Patent Law

 What are patents?
Successful business are built on innovative ideas.  These ideas are protected by the government through patents.  If you want to have an assured protection for your idea you may want to explore the option of patents.
A patent is a document that provide a time-limited, legally protected, exclusive right to make, use and sell an invention.[1]  They apply to newly developed technology as well as to improvements on existing products or processes defining an invention.  In Canada a patent lasts for 20 years from the date it is filed and protects the inventor’s rights in Canada.[2] 
To patent an idea in Canada, you will have to file a patent application with the Canadian Intellectual Property Office. The CIPO will then determine whether your idea meets the requirements for patentability.  In order to be patentable an invention must be (1) a matter that can be patented, (2) novel, (3) useful, and (4) inventive and non-obvious.[3]
Patentable Subject Matter
In Canada only “inventions” are patentable.[4]  Inventions are defined in the Patent Act as:
[A]ny new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter. [5]
These five categories of invention – art, process, machine, manufacture and composition of matter – have been further defined by the Canadian Intellectual Property Office and by the courts. 
“Art” has been defined broadly as a process that (a) is not a disembodied idea but has a method of practical application, (b) is a new and innovative method of applying skill or knowledge; and (c) has a result or effect that is commercially useful.[6]  A “process” is the application of a method to a material or materials.[7]  A “machine” is the mechanical and/or physical embodiment of any function or mode of operation designed to accomplish a particular effect, wherein the parts of the machine cooperate to accomplish the effect.[8]  “Manufacture” refers to “a non-living mechanistic product or process” and as being the process of making technical articles or materials by the application of physical labour or mechanical power, or the article or material made by such a process.[9]  Lastly, a “composition of matter” is defined as a combination of ingredients or substances as a chemical union or physical mixture.[10]
Most inventions, 90% of patents in fact, are not breaking entirely new ground, but are instead improvements on existing arts, processes, machines, manufacturers and compositions of matter.[11]  Improvements upon these categories of inventions are also patentable.[12] 
According to the Patent Act you cannot patent a scientific principle or an abstract theorem.[13]   There aer a number of other excluded or contentious subject matters, including some methods of doing business,[14] methods of medical treatment or surgery,[15] or fine arts[16].
Novelty
In order to be patentable an invention must be new and inventive.  The definition of “invention” in the Patent Act makes “new” a requisite.[17]  In order to be “new” under the Patent Act the subject matter of a patent application: must not have been made public by the applicant (or someone who obtained their knowledge from the applicant) for more than one year before applying; must not be made public by someone independent of the applicant; and must not already be subject to an earlier patent application.[18] 
Essentially, in Canada the first applicant to file a patent is the one entitled to obtain the patent and any public disclosure of an invention before filing can prevent you from obtaining a patent.[19]  The Canadian Patents Database is searchable online and can be used for determining novelty by checking for any possible conflicts with already existing patents.  It is also best to file for a patent before, or very soon after, public disclosure.
Usefulness or Utility
An invention must be “useful” according to the Patent Act.[20]  In order to be useful the invention must work or be advantageous for its designated purpose – it has to function and it has to fulfil some purpose.[21]  This usefulness must be established through demonstration or by sound prediction at the time of the patent application.  Utility can be established by sound prediction when “utility can be predicted in advance of complete testing”[22]  This can be shown when (1) there is a factual basis for the prediction, (2) the inventor articulates a sound line of reasoning for the desired result to be inferred from the factual basis, and (3) there is proper disclosure of this information.[23]
Inventiveness of Non-Obviousness
In order to be patentable, an invention not have been obvious to a person skilled in the art or science to which the invention pertains before the patent application is filed.[24]  Non-obviousness is determined in a four part test where you (1) imagine a “person skilled in the art” the patent application’s subject matter is concerned with, (2) identify the inventive concept of the claim in question, (3) identify the differences between the “state of the art” at the time and the claim, and then finally (4) decide whether the differences identified could constitute ‘steps’ to the invention claimed that would have been obvious to the “person skilled in the art” or was inventiveness required.[25]
Generally, there is a halo of obvious solutions or improvements surrounding any old invention or problem.  An invention must stretch beyond this limit in order to be inventive.
Conclusion
If all of these requirements are met your idea is likely to be patentable.  But it’s important to keep in mind the potential downsides to patenting your invention.  Patents are expensive.  Filing fees alone are hundreds of dollars and you must pay maintenance fees for the entire 20 years of the patent.[26]  While small entities have a discount, these fees can easily add up.  The patent application process is also complicated and can take considerable time.  The Canadian Intellectual Property Office recommends you retain a registered patent agent to help with the complexities of patent law, which can be another expense difficult for a small business to swallow.
There are other protections for your ideas at law that might fit better you may want to consider before patenting, such as trademarks or copyright, some of which are protected at common law and don’t require a registration.  Overall, patents are a powerful option for protecting inventions but you should first be sure that your idea qualifies and that a patent won’t be more trouble than it’s worth for your business.

Kiara Brown is a member of the BLG Business Venture Clinic, and is a 3rd year student at the Faculty of Law, University of Calgary.

References
[1] Canada, Canadian Intellectual Property Office,  “What is a patent?” (Ottawa: CIPO, 1 December 2015) [What is a patent?].
[2] Ibid.
[3] Ibid.
[4] Patent Act, RSC 1985, c P-4 [Patent Act] (The Patent Act defines patents as letters patent for an invention at s 2).
[5] Ibid.
[6] Progressive Games, Inc v Canada (Commissioner of Patents), [1999] FCJ No 1623 at para 16, 3 CPR (4th) 517.
[7] Canada (Commissioner of Patents) v Ciba Ltd [1959] SCR 378 at 383, 18 DLR (2d) 375.
[8] Canada, Canadian Intellectual Property Office,  Manual of Patent Office Practice (Ottawa: CIPO, 29 October 2018) at 12.01.03 [MOPOP].
[9] Harvard College v Canada (Commissioner of Patents) 2002 SCC 76 at para 159, [2002] 4 SCR 45.
[10] David Vaver, Intellectual Property Law: Copyright, Patents, Trade-Marks, 2nd ed  (Toronto: Irwin Law, 2011) at 294.
[11] Canada, Canadian Intellectual Property Office,  “A guide to patents” (Ottawa: CIPO, 26 September 2018) [Guide to patents].
[12] Supra note 5.
[13] Ibid.
[14] Amazon.com Inc, Re 2011 FCA 328 at para 59-63, [2011] FCJ No 1621 [Amazon].
[15] Supra note 8, MOPOP at 12.03.02.
[16] Supra note 14, Amazon at para 58.
[17] Supra note 5.
[18] Ibid at s 28.2(1).
[19] Supra note 1, What is a patent?.
[20] Supra note 5.
[21] Supra note 11, Guide to patents.
[22] Apotex Inc v Wellcome Foundation Ltd 2002 SCC 77 at para 69, [2002] 4 SCR 153 [Apotex].
[23] Ibid at para 70.
[24] Supra note 5 at 28.3.
[25] Supra note 22, Apotex at para 67.
[26] Canada, Canadian Intellectual Property Office,  “Standard fees for patents” (Ottawa: CIPO, 8 August 2019)