A Guide to Patents
A Guide to Patents
- Understanding Patents — The Basics
- Patents — Getting Started
- Patent Information — Beyond the Basics
- This electronic version of the guide is the official one.
- In the event of any inconsistency between this guide and the applicable legislation, the legislation must be followed.
- Copyright / Permission to Reproduce
Understanding Patents — The Basics
Purpose of this guide
This booklet explores the two main ways patents assist inventors, business people, and researchers as both a source of protection and a source of information.
Although not a complete text on patent laws or a substitute for professional advice you may need from a registered patent agent, this guide is designed to be your introduction to patents and patenting procedures.
For more detailed information on patenting procedures, consult the Patent Act, Patent Rules, and Manual of Patent Office Practice. In addition, the Client Service Centre can also provide further information.
The glossary gives definitions of terms used in this guide.
Who we are
The Patent Office is a part of CIPO and is responsible for granting patents in Canada. It is directed by the Commissioner of Patents.
CIPO is an agency of Industry Canada. In addition to patents, CIPO is responsible for most other intellectual property rights including trademarks, copyright, industrial designs, and integrated circuit topographies.
The main functions of the Patent Office are to:
- receive and examine applications for patents and grant patents to qualifying applicants;
- record assignments of patents;
- maintain search files of Canadian and other patent documents and a search room for public use in researching patent documents and records; and
- publish and distribute patent information.
The Patent Office has several hundred employees, more than half of whom are examiners with extensive technical and legal training. These specialists examine the more than 30 000 requests for examination for patent applications received each year.
In addition, the electronic archives of the Patent Office house the largest collection of technological information in Canada.
Visit CIPO's Website
Wealth of technical know-how
In today's world of rapid-fire technological change, the company with the competitive edge is usually the one tapped into the latest developments in a given field. Often people think only large firms with sophisticated research and development departments can afford to stay abreast of new technology. They are unaware of the gold mine of readily available technical know-how waiting to be used at the Patent Office that is accessible online.
CIPO's website includes useful information about its product lines, services, and legislative changes, and is also the best way to communicate with CIPO. There are five intellectual property guides, including this one on patents, and all are available on the website, along with interactive tools that explain intellectual property.
Visit the Patent section of the website for the following:
- instructions on getting started, including a tutorial on how to write a patent application;
- access to the Canadian Patents Database, which contains more than 2 million patent documents for you to search, retrieve, and study;
- publications, including the Manual of Patent Office Practice and the Canadian Patent Office Record;
- legislation, including the Patent Act and Patent Rules;
- online and printable forms, including the Petition for Grant of a Patent;
- a list of registered patent agents; and
- Canadian and international Internet links.
CIPO's Client Service Centre is the central point of contact for clients wishing to communicate with CIPO. The Centre supplies information on a variety of subjects such as procedures for filing patent applications and for registering trademarks, copyright, industrial designs, and integrated circuit topographies.
Intellectual property search information officers provide numerous services, including providing intellectual property (IP) information, answering general enquiries, and guiding clients with IP searches through various IP databases.
CIPO's Client Service Centre is located at:
Canadian Intellectual Property Office
Place du Portage I
Room C-229, 2nd floor
50 Victoria Street
Gatineau QC K1A 0C9
Hours: Monday through Friday from 8:30 a.m.
to 5:00 p.m., Eastern time. Closed on statutory holidays.
Patents fuel progress
Technologically sophisticated nations like Canada depend on the patent system for both scientific advancement and economic strength.
By giving inventors monopolies on their creations for a specific time period, patents protect investments and allow inventors to profit financially from their creativity. This in turn provides an attractive incentive for research and development, ultimately benefiting all Canadians. Without the possibility of patent protection, many people might not take the risk of investing the time or money necessary to create or perfect new products, without which our economy would suffer.
Patents do more than make money and encourage creativity, however. They are also a means of sharing cutting-edge information. Because each patent document describes a new aspect of a technology in clear and specific terms and is available for anyone to read, they are vital resources for businesses, researchers, academics, and others who need to keep up with developments in their fields.
What is a patent?
You can use your patent to make a profit by selling it, licensing it, or using it as an asset to negotiate funding.
Through a patent, the government gives you, the inventor, the right to stop others from making, using, or selling your invention from the day the patent is granted to a maximum of 20 years after the day on which you filed your patent application.
In exchange, you must provide a full description of the invention so that all Canadians can benefit from this advance in technology and knowledge. Patent applications are open to public inspection 18 months from the earlier of:
- the filing date in Canada; or
- the filing date in another country if you request it and satisfy certain conditions (this date is known as the "convention priority date" — see Applying for a patent outside Canada).
People may then read about (though not make, use, or sell) your invention without your permission.
The rights given by a Canadian patent extend throughout Canada, but not to other countries. You must apply for patent rights in other countries separately. Likewise, foreign patents do not protect an invention in Canada.
People occasionally confuse patents with trademarks, copyright, industrial designs, and integrated circuit topographies. Like patents, these are rights granted for intellectual creativity and are forms of IP. However:
- patents cover new inventions (process, machine, manufacture, composition of matter), or any new and useful improvement to an existing invention;
- Trademarks may be one or a combination of words, sounds or designs used to distinguish the goods or services of one person or organization from those of others in the marketplace;
- copyright provides protection for literary, artistic, dramatic or musical works (including computer programs), and other subject-matter known as performer's performances, sound recordings and communication signals;
- industrial designs are the visual features of shape, configuration, pattern or ornament, or any combination of these features, applied to a finished article; and
- integrated circuit topographies refer to the three-dimensional configurations of electronic circuits embodied in integrated circuit products or layout designs.
You may be tempted to protect your creation by simply keeping its information secret and selling it. The information is then known as a trade secret. You will run into problems, however, if another person independently invents or discovers the subject matter of the trade secret — there is nothing to prevent that person from using it, applying for a patent, or publishing the information.
What can you patent?
Suppose you are the proud inventor of an electric door lock. How do you know if you can get a patent for it? There are three basic criteria for patentability:
- The invention must show novelty (be the first in the world).
