Intellectual
Property:
Patenting Procedure and
Requirements for Patentability
T.T. Lang
What Is a Patent?
 What is a patent?
 A patent is a government granted monopoly
 Exclusive right to make, use or sell an
invention
 The right to exclude others from making,
using or selling an invention
Patents are granted for
inventions
 What is an invention?
 New or useful art, process, machine,
manufacture or composition of matter
 Improvements
 Defined in s.2 of the patent act
Patent Is a Business Asset
 Value of a patent is determined by the
subject matter
 Some patents are very valuable and others
are less so
 Value may also be determined by
enforceability
Patent Act – Federal
Legislation
 Patents are entirely a creature of statute
 No common law basis, case law interprets
and applies provisions of the Patent Act
 Patent Rules govern procedural aspects of
applying for a patent
Section 27 – Patent Act
 (1) authority to grant patents to inventors
 (3) defines what is necessary by way of
description
 (4) requires claims that are distinct and
explicit
 (8) provides an exclusion for mere
scientific principle or abstract theorem
Parts of a Patent
 Claims
 Serve to define the invention to be protected
 Description and drawings
 Serve to teach
 Addressed to a person skilled in the art
 Disclose the best mode – machine
 As contemplated by the inventor
Consolboard Inc. v. Macmillan Bloedel
(Sask.) Ltd.
(1978), 63 CPR (2d)
 Enabling disclosure is the heart of the
patent system
 Patent is entirely directed at those skilled
in the art
 Claim construction
 In FCT, for infringement or validity opinion
 Done from point of view of person skilled in the
art, at the date of patent publication [whirlpool
and FreeWorld trust cases]
 Utility is a very low threshold and does
not need to be explicitly stated
Requirements for
Patentability
 Must be an “invention” as defined in the
Act
 Subject matter
 Must be new (“novel”, “unanticipated”)
 Must be non-obvious (“inventive”)
 Must have utility
 Applicant must be the inventor, or have derived rights
from the inventor
 Naming proper inventor (Apotex inc. V. Wellcome
foundation (1998) 79 CPR (3d) 193) & (Q’max case)
What Is Patentable Subject
Matter?
 Living Matter:
 Grant to lower life forms:
 Diamond v. Chakrabarty (US)
 Abitibi Co.
 Not higher life forms:
 Harvard Mouse – Patent Appeal Board
 Harvard Mouse – Federal Court
 Harvard Mouse – Supreme Court of Canada
Harvard Mouse Patent
What Can’t Be Patented?
 Higher life forms
 Methods of medical treatment
 Scientific principles or abstract theorems
(Section 27(8))
 Software
 Business methods
 Professional methods – interpretive or
judgmental reasoning
Methods of Medical
Treatment
 Tennesee Eastman v. Commissioner
 A chemical used as an adhesive was known
 The new discovery was that it bonded human
tissue – used in place of stitches to close
wounds
 SCC held that methods of medical surgical
treatment are not inventions
 EPO has a similar ban
 USPTO allows such claims
What Is Patentable Subject
Matter?
 Surgical treatment
 No
 Diagnostic methods
 Yes – not a method of
medical treatment
 Preventative
medicine
 Questionable – no
case law
 Contraceptive
methods
 Yes – (re. General
Hospital)
 Medicines
 Yes
 Medical devices
 Yes
In the Claims
 A method for treating Disease X,
comprising administering an effective
amount of compound Y to a patient
 No
 Use of compound Y for treating cancer disease
 Use of compound Y for preparation of a
medicament for treating cancer disease
 Use of compound Y for the amelioration of the
effects of disease X
 Use of compound Y for therapeutic
treatment
 No
Software
 Software is not patentable as an article
 Software is patentable as a method,
provided that the method involves more
than just a calculation (Schlumberger)
 May be considered a mere mathematical
algorithm
 Hardware (system) which relies on
software is patentable (re. Westinghouse)
Business Method
 Methods of doing business
 Not patentable in Canada (lack of utility)
Few Examples: Patentable?
