What is required to obtain a patent in Canada?

 

Patent rights are created by statutes to encourage research and development of new technologies. However, not every innovative idea is patentable.

To be patentable, an invention must be:

The Invention Must be Directed to Patentable Subject Matter

According to the Patent Act of Canada, only art, process, machine, manufacture or composition of matter, or any improvement in any art, process, machine, manufacture or composition of matter can be patented.

 

In Canada, mere scientific principle or abstract theorem is not patentable, but the application of the scientific principle or abstract theorem may be patentable. Other unpatentable subject matter includes higher life form, methods of medical treatment and surgery, forms of energy, features of solely intellectual or aesthetic significance, printed matter, fine arts, schemes, plans, rules, and mental processes, and games. Other jurisdictions have they own lists of unpatentable subject matter.

 

If your invention belongs to patentable subject matter, great! Let's move on to other requirements.

The Invention Must Be New

To be new (i.e., not anticipated), your invention must not have been previously disclosed to the public anywhere in the world. Your own disclosure may prevent you from obtaining patent rights for your invention in many jurisdictions. Some jurisdictions, notably the United States and Canada, provide a one-year grace period after your own disclosure during which you can file a patent application without being barred by your own disclosure.

 

When assessing whether an invention is new, the question asked is whether a person skilled in the art would consider that the prior disclosure describes the invention and provide sufficient information for the invention to be practiced.

The Invention Must Be Unobvious

To be unobvious, your invention must not be obvious to persons skilled in the technical field of the invention, who possess the common general knowledge in the field, considering the common general knowledge and the state of the art as a whole. Unlike the assessment regarding whether an invention is new, multiple references can be combined for evaluating whether your invention is obvious.

The Supreme Court of Canada set out the steps for evaluating obviousness of an invention in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61:

(1) (a) Identify the notional “person skilled in the art”;

(b) Identify the relevant common general knowledge of that person;

(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;

(3) Identify what, if any, difference exists between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;

(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

There is no need for the invention to be groundbreaking. Indeed, a scintilla of invention may be sufficient.

Prior art

Whether an invention is new or unobvious is usually determined on the basis of prior art references.

 

Generally, prior art includes information that is publicly available before the earliest filing date of your patent application. For example, the prior art reference may be an earlier patent application or a journal article. Prior art is not limited to publications in Canada or in the English language. Rather, prior art could be from anywhere in the world in any language.

The invention must be useful

The Supreme Court of Canada states in AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36, that "[A]n invention must ‘be useful, in the sense that it carries out some useful known objective’ and is not merely a ‘laboratory curiosity whose only possible claim to utility is as a starting material for further research."  

 

To be useful, the invention must also be controllable and reliably reproducible.

 

The usefulness of an invention is also commonly called utility. The utility of an invention can be established by demonstration or sound prediction.

 

Demonstration is by showing the utility of all embodiments of the invention or all members of a genus claimed by testing or experiments. Merely stating that the invention is useful for something is not enough.

In case the utility is not demonstrated, the utility may be established by sound prediction. The Supreme Court of Canada listed in Apotex Inc. v. Wellcome Foundation Ltd., 2002 SCC 77, the three components of sound prediction:

  1. there must be a factual basis for the prediction;

  2. the inventor must have at the date of the patent application an articulable and “sound” line of reasoning from which the desired result can be inferred from the factual basis; and

  3. there must be proper disclosure.

Generally speaking, the factual basis includes what is in the description and drawings, scientific principles, and what is known in the common general knowledge. You can think of the sound line of reasoning as the analysis that logically bridges the factual basis and the utility of your invention.

We hope this gives you a general idea what is required for a patent. If you believe your invention is directed to new, unobvious, and useful patentable subject matter, and would like to know more about obtaining a patent, please see our patent services and contact us for a free and confidential consultation

 
 
 
 

  1 Yonge Street, Suite 1801, Toronto, ON M5E 1W7 | Phone: 647-858-9050  |  Email: info@gaolaw.ca

  © 2020 Gao Law Professional Corporation. All rights reserved.