- It must show utility (be functional and operative).
- It must show inventive ingenuity and not be obvious to someone skilled in that area.
The invention can be a product (for example, a door lock), a composition (for example, a chemical composition used in lubricants for door locks), an apparatus (for example, a machine for making door locks), a process (for example, a method for making door locks), or an improvement on any of these.
Fast fact: Ninety percent of patents are for improvements to existing patented inventions!
A patent is granted only for the physical embodiment of an idea (for example, the description of a possible door lock) or for a process that produces something tangible or that can be sold. You cannot patent a scientific principle, an abstract theorem, an idea, some methods of doing business, or a computer program per se.
Is your invention patentable?
In order to be patentable, your invention must show novelty, utility, and ingenuity.
Novelty: To be granted a patent, you must be the original inventor of your door lock (or the assignee of the inventor), and the door lock must be the first of its kind in the world.
Utility: A valid patent cannot be obtained for something that does not work, or that has no useful function. If your door lock doesn't work, it will fail the utility test.
Ingenuity: To be patentable, your invention must be a development or an improvement of an existing technology that would not have been obvious beforehand to a person of ordinary skill in the technology involved. Your door lock must make other designers in the field say, "Why didn't I think of that"?
You may obtain a patent for an improvement to an existing invention, but keep in mind that the original patent may still be in force. If this is the case, manufacturing or marketing the product with your improvement would probably be an infringement. This situation is often resolved by agreement between the patentees to grant licences to each other.
When to apply for a patent
In Canada, patents are granted to the first inventor to file an application, so it's smart to file as soon as possible after completing your invention, in case someone else is on a similar track. Even if you can prove that you were the first to think of the invention, you lose the race if a competing inventor files before you do.
On the other hand, filing too soon, while you are still developing your invention, may mean missing important features from the patent application. You may then have to reapply, adding to your expenses and risking possible patent disputes.
Again, it is very important not to advertise, display, or publish information about your invention before you are ready to file for a patent. Public disclosure of your invention before filing may make it impossible to obtain a valid patent and jeopardize the possibility of you receiving similar rights in other countries.
What can you patent?
- new kind of door lock
- apparatus for building door locks
- process for lubricating door locks
- method of making door locks
- improvements on any of these
- E = MC2;
- Romeo and Juliet
What to consider before filing an application
Your research and development partner
With so much information stored in each patent, it's not surprising that the Patent Office has the largest collection in Canada of current technological know-how from around the world.
CIPO's data holdings contain more than 2 million Canadian patent publications (grants and open to public inspection applications), most of which are searchable on the website or by doing an in-person search in the CIPO Client Service Centre.
Some of these patents are for "end-of-the-line" improvements, but many are important, pioneer inventions that open up whole new fields in technology. Electronics, for example, started with a patent on a vacuum tube.
The information in these patents not only covers every conceivable field, but is possibly the most up-to-date information available as patent applications are generally made public 18 months after filing.
One of CIPO's goals is to make patent information available to Canadian industries, universities and research centres, to help them keep abreast of innovations. The resources are especially useful to small and medium-sized businesses, allowing them to conduct their own research and development easily and inexpensively.
Not taking advantage of CIPO resources could cost you time and money, especially if you end up "reinventing the wheel." A significant amount of all research and development in Canada does just that, by duplicating patented technology. A search of the patent literature may prevent this kind of wasted effort.
Learning the existing solutions to certain technical problems can also give you ideas for better inventions. In almost any field, some work has already been done somewhere. Perhaps the solution to the problem exists in a foreign patent, and you may be able to use it freely here in Canada.
Patent documents can also reveal trends and sources of new products, show what the competition is doing at home and abroad, and help you find new suppliers, markets or know-how that you can use under licence.
Keep in mind that Canada is a net importer of IP, including patents. Of the more than 8.66 million patents in force worldwide in 2012, approximately 144 000 are Canadian and all are available for you to review. Most of the state-of-the-art technology from highly industrialized countries such as the United States, Japan, or Germany comes to Canada via the patent system.
Summary of benefits of a patent search
If you are a business person, researcher, engineer or student, a search through patent documents can help you:
- identify trends and developments in a specified field of technology;
- discover new product lines which you can license from the patentee or use without needing a licence;
- find information that prevents duplication of research;
- identify unproductive avenues of enquiry by reading about the current state of the art;
- keep track of the work of a particular individual or company by seeing what patents they have been granted;
- find a solution to a technical problem; and
- gain new ideas for research in a particular field.
Your competitors may be using the information in patent documents to their advantage. Can you afford to ignore it?
The preliminary search
A good first step is to undertake a preliminary search of existing patents. This will determine if your invention, or a similar one, has been patented already. If so, there is no need to proceed further.
Preliminary searches can be done by accessing the Canadian Patents Database on the CIPO website. Interactive and easy to use, the Database will allow you to do simple but powerful searches on Canadian patent information from the comfort of your home or office, free of charge.
A more sophisticated search can be conducted in person at CIPO's Client Service Centre. For additional information about services available at the Client Service Centre, please see the section “Searching at the Patent Office,” below.
Searching the Canadian Patents Database online
By accessing the Canadian Patents Database online, you can do a preliminary search of patent information since 1869.
Searches can be conducted using key words, the name of the inventor, owner or applicant, the International Patent Classification, and more.
Searching at the Patent Office
After searching online, if necessary, you can also take advantage of additional functionality and extended data coverage by visiting CIPO's Client Service Centre in person. It's a good idea, however, to consider engaging the services of a registered patent agent or searching firm for this work.
The CIPO Client Service Centre, located in Place du Portage I, Gatineau, Quebec, is the central point of contact for clients wishing to communicate with CIPO. It supplies, free of charge, information on a variety of subjects such as: procedures for filing patent applications and for registering trademarks, copyright, industrial designs and integrated circuit topographies.
Intellectual property search information officers provide numerous services, including:
- relating to:
- IP legislation and regulations;
- procedures for filing;
- electronic searching tools (IP databases); and
- products and services.
