A Guide to Patents: Part I

Part I: Understanding Patents – The Basics

Purpose of this guide
Who we are
Visit CIPO's Web site
Wealth of technical know-how
General enquiries
Patents fuel progress
What is a patent?
Trade secrets
What can you patent?
Is your invention patentable?
When to apply for a patent
What to consider before filing an application
Your research and development partner
The preliminary search
Searching the Canadian Patents Database online
Searching at the Patent Office
Consider using a registered patent agent

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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 available online at www.cipo.ic.gc.ca/patents. In addition, the Canadian Intellectual Property Office (CIPO) 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 trade-marks, copyrights, 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 Web site

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 (www.cipo.ic.gc.ca) 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 "Patents" section of the website (www.cipo.ic.gc.ca/patents) 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 1.9 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

General enquiries

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 trade-marks, copyrights, 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
Industry Canada
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.

General enquiries:
1-866-997-1936 (toll-free)
TTY: 1-866-442-2476

Email: cipo.contact@ic.gc.ca

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 trade-marks, copyrights, industrial designs, and integrated circuit topographies. Like patents, these are rights granted for intellectual creativity and are forms of intellectual property. However:

• patents cover new inventions (process, machine, manufacture, composition of matter), or any new and useful improvement of an existing invention;
• a trade-mark is a word, symbol or design (or any combination of these) used to distinguish the wares or services of one person or organization from those of others in the marketplace;
• copyrights provide protection for literary, artistic, dramatic or musical works (including computer programs), and three other subject matter known as: performance, sound recording and communication signal;
• industrial designs are the visual features of shape, configuration, pattern or ornament (or any combination of these) applied to a finished manufactured article; and
• integrated circuit topographies refer to the three-dimensional arrangement of the electronic circuits in integrated circuit products or layout designs.

Trade secrets

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:

1. The invention must show novelty (be the first in the world).
2. It must show utility (be functional and operative).
3. 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: 90 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.

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A Guide to Patents
| Table of Contents | Understanding Patents – The Basics |
| Patents – Getting Started | Patent Information – Beyond The Basics |
| Appendix A - Format of the Application | Appendix B - Filing an Application |
| Appendix C - Small Entity Declaration | Glossary |