 A new way to wager in a poker game
 No, lack utility (progressive games decision)
 A wallpaper pattern that is a nice design
 No, lack utility, industrial design subject
matter
 A wallpaper pattern of proven therapeutic
value
 Yes, has utility
 A method of anger management training
 No, business method, requires professional
skill
 A heart valve for implantation in a human
heart
 Yes, not a medical treatment, medical device
 A new crack cocaine pipe
 Yes, even illicit subject matter is patentable
IP Trail: Patenting an
Invention
1. Innovation/
development
6. Infringement/validity
2. Patenting strategy
Filing program
Publication
Examination
5. Commercialization
3. Patent prosecution
Amendments
4. Issuance
What Are the Costs?




Filing fee - $300
Examination fee - $400
Final fee - $300
Maintenance fee – payable commencing 2nd
anniversary of filing date and annually thereafter
 Different from US – due 3 times, larger amount
 Reinstatement fee - $200
Maintenance Fee
 Is a government fee
 Must be paid at the CIPO
 For both pending applications and issued
patents to keep them in good standing
 Applicant may claim “small entity” status
 Pay half of the fees of a “large entity”
 In Canada, “small entity” refers to an entity that
employs 50 or fewer employees or a university
 In the US, “small entity” refers to a company
with 500 or fewer employees, a non-profit
organization or an independent inventor
Claiming Small Entity
Barton No-Till and Flexi-Coil v. Dutch Industries
 Small entity status:
 Is critical to determine whether applicable to
applicant;
 Whether there is a likelihood that the “entity”
status may change
 Will not be questioned by CIPO for
correctness
 Patent rights may be entirely lost through
improper assertion of small entity status
 Does not apply to entity which
 has transferred or licensed,
 or is obligated to transfer or license, any right to
the invention to
a third party which does not qualify as a small entity
 CIPO has no discretion to accept top-up
payments to correct underpaid patent
maintenance fees from small entity to large
entity
 CIPY currently does not accept corrective
payments
Grant of Patents
 s.42 – exclusive rights to make, construct, use or
sell the invention
 s.44 – 20 year term
 From the filing date (Canadian filing)
 From the filing date, or earliest priority date, if a
request made claiming priority of earlier filed
application (US filing)
 s.43 – presumption of validity
 s.46 – subject to payment of maintenance fees
Amendments to Patents
 During prosecution/final fee not paid
 s.38.2(2) must be satisfied
 Matter that may be reasonably inferred from the
specification/drawings may be entered
 No new subject matter may be added
 Notice of allowance
 In addition to s.38.2(2)
 No amendments that would necessitate a further search by
examiner or change part of invention
 Correction of clerical error
Post-Issuance Amendments
 Disclaimer – amend
a patent to claim less
than what was
claimed in the
original patent
 For all or part of a claim
 Anytime during life of
patent
 Can narrow, but not
broaden claim
 Prescribed fee
 Re-examination
 Any person can request
 During life of patent
 On basis of prior art
only
 Cannot broaden claims
 No change to disclosure
 Open to public
inspection
 Re-issue
 Defective patent
may be corrected
 Can broaden or
narrow claim
 Must be made
within 4 years of
issuance of
original patent
 Section 8 clerical
error
 Anytime
 Prescribed fee
Opposition of a Patent
Before Patent Office
 Canada – CIPO
 US – USPTO
 Pre-issuance
 Protest
(Rule 10 & s.34.1)
 Post-issuance
 Re-examination
(s.48.1)
 Pre-issuance
 Interference
proceedings
 Post-issuance
 Re-examination
 EPO
 Pre-issuance
 Between publication
and issuance
 Can present written
observations on
patentability
 To influence refusal of
patent
 No right to be heard
or be informed of
examiner’s reaction
 Post-issuance
 Within 9 months
 Any person may
commence
opposition
proceeding