- guiding clients with IP searches through various IP databases, including:
- Canadian Patents Database;
- Canadian Trademarks Database;
- Canadian Copyrights Database; and
- Canadian Industrial Designs Database.
As a first-time visitor, you may feel overwhelmed by the idea of searching through so many patents. IP search information officers are available to help you with your search (however they cannot do the search for you).
Consider using a registered patent agent
Preparing and prosecuting (following through on) a patent application is a complex job. Prosecution involves corresponding with the Patent Office, making any necessary changes to the application and fixing the legal scope of the patent protection. All this requires a broad knowledge of patent law and Patent Office practice — knowledge you can expect from a registered patent agent.
A trained patent agent will make sure your application is properly drafted so your invention is adequately protected. Hiring such an agent is not mandatory, but is highly recommended.
Registered patent agents are specialists who must pass a rigorous examination in patent law and practice before being allowed to represent inventors before CIPO.
Once you have appointed a patent agent, the Patent Office will correspond with no one else about the prosecution of your application, including you. You may, however, change patent agents at any time, or choose not to have one anymore. Patent agents' fees are not regulated by the Patent Office; you and your agent should agree on fees before work on your application begins.
The Patent Office can provide you with a list of registered patent agents, but cannot recommend any particular one to you.
Beware of unregistered patent agents.
They are not authorized to represent applicants in the presentation and prosecution of applications for patents or in other business before the Patent Office.
Patents — Getting Started
Preparing a patent application
Note: A tutorial on how to prepare a patent application.
Abstract, specification and drawings
A patent application consists of an abstract, a specification, and often drawings.
The abstract is a brief summary of the contents of the specification.
The specification is made up of:
- a clear and complete description of the invention and its usefulness; and
- claims that define the boundaries of patent protection.
The description must be clear and accurate, and it should be as simple, direct, and free from obscurity and ambiguity as possible. The description is addressed to persons skilled in the art or science to which the invention pertains and must be so written that those persons would be able to put the invention to the same successful use as had the inventor.
After the patent is issued, information you specify as protected by your claims cannot be used freely (for example, copied, manufactured or sold) by others until the patent expires. Information not protected by your claims can be used right away by anyone.
The challenge is to draft the claims so your invention is defined broadly enough to provide maximum protection while at the same time being specific enough to identify your invention by making sure it is different from all previous inventions.
Assisting your patent agent
To help your agent in getting the strongest possible patent while avoiding unnecessary costs, you can prepare a statement covering the following points:
- subject matter of the invention
- a broad description of the invention
- objectives of the invention (that is, its main practical advantages over existing practices or products)
- the "preferred practice" or most appropriate use of your invention, with details of at least one practical application
- features of the invention that are new and distinct from what has come before, whether they may be patented or not
- the scope of the invention (for example, materials, compositions, conditions, etc.) used to obtain good results
- the invention's limitations (for example, if good results can be obtained throughout the given range of the invention, or if there are exceptions)
- the results of laboratory or commercial tests showing both "preferred practice" (see item #4 above) and the conditions under which poor or dangerous results could be expected
- lists of relevant patents or technical articles you have already found in any literature search, including full details such as: name of the inventor, number of the patent, country and date of issue or name of the periodical and its date with a list of the similarities and differences of practices or products that are relevant to your invention
- any disclosure you have made (for example, people you may have told about your invention)
- your name, address and citizenship
- all countries in which you would like to file for a patent
Filing your application
Filing a patent application means preparing a formal application and asking the Commissioner of Patents to grant you a patent.
To receive an official filing date in Canada, you must submit no less than the following:
- a statement that a patent is sought
- documentation describing an invention
- your name
- your address, or your patent agent's name and address
- the filing fee, and signed small entity declaration if applicable.
Note: If you don't send a proper description of the invention, the Patent Office will not give you a filing date, will return the papers you have submitted, and will refund the filing fee, less $25.
A complete patent application includes the information listed on the previous page, as well as the following:
- a formal petition
- abstract of the invention (see Glossary or description above)
- claim or claims to the invention
- any drawings mentioned in the description
- nucleotide sequence listing, if applicable, in electronic form
- appointment of a patent agent or representative, when required
If you are applying for a patent but do not live in Canada or work at a specified Canadian address, you must appoint a representative who lives or works in Canada on the filing date of your application.
Note: It is best to file a full description of your invention and a complete application from the start; however, this is not always possible. If necessary, any of the items listed above may be submitted, without charge, within the 15 months following the priority date (or the filing date if there is no priority date).
If your application is still incomplete after 15 months, you will be notified by the Patent Office, and you will have to complete the application within a certain amount of time as well as pay a completion fee.
Models and specimens of your invention should not be submitted unless the Commissioner of Patents requests them.
Once accepted for filing, your application is assigned a number and filing date, and you will be informed about these. This is no guarantee of a patent; it simply means your application is pending.
The application will be open to public inspection (that is, the public will have access to your application) 18 months after the filing date or priority date. If you wish, you may request to have your application opened earlier.
Your application will not automatically be examined simply because you have filed it.
You must formally request examination and attach the examination request fee. This request must be made within five years of the Canadian filing date, otherwise your application will be considered to be abandoned. If this happens, you may request reinstatement through a letter to the Commissioner of Patents and the payment of the prescribed fee.
There are several reasons why you might file an application and not automatically request examination. Perhaps you need time to assess the feasibility or marketability of your invention. If so, filing provides some protection for your invention, possibly making your competitors less likely to infringe (that is, make, use, or sell) on it for fear of having to pay retroactive compensation should your patent eventually be granted.
However, if you do not request examination within the five-year period and the reinstatement period has passed, anyone will be able to freely make, use or sell the products or processes described in your application.
Once you have requested examination, be patient! The large number of patent requests received by the Patent Office means the examination process may take more than two years.
