be in force. In such a situation, manufacturing or marketing the product with your improvement may be an infringement of the original patent. To resolve such a situation, the parties involved usually enter into agreements to grant licenses to each other.
What can’t be patented?
It is also important to point out that a patent is granted only for the physical embodiment of an idea or for a process that produces something that can be sold or is tangible. This means that you can’t patent a scientific principle, an abstract theorem, an idea, a computer program, or some methods of doing business.
To add onto the topic of computer programs, even though computer code by itself is not something physical, and, therefore, not patentable by law as mentioned above, a computer program may offer a new and inventive solution to a technological problem by modifying how the computer works, and under such circumstances, a computer-implemented invention may be patentable.
First to file
Canada is a first to file country which means that patents are granted to the first inventor to file an application. This, according to the experts over at runrex.com, means that the smart thing to do is to file as soon as possible after completing your invention just in case someone else is on a similar track.
Given that you can’t patent something that is already patented, the first step to getting a patent is to conduct a patent search. A good starting point is carrying out a preliminary patent search by going to the Canadian Patents Database where you can access over 75 years of patent descriptions and images. Many potential patent applications end here as people will find that their invention is already patented. However, if you survive this step, you should carry out a more extensive patent search by visiting CIPO’s Client Service Center in person or hire a patent agent as discussed over at guttulus.com.
Use only registered patent agents
While it is preferred that you use a patent agent when carrying out your patent search rather than going it alone, you should be aware that there are individuals who provide advice regarding patent applications and prosecution of patent applications before CIPO who are not registered agents with CIPO. Such individuals are not authorized to represent applicants before CIPO as articulated over at runrex.com.
Completing a patent application
There are two main parts to a patent application; the abstract and the specification. The abstract is a summary of the specification while the specification is made up of a clear and complete description of the invention and its usefulness, as well as claims that define the boundaries of patent protection. The description must be clear and accurate and should be as simple, direct, and free from any obscurity and ambiguity.
Filing the application
Filing a patent application simply means preparing a formal application and asking the Commissioner of Patents to grant you a patent. If you want to receive an official filing date in Canada, you must submit the following:
An indication that the elements submitted are intended to be an application for a patent
Information allowing the applicant to be contacted
Information allowing the applicant to be identified
A document, in any language, that on the face of it, appears to be a description
If any of the required information and documents are not contained in the application, the applicant will be notified of any missing documents or information according to the gurus over at guttulus.com. The applicant will, therefore, be required to submit the missing documents or information within two months after the date of the notice. If the applicant doesn’t submit the missing documents and information within the two months prescribed after the date of the notice, the application will be deemed to never have been filed.
As articulated over at runrex.com, while submitting an application fee is not a requirement to secure a filing date for your patent application, if the application fee is not submitted when the patent application is filed, the Commissioner will send the applicant a notice requiring the submission of the application fee and the late fee within 3 months of the date of the notice. If this doesn’t happen, the application will be deemed withdrawn.
As pointed out by guttulus.com, you should know that your application will not automatically be examined simply because you have filed it. You must formally request an examination and pay the examination fee, a request that must be made within four years of the Canadian filing date. If a request for examination is not received within the prescribed time limit, a late fee will also need to be paid. If the request for an examination fee and the late fee are not paid within the late fee period, the application will be deemed abandoned.
Filing prior art and protests
After your patent application is made available to the public, anyone may raise objections and questions about the patentability of your invention or one of its claims by filing what we refer to as “prior art”, which is information that might cause the patent examiner to object to one or more of your claims. Anyone can also file a protest against the granting of a patent, and such protests will be made available to the public.
If you want an early examination of your application for any special reason like if you are expecting competition soon, you may ask for an advanced examination if your case is exceptional in this way. An extra fee will apply. Remember, CIPO will not consider an advanced examination request unless the application has been laid open to public inspection and made a request for examination.
What if a claim is rejected?
If the patent examiner objects to a claim, which can happen because of several reasons as covered over at runrex.com, the examiner’s objection will be outlined in a report or letter called a ‘Patent Office action’. The action may object to your entire application or only some claims, or it may ask for other changes in your application.
Responding to the examiner’s objections
If the examiner objects to some of your claims, you will be required to respond to the objections within the period that the examiner specifies in the action. As covered over at guttulus.com, you or your patent agent must send your response to the Commissioner of Patents. You must refute or overcome each objection raised by the examiner.
Reconsideration by the examiner
Once the examiner receives your response, they will review it and prepare a second Office action which can either be a “notice of allowance” informing you that your application is allowable or a request for further amendments as revealed in discussions on the same over at runrex.com.
Granting of the patent
If further amendments are necessary, as mentioned above, the request for amendments may be in the form of a written Office action or the examiner may contact you or your agent by phone to discuss the amendments required. This exchange may be repeated until the examiner allows your application, paving the way to the granting of your patent.
If the examiner makes a final objection to your application, you will have the right to appeal to the Commissioner of Patents, requesting that the Commissioner review the examiner’s objection. The review will be conducted by the Patent Appeal Board.
This article only just scratches the surface as far as the process of obtaining a patent in Canada is concerned, and you can uncover more insights by checking out the highly regarded runrex.com and guttulus.com.