Patents

To Whom Does This Apply?

Businesses of all sizes, universities and research and government organizations involved in developing new or improved products or technology who frequently file to protect their inventions under the Patent Act. Applicants and agents may file a new application, send correspondence or pay a fee. Many applications are received from other jurisdictions and countries.

Summary

What is a Patent?

To be eligible for patent protection, the invention must:

• be new (first in the world);
• be useful (functional and operative);
• show inventive ingenuity and not be obvious to someone skilled in that area.

The invention can be a product (e.g. a door lock), a composition (e.g. a chemical composition used in lubricants for door locks), an apparatus (e.g. a machine for making door locks), a process (e.g. a method for making door locks) or an improvement on any of these. Approximately ninety percent of patents are for improvements to existing patented inventions.

Patent Protection

A patent gives its owner exclusive rights over a claimed invention. The owner can prevent others from making, using or selling the patented invention in exchange for full disclosure of the claimed invention.

In Canada, patent protection extends for 20 years from the date of filing and if granted is given on a "first to file" basis. Applicants should file as soon as they can, in case someone else is working on the same thing.

Patent protection applies in the country that issues the patent. It is possible to apply for a foreign patent in Canada under the Patent Cooperation Treaty (PCT), or directly to the patent office of the foreign country concerned. In both cases applicants must abide by the patent laws of each country; these may differ from Canadian laws. Contact the client Service Centre or the IP office of the country.

• CIPO Client Service Centre
• International Intellectual Property Offices  

Disclosure

Public disclosure of an invention before filing may make it impossible to obtain a valid patent in Canada. Most other countries require filing before use or written disclosure anywhere.

Why file?

Patents are valuable business assets and are the legal recognition of creative effort. Like any asset they should be protected. Patent rights may be sold, licensed or bequeathed in much the same way as a building or a piece of land. They can be used to leverage financing.

Benefit to Canadians

The patents are made available on a database so all Canadians can benefit from the advances in technology and knowledge across all industrial sectors. Businesses can make informed decisions such as whether to file for a patent, where to invest in R & D or gather business intelligence on their competitors. Researchers can study trends and project changes.
 
Canadian Patents Database 

Getting Started

First identify the intellectual property (IP) that should be protected and make sure it can be protected under the Patent Act. The publication Stand out from your competitors provides a valuable introduction to IP and is a great starting point. The Guide to Patents provides more in-depth information and introduction to patents and patenting procedures.

• Stand out from your competitors
• Guide to Patents
• Patent Act Department of Justice Web page

Agents

A patent application is a complex document and must be worded correctly to be of value. Registered patent agents can help inventors with the many complexities of patent law; CIPO recommends that inventors make use of one as they must pass rigorous examinations in patent law and practice before they may represent inventors. See the list of registered patent agents on the Web site.

List of Patent Agents

Invention Promotion Firms and False Invoices

Make sure you know who you are dealing with before working with an invention promotion firm or paying an invoice you were not expecting.

Invention Promotion Firms - Competition Bureau Warning

Preliminary search

Do a preliminary search in the Canadian Patents Database to verify if an invention is new and if filing for patent protection makes sense. A professional searcher can be hired to perform a more in-depth search. Search foreign databases as well.

Filing an application

There is a tutorial on writing a patent application on the CIPO Web site. A complete application is made up of several documents such as a specification including a statement, claims, any drawing referred to in the specification; and an abstract of the description. The wording and content must be detailed, clear and complete. This is crucial to obtaining relevant patent protection so consider using a registered patent agent. 

Applications may be filed online, by mail or by fax. There is a sample printable petition form on the site. 

• Tutorial: Write an Application
• Online and Printable forms

Process and related fees

There are several steps in the process and these are detailed on the CIPO Web site with approximate turnaround times and associated fees.

• Application Process 
• Manual of Patent Office Practice

Fees

The Tariff of Fees is complex and was amended January 1, 2004. There are three kinds of fees to obtain a patent: filing fees, examination fees and grant of patent fees. After that, yearly maintenance fees are required to maintain an application or a patent in force. There are fee reductions for a small entity as defined in Section 2 of the Patent Rules. Refer to the Application Process document for the basic fees associated with an application.

• Tariff of Fees 
• Application Process
• Patent Rules Department of Justice Web page

Bill C-29 — An Act to amend the Patent Act
Bill C-29, An Act to amend the Patent Act, received Royal Assent May 5, 2005 and the new section 78.6 came into force on February 1, 2006.

Should you be concerned about this?
If, at any time in the past, you paid small entity fees when your status at the time of filing the application was that of a large entity, then you may run the risk of losing your patent rights for having underpaid your fees. For more information on Bill C-29 — An Act to amend the Patent Act visit the CIPO Web site.

Assistance Available

• CIPO Client Service Centre
• Canadian Intellectual Property Office Web site

Online Forms

File new applications, requests for national entry phase, assignments, licences and general correspondence and pay by credit card online. There is a log-in process through Strategis and there are system and browser requirements to be met including 128 bit encryption. For more information see the Registration page.

Order copies of patent documents online and pay when the order is ready.

• Online and Printable forms
• Order Patent Documents
• Registration page

Mail and Facsimile Correspondence

Address to: Commissioner of Patents, Canadian Intellectual Property Office, Place du Portage I, 50 Victoria Street, Gatineau, Quebec K1A OC9; or to a designated Industry Canada Regional Office; or via a designated courier service; or by fax to (819) 953-CIPO (953-2476) or (819) 953-OPIC (953-6742).

The date of receipt depends on where/how it was delivered and whether the office is open for business on that day. The Manual of Patent Office Practice (MOPOP) explains this in detail.

• Correspondence in person or by mail
• Contacting the Patent Office - Manual of Patent Office Practice Ch.1

Publications

The Canadian Patent Office Record (CPOR) is the official publication in which issued patents, laid open applications and notices are published every Tuesday. Patent Notices, the Manual of Patent Office Practice and other publications are available on the CIPO Web site.

• Canadian Patent Office Record 
• Patent Notices 
• Manual of Patent Office Practice
• Publications 
  

DISCLAIMER
Information contained in this section is of a general nature only and is not intended to constitute advice for any specific fact situation. For particular questions, the users are invited to contact their lawyer. For additional information, see contact(s) listed below.

Ontario Contact(s):
Industry Canada
4th Floor
151 Yonge Street
Toronto, Ontario  M5C 2W7
Telephone: (416) 973-5000
Fax: (416) 936-0334