Filing prior art and protests
After your patent application is made available to the public, anyone may raise questions about the patentability of your invention or one of its claims by filing "prior art" — information that might cause the patent examiner to object to one or more of your claims. The prior art can be patents, patent applications that have been open to public inspection, and published material that has a bearing on the case.
Anyone may also file a protest against the granting of a patent. Such protests will be made available to the public.
You may have special reasons for wanting an early examination of your application. Perhaps you expect competition soon, or you hope to establish a business once you have received protection for your invention. If your case is exceptional in this way, you may ask for advanced examination. An extra fee will apply.
Note: An advanced examination request will not be considered unless the application has been laid open to public inspection and a request for examination has been made.
What to do if your claim is rejected
The patent examiner often will object to some claims. The examiner may find previous patents or publications that show every feature of one or more claims in your application. Or, the examiner may feel some claims would be obvious to a person with ordinary skills in the field. The examiner's objection will be outlined in a report or letter called a "Patent Office action," which will provide objections, as well as a date for reply. The action may object to your whole application, or only some claims, or it may ask for other changes in your application.
Responding to the examiner's objections
Don't feel discouraged if the examiner objects to some of your claims. You may respond to the objections as long as you do so within the period specified in the action. You or your patent agent must send the response to the Commissioner of Patents.
The response may ask the Commissioner to amend your application by changing or cancelling some claims, or adding new claims. You must meet or overcome each objection raised by the examiner.
Helping your agent with amendments
Your agent will carefully study the Patent Office action to help you decide whether to proceed, amend or abandon your application now. If you decide to continue, you may be able to help prepare an amendment letter to point out the new features and advantages of your invention, as compared to others listed in the Patent Office action. Let your agent know quickly if you want to make changes to your invention, as she or he may recommend filing a new application.
Reconsideration by the examiner
Once the examiner receives your response, she or he will study it and prepare a second Patent Office action. This may be a "notice of allowance" informing you that your application is allowable, or it may be a call for further amendments. This exchange of Patent Office actions and responses may be repeated until the examiner allows your application, or states that the action is final.
If the examiner makes a final objection to your application, you have the right to appeal to the Commissioner of Patents, requesting that the Commissioner review the examiner's objection.
The review is conducted by the Patent Appeal Board, a special committee of senior Patent Office officials. If you wish, you may appear before this board. If the Commissioner objects to your appeal and refuses to grant a patent, you may take your case to the Federal Court of Canada, and from there to the Supreme Court of Canada.
Summary of steps to obtain a patent in Canada
- Determine if you need a patent agent.
- (Note: If you choose to have an agent, they may assist you in the remaining steps.)
- Do a preliminary search (if there is an existing patent, consider ending the process now).
- Prepare a patent application.
- File your application.
- Request examination.
- Examiner does search for prior patents and studies your claims.
- Examiner either approves or objects to the claims.
- Respond to the examiner's objections and requirements.
- Examiner reconsiders and either approves or calls for further amendments.
Re-examination of a granted patent
After issue, any person, including the Commissioner of Patents, may ask that one or more claims of your patent be re-examined if new prior art is found related to the patented invention. This can happen at any time during the term of your patent. The Commissioner of Patents may appoint a re-examination board to issue a certificate cancelling, confirming or amending your patent claims. You may appeal decisions that cancel or amend your claims to the Federal Court of Canada; however, you cannot appeal the Commissioner's refusal to set up a re-examination board.
Reissue and disclaimer
If you own a patent that accidentally contains omissions or mistakes, you may apply to have it reissued within four years of its issue to broaden or change its claims, or you may apply for a disclaimer at any time after issue to narrow the scope of some or all of the claims of your patent.
Patent infringement happens if someone makes, uses, or sells your patented item without your permission in a country that has granted you a patent, during the term of the patent.
If you believe your patent is infringed, you may sue for damages in an appropriate court. The defendant may argue that infringement did not occur, or may attack the validity of your patent. The court will decide who is right, based largely on the wording of the claims. If what the defendant is doing is not within the wording of any of the claims of your patent, or if the patent is declared to be invalid for any reason, there is no infringement.
Protection before grant
When you have a Canadian patent, you will be able to sue infringers for all damages sustained after the grant of your patent. Also after the grant, you may sue for reasonable compensation for infringements that occurred in Canada between the date your application was made available for public inspection (18 months after filing or priority) and the date of the grant.
Patent marking and "patent pending"
The Patent Act does not require that articles be marked "patented"; however, in Canada marking an article as patented when it's not is illegal.
You may wish to mark your invention "Patent Applied For" or "Patent Pending" after you have filed your application. These phrases have no legal effect but may warn others that you will be able to enforce your exclusive right to make the invention once a patent is granted.
Three types of fees must be paid in order to obtain or maintain a patent or patent application: filing fees, examination fees, and grant of patent fees. A fourth type, maintenance fees, is required yearly to make sure your patent application or patent remains current.
In 1985, the Canadian Government introduced "small entity" provisions to encourage universities and small businesses to use the patent system by reducing certain fees by 50 percent. In order to pay fees at the small entity rate, an applicant/patentee must:
- be eligible under the definition of small entity; and
- submit a small entity declaration within a prescribed time period.
Definition of "small entity"
The definition of a small entity, as outlined in the Patent Rules, states that a small entity is one that employs 50 or fewer employees or that is a university.
This does not include:
- an entity that is controlled directly or indirectly by an entity, other than a university, that employs more than 50 employees; or
- an entity that has transferred or licensed or has an obligation, other than a contingent obligation, to transfer or license any right in the invention to an entity, other than a university, that employs more than 50 employees.
Small entity declaration
A small entity declaration must be submitted within a prescribed time period and must include a statement indicating that the applicant/patentee "believes that they are entitled to pay fees at the small entity level."
Although the declaration may be submitted as part of the petition, the applicant/patentee is encouraged to submit it as a separate document since the small entity declaration (see Appendix B), unlike the petition, requires a signature.
Maintenance fees encourage applicants and patent holders to re-evaluate the economic value of their applications and patents on a yearly basis.
Owners of patents who are benefiting from the patent system must pay these fees or their patent rights will expire before the maximum 20 years. On the other hand, owners of inactive patents may choose not to pay maintenance fees, letting the patents lapse and allowing others to freely use the technology described in those patents.
Maintenance fees must be paid to keep a patent in force. If the required fee is not paid before the payment deadline, the patent lapses, but it can be revived within 12 months upon written request for reinstatement along with the payment of the maintenance fee and a late payment fee.
Application for maintenance fees must be paid on or before the starting date of the period covered. If the fee is not paid, the application will become abandoned. An application can be reinstated within the 12-month period after it became abandoned if the maintenance fee and a reinstatement fee are paid. If the application is not reinstated within that period, it cannot be revived.
You'll find more details about fees in the How your Patent Application is Processed leaflets that are available online or contact CIPO's Client Service Centre. You can also consult the "Tariff of Fees," Schedule II, of the Patent Rules.
Note: Payment may be made by credit card (VISA, MasterCard, or American Express), direct payment, deposit account, postal money order, or cheque payable in Canadian dollars to the Receiver General for Canada. Do not add federal and provincial taxes.
Corresponding with the Patent Office
Business with the Patent Office is normally done in writing. All paper correspondence may be addressed to:
Commissioner of Patents
Canadian Intellectual Property Office
Place du Portage I
50 Victoria Street, Room C-114
Gatineau QC K1A 0C9
Any correspondence addressed to the Commissioner of Patents and delivered:
- during business hours to CIPO headquarters in Gatineau, will be accorded the date of receipt that day;
- during business hours to Industry Canada headquarters or to one of its regional offices, designated by the Commissioner in the Canadian Patent Office Record (CPOR), will be accorded the date of receipt in that officeFootnote *;
- at any time by electronic means of transmission specified in the CPOR, including by facsimile, will be considered to be received on the day that it is transmitted if received before midnight, local time, at CIPO headquartersFootnote *; or
- through the registered mail service of the Canada Post Corporation (CPC) will be considered to be received on the date stamped on the envelope by the CPCFootnote *.
If you are enquiring about the status of your pending application, give its serial number, your name, and the title of the invention. If you've hired a patent agent, conduct all correspondence through that agent.
Personal interviews with patent examiners can be arranged by appointment. This gives them time to review your application before seeing you. Note: If you have a patent agent, the examiner will talk only to that agent (although you may be present as well).
The Patent Office will respond to all general enquiries, but cannot:
- advise you whether to file an application;
- tell you whether your invention meets patentability criteria prior to filing an application;
- tell you whether or to whom a patent for any alleged invention has been granted;
- advise you about possible infringement of a patent; or
- act in any way as an interpreter of patent law, or as a counselor, other than in matters directly related to processing your application.
Our electronic service delivery allows you to:
- file a regular patent application;
- file an international patent application (PCT);
- pay maintenance fees and other fees; and
- submit correspondence or request national entry for a Patent Cooperation Treaty (PCT) application.
In addition, the CIPO website has a tutorial about writing a patent application.
Patent Information — Beyond the Basics
Applying for a patent outside Canada
Obtaining a Canadian patent does not protect your invention in another country. If you want this protection, you will have to apply for a foreign patent.
For example, suppose you've invented a mountain-climbing snowmobile and hope to corner the market in countries where the machine may be in demand: You'll probably want a patent not only in Canada, but also in the United States, Austria, Germany, and wherever else a mountain-climbing snowmobile could be used. You might also want a patent in Japan, where many snowmobiles are manufactured. Otherwise, someone in one of those countries might copy your invention and market it in competition with you.
You may apply for a foreign patent either within Canada, via the Patent Office under the Patent Cooperation Treaty, or directly to the patent office of the foreign country concerned. But no matter how you apply, you will have to abide by the patent laws of that country. Bear in mind that these laws may differ from Canadian laws.
Many countries, like Canada, belong to the Paris Convention for the Protection of Industrial Property, a treaty that allows you to invoke what is called "convention priority." This means that your filing date in one member country will be recognized by all the others provided you file in those countries within a year of first filing. For example, if you filed in Canada on January 2, 2004, you could file up to one year later in most countries (January 2, 2005) and still be given the same filing rights as if you had filed there in 2004.
Under the Paris Convention, you can file an application abroad, and then in Canada. The Patent Office will recognize the earlier filing date as your convention date if you claim "convention priority" within 16 months of the Canadian filing date. The Canadian filing date must be within 12 months of the convention date. However, your application will be published 18 months after your convention date, not your filing date in Canada.
Note: Being granted a patent in one country may prevent you from obtaining one in another country if you wait too long in filing for the second patent. That is, if your invention is patented and therefore public in Sweden, it will not be considered "new" in Canada, and vice versa. You must file your various applications all within one year in order to receive the benefits of "convention priority" in the other countries.
It is also possible to claim priority based on an earlier filed Canadian application.
Addresses of foreign patent offices are available on the CIPO website under International IP Links.
The Patent Cooperation Treaty
Application for a foreign patent from within Canada is made possible through a treaty called the Patent Cooperation Treaty (PCT), administered by the World Intellectual Property Organization in Geneva. The PCT provides a standardized international filing procedure that is shared by our principal trading partners, including the United States, Japan, and most of the European community.
Under the PCT, you may file for a patent in as many as 142 member countries through a single application filed in Canada. This procedure is simpler than filing separate applications and can give you more time to raise capital, conduct market studies, etc.
Many countries have online patent information. Links to these websites are available on the CIPO website under International IP Links.
When you file under the PCT, you will receive an international search report, which checks your international application against other applications and patents, as well as an initial opinion on the patentability of your invention. You will then have the option of corresponding with an examiner about the possibility of amending your application, and, ultimately, you will receive an international preliminary report on patentability. This is no guarantee of a patent; local patent offices in the countries to which you apply reserve the right to conduct their own examinations, but some accept the results of the international preliminary report on patentability. This means you will receive a fairly reliable indication of whether it's worthwhile to file for multiple patents in foreign countries before fees are due.
Your application for foreign patents filed under the PCT through the Patent Office must be in English or French. You may also be required to pay for translation into the languages of the designated countries if you choose to continue in those countries. Eighteen months after filing (or after the priority date, if there is one), your application will be made available to the public.
Only nationals and residents of Canada can file under the PCT in Canada.
Your application made in Canada under the PCT automatically qualifies for a normal national filing for a Canadian patent application.
Marketing and licensing
Marketing your invention
Now that you've taken steps to protect your creation, you'll want to decide the best way to market it and turn a profit. You have a number of options including going into business yourself, licensing the invention or selling your patent.
Setting up your own business allows you to retain full control of your invention, but means you assume all the risks.
With a licence, you grant one or more companies or individuals the right to manufacture and sell your invention in exchange for royalties. The licence can apply nationally or to only a specific geographic region.
By selling your patent, you give up all rights as inventor, but you could gain an immediate lump sum of money without having to worry about whether the product is a commercial success.
Help with marketing
The Patent Office cannot help you with marketing, but you can receive assistance from other federal or provincial agencies.
Names of Canadian manufacturers who might be interested in a new invention are available from a number of sources, including the Canadian Trade Index, issued by the Canadian Manufacturers' Association. Other sources of names are Fraser's Canadian Trade Directory and The Thomas Register of American Manufacturers. These publications are usually available in public libraries, and many are also available online.
If you wish to make your patent available for sale or licensing, you can publicize your intentions through the Canadian Patent Office Record (CPOR) and the Canadian Patents Database. This is a good way to reach potential investors, since many business people, researchers and others consult this publication to keep in touch with new technology. You may place a sale/licence notice in the CPOR and the Canadian Patents Database on the Internet free of charge, if you make your request when you pay your fee on the grant of your patent. At any other time, you must pay a fee for this notice.
The Patent Office has no control over private organizations that promote inventions, and cannot advise you about them. Seek guidance from the Better Business Bureau of the city in which the organization is located, from your registered patent agent, or from the provincial department responsible for industry or consumer affairs.
Abuse of patent rights
Patent rights are considered abused when an owner fails to make the invention available in Canada on a commercial scale without adequate reason.
The Canadian Intellectual Property Office cannot assist inventors, financially or otherwise, to develop and market their inventions. However, other sources of financing, small business advice and support services are available on Industry Canada's website or by calling 1-800-328-6189.
In addition, you may wish to consult the Canada Business website. This organization provides assistance to small businesses at every stage of business or product development. You may also visit the Info entrepreneurs website for information on small entrepreneurship.
Websites of interest
The following are just a few additional websites you may find helpful:
Canadian Patents Database
European Patent Office
Japan Patent Office
United States Patent and Trademark Office (USPTO)
WIPO Intellectual Property Digital Library (WIPO Gold)
WIPO International Patent Classifications (IPC)
- Footnote *
Only if it is also a day on which CIPO headquarters in Gatineau is open; if not, it will be considered to be received on the next working day.
Appendix A — Format of the Application
A patent document is simply the final approved application. An example of the form of the application is given below. This should give you an idea of what your abstract, specification and drawings should look like.
In addition, a tutorial on writing a patent application is available.
"In a tool for driving posts, it is known to have a guide depending from the hammer to freely embrace the post and slide longitudinally on it. In this invention, handles are secured to the guide such that they extend lengthwise along the outside of it. The tool with the handles may have a lighter hammer and thus may be manually operated, since the handles enable the operator to use his or her own strength to bring the hammer down on the post and hold it against rebound. The guide may have filling pieces secured to the inside to adapt its cross section to the cross section of the post being driven."
The specification begins immediately following the abstract or at the top of a new page and consists of un-numbered paragraphs dealing with the following matters in approximately the following order:
- The general character of the class of article or the kind of process to which the invention (that is, the inventive idea) relates.
"This invention relates to a manually operable tool for driving posts into the ground."
- The nature, in general terms, of the articles or processes previously known or used that are supposed to be improved or replaced by the invention, as well as the difficulties and inconveniences involved.
"It is common in devices for driving piles and posts to pull up a weight or hammer, for example, by a cable and overhead pulley arrangement, and drop it into the end of the pile or post. It is, of course, necessary that the hammer strike the pile or post squarely, and it has been proposed to provide the hammer with a depending guide which freely embraces and may slide up and down on the post to be driven. Tools of this type are, however, inefficient because the rebound of the hammer results in a loss of energy and a tendency to split the end of the post. They are, moreover, unsatisfactory for manual operation, because the hammer must be heavy to be effective, and the power of the operator is used only in raising the heavy hammer."
- The inventive idea the new article or process embodies, and the way using it overcomes the difficulties and inconveniences of previous practices or proposals.
"I have found that these disadvantages may be overcome by providing a number of handles secured to the guide and extending lengthwise along the outside of it. Such handles permit the use of a lighter hammer and the elimination of the overhead arrangement, secure a greater effect for the same amount of energy, and reduce splitting of the post, since the power of the operator of the device is used not only to raise the hammer but also to bring it down on the post or hold it against rebound."
- A full description of the best way of using or putting into operation the inventive idea. If there are drawings, the description should follow a list of numbered drawings.
The following is an example of the form of the list and the description:
"In drawings which illustrate embodiments of the invention, Figure 1 is an elevation partly in section of one embodiment, Figure 2 is a top view of this embodiment, Figure 3 is a section of the line III-III of Figure 1, and Figure 4 is a plan view of another embodiment having only two handles."
"The tool illustrated comprises a guide 1 which is adapted freely to embrace and slide up and down on a post A which is to be driven. It may be of any suitable cross section, but, in the form shown, is a cylinder open at the bottom and closed by a plug 2 at the top which may be the top of the device. The plug 2, which acts as a hammer, fits within the cylinder 1 and is flanged at its edge so as to lie flush with the outer wall of the cylinder. Extending lengthwise of the guide 1 are handles 3 which may be formed from metal tubes, as shown or may, if designed, be made from rods or bars covered with wood facings."
"The handles 3 are secured at their upper ends to bridge pieces 4, for example,, by welding, and the bridge pieces 4 are secured as by welding to the plug 2. At their lower ends the handles 3 are flattened for engagement between two arms of a sectional clamping ring 5 fitting around the guide 1 and clamped to it by bolts 6. The lower ends of the handles are extended below the clamping ring, as indicated at 7, for the attachment of extension members (not shown) and, for this purpose, bolt holes 8 are provided in the extensions 7."
"In order to adapt a guide of circular internal cross section to a square post, segmental filling pieces 9 having their flat faces facing inwards may be secured inside it, the distance between opposed flat faces being slightly greater than the thickness of the post. Two filling pieces may be used as shown in Figure 3, but four may be used if desired."
"In the embodiment shown in Figure 4 there are only two lateral extending handles instead of four as in Figures 1-3, but otherwise the construction may be the same as that described above."
- If desired, include other ways in which the inventive idea may be used or put into operation.
Next, there should be an introduction to the claims, put into these words at the top of a new page:
- "The embodiments of the invention in which an exclusive property or privilege is claimed are defined as follows:"
The claims should begin on the same page immediately following this introduction. The following examples illustrate the general form which the claims should take:
- In the case of an apparatus:
- A manually operable tool for driving posts into the ground, comprising a hammer, a depending guide adapted freely to embrace and slide up and down on the post to be driven, and handles extending lengthwise outside of the guide and rigidly secured thereto.
- A tool as defined in claim 1, in which the guide is a cylinder closed at the top by the hammer.
- A tool as defined in claim 1 or claim 2, in which the guide has filling pieces secured to it in order to adapt its internal cross section to the cross section of the post to be driven into the ground.
- In the case of a process:
- A process for cleaning the surface of a metal, which comprises converting contaminating matter by chemical attack to a residual film which is readily removable by anodic treatment, and removing the formed film by connecting the metal as an anode in an electrolytic system.
- A process as defined in claim 1, in which the metal to be cleaned is iron or steel and the chemical attack consists of treatment of the metal surface with a strongly oxidizing acid.
- A process as claimed in claim 2, in which the residual film is removed in an electrolyte comprising one or more acids or salts thereof.
- In the case of an article:
- An insulated electric conductor comprising a metal sheath, at least one conducting core and, between the core and the sheath, highly compacted mineral insulation constituted by a mixture of two or more pulverulent mineral insulating materials at least one of which will, on exposure to the atmosphere, cause the formation, over the exposed area, of a skin or layer which is substantially impermeable to moisture.
- An insulated electric conductor as defined in claim 1, in which the insulating materials are calcium oxide and magnesia.
- An insulated electric conductor as claimed in claim 2, in which the proportion of calcium oxide in the mixture is between 25 and 40 percent.
- An insulated electric conductor as defined in claim 1, 2 or 3, in which the insulation resistance is not less than 250 000 ohms for an insulation thickness of 1.5 mm.
Your application must include a drawing whenever the invention can be shown by one. This would include almost all inventions except chemical compositions or processes. But even these can sometimes be illustrated by a drawing.
If an invention cannot be illustrated with drawings but can be with photographs, you may include, as part of your application, photographs, or copies of photographs, which show the invention.
Your drawing must show every feature of the invention defined by the claims. There are detailed, specific standards for such things as page size and quality of paper, so that issued patents are uniform in style and easy to read and understand. Drawings must meet the following requirements:
- Every sheet shall be 21.6 cm wide and 27.9 cm long and shall have a clear margin of at least 2.5 cm on the top and left side, 1.5 cm on the right side, and 1 cm on the bottom.
- The drawing shall be prepared with black lines sufficiently dense, dark, and well-defined to permit satisfactory reproduction, and shall contain no colour.
- Where figures on two or more pages are intended to form a single complete figure, the figures on the several pages shall be so arranged that the whole figure can be assembled without concealing any part of the partial figures.
- Elements of the same figure shall be in proportion to each other unless a different proportion is indispensable for the clarity of the figure.
- Cross sections shall be indicated by hatching that does not impede the clear reading of the reference characters and lead lines.
- Reference characters shall be clear and distinct and not less than 3.2 mm in height; the same character shall be used for the same feature throughout the application.
- The views shall be numbered consecutively.
- Each sheet of drawings shall be on sheets of good quality white paper free of creases and folds, and so presented as to permit direct reproduction by photography, electrostatic processes, photo offset, and microfilming.
Appendix B — Small Entity Declaration
The following is an example of a small entity declaration that the applicant/patentee can draft for submission. Declarations can be submitted to CIPO electronically, by mail or fax, or in person.
Please note: If the small entity declaration is filed as part of the petition, the petition still needs to be signed.
If filed separately from the petition:
Attention: Commissioner of Patents
The [applicant/patentee — please indicate name of applicant/patentee] believes that in accordance with the Patent Rules, they are entitled to pay fees at the small entity level in respect of this application and in respect of any patent issued on the basis of this application.
[Identify the application/patent]
Mr.or Ms. applicant/patentee or patent agent
Appendix C — Frequently Asked Questions
1. What is a patent?
A patent is a government grant giving the right to exclude others from making, using or selling an invention. A Canadian patent applies within Canada for 20 years from the date of filing of a patent application. The patent application is available to the public 18 months after filing. Patents cover new inventions (process, machine, manufacture, composition of matter), or any new and useful improvement to an existing invention.
2. Why obtain a patent?
Without a patent, you will only be able to protect your invention as a trade secret. Your secret will be out the moment you publish or begin to sell your invention, and anyone will be able to exploit your invention.
Even if you can maintain your secret, if someone else independently makes the invention, that person may be able to obtain a patent and prevent you from exploiting the invention.
3. Is a patent application mandatory?
In order to have patent protection, you must apply for and receive a patent. Since patent laws are national, you must obtain patent protection in each country in which you want protection.
4. What should be considered before filing a patent application?
Inform yourself as patent applications can be complex. Read A Guide to Patents.
Research your needs and determine whether it is a patent you require and not another form of IP protection such as a trademark or copyright.
Do a preliminary search to find out whether an invention already exists. This may save you much time and expense of filing a patent application. Start with the Canadian Patents Database.
Remain discreet about your invention or your knowledge and do not freely disseminate details.
5. How is a patent application prepared and filed?
Before you apply, consult A Guide to Patents for insight into the process. The patent application tutorial is another helpful reference tool.
Once you're ready, you can apply for your patent in Canada by submitting a patent application by mail with the appropriate fee to our patent office.
- A brief summary of an invention.
- Abuse of patent rights
- Abusing one's patent rights by failing to make one's invention available in Canada on a commercial scale, without adequate reason.
- Advanced examination
- A request to the Patent Office for early consideration of a patent application.
- Canadian Patents Database
- You can now do a preliminary search of patent bibliographical information and view images for issued patents (1869 to date) and applications made public in Canada since October 1989 via the CIPO website.
- Canadian Patent Office Record (CPOR)
- A journal published by the Patent Office.
- That part of a patent that defines the boundaries of patent protection.
- Compulsory licence
- The right granted by the Commissioner of Patents to one or more parties to produce a patented invention. These are granted, under certain circumstances, as a measure against abuse of patent rights.
- Convention priority
- An arrangement which allows inventors interested in applying for a foreign patent to have their filing date in one country recognized by other countries that have signed an international agreement called the Paris Convention.
- In general, copyright means the sole right to produce or reproduce a work or a substantial part of it in any form. It includes the right to perform the work or any substantial part of it or, in the case of a lecture, to deliver it. If the work is unpublished, copyright includes the right to publish the work or any substantial part of it.
- Part of the patent application referring to technical drawings that illustrate the invention.
- Examination of an application
- The process by which the Patent Office determines whether a patent application warrants the granting of a patent.
- Filing date
- The date a patent application is received by the Patent Office.
- Filing a patent application
- Presenting a formal application for a patent to the Patent Office.
- First to file
- A patent system in which the first inventor to file a patent application for a specific invention is entitled to the patent. In Canada and in most other countries, the first person to file has priority over other people claiming rights for the same invention.
- Industrial design
- Industrial designs are the visual features of shape, configuration, pattern or ornament, or any combination of these features, applied to a finished article. For example, the shape of a table or the shape and decoration of a spoon may be industrial designs. An industrial design must have features that appeal to the eye. To be eligible for registration, your design must be original.
- Integrated circuit topography
- Integrated circuit topographies refer to the three-dimensional configurations of electronic circuits embodied in integrated circuit products or layout designs.
- Intellectual property
- A form of creative endeavour that can be protected through a patent, trademark, copyright, industrial design or integrated circuit topography.
- Licensing an invention
- Allowing a business or individual to manufacture and sell an invention, usually in exchange for royalties.
- A patent is a government grant giving the right to exclude others from making, using or selling an invention. A Canadian patent applies within Canada for 20 years from the date of filing of a patent application. The patent application is available to the public 18 months after filing. Patents cover new inventions (process, machine, manufacture, composition of matter), or any new and useful improvement to an existing invention.
- Patent Cooperation Treaty (PCT)
- An international treaty providing for standardized filing procedures for foreign patents in the countries that have signed the Treaty.
- Patent examiner
- An official with technical expertise charged with the task of classifying a patent or an application, or of determining whether a patent application fulfils the requirements for a grant of patent.
- Patent infringement
- Making, using or selling an invention on which a patent is in force without the inventor's permission.
- Patent Office
- Canada's patent granting authority and disseminator of patent information.
- Patent Office action
- An official written communication by the Patent Office on the merits of an application.
- Patent pending
- A label sometimes attached to new products informing others that the inventor has applied for a patent and that legal protection from infringement (including retroactive rights) may be forthcoming.
- Patent search
- A review of existing patents. Patent searches are conducted to determine whether an applicant can claim rights to an invention, or whether a patent has already been issued to someone else on the same or a similar invention. Patent infringement searches are made to ascertain whether a product or process can be produced without having to get permission or pay a royalty. Patent searches are also used as a form of research to gain information on existing technology.
- Preferred embodiment
- An explanation, in a patent application, of the most appropriate and useful practical applications of an invention.
- Prior art
- The body of existing patents or patent applications or any other publication throughout the world, relevant to an application or a patent.
- All the steps involved in following through on a patent application.
- Registered patent agent
- A specialist entitled to prepare and prosecute patent applications.
- Small entity
- Small entities are defined as employing 50 or fewer employees and universities — but does not include an entity that is controlled directly or indirectly by an entity, other than a university, that employs more than 50 employees.
- Part of the patent application. It includes a detailed description of the invention, claims specifying the aspects of the invention for which protection is sought, and the extent of the protection being sought.
- An electronic patent system which holds the scanned image of over 1.5 million patent documents dating back to 1869 and the text version of the documents from 1978.
Trademarks may be one or a combination of words, sounds or designs used to distinguish the goods or services of one person or organization from those of others in the marketplace.
Trademarks come to represent not only the actual goods or services but also the reputation of the producer. As such, a trademark is a valuable intellectual property.
There are three types of trademarks:
- An ordinary mark consists of words, sounds, designs, or a combination of these, used to distinguish the goods or services of one person or organization from those of others in the marketplace. For example, suppose you started a courier business that you chose to call Giddy-up. You could register these words as a trademark (assuming all legal requirements were met) in regard to the service that you offer.
- A certification mark is used by an individual or organization and licensed to others for the purpose of identifying goods or services that meet a defined standard—for example, the Woolmark design, owned by Woolmark Americas Ltd., for use on clothing and other goods.
- A distinguishing guise comprises the shaping of goods or their containers, or a mode of wrapping or packaging goods, which distinguishes them as being produced by a specific individual or firm. For example, if you manufactured butterfly-shaped candy you could register the butterfly shape as a distinguishing guise.
- Trade secret
- Information about a product or process kept secret from competitors.
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