Understanding International Patent Law and Implications for Your Start-Up

Understanding International Patent Law and Implications for Your Start-Up

Written by Karlee Squires
 
So you have come up with a great invention and are excited to build a business around it. Until you discover that someone has created a similar invention in another country. What can you do? Do you still have a viable business? Do you still have a patentable invention?
To answer this question, you need to understand how patents are awarded in Canada and internationally.

Understanding Patents in Canada
The patent process in Canada is governed by the Patent Act.[1] A patent provides a time-limited, legally protected, exclusive right to make, use and sell an invention.[2] Once approved, a patent lasts for 20 years from the file date.[3]
For an invention to be patentable in Canada, it must meet 4 criteria. (1) It must be a matter that can be patented.[4] (2) It must be novel or new.[5] (3) It must be useful.[6] (4) It must be inventive and non-obvious, [7] meaning the invention would not have been obvious to a person skilled in the art or science to which it pertains.
 
What Does a Canadian Patent mean for Other Countries?
 Patent laws and requirements are different in each country. Receiving a patent in Canada does not guarantee the same invention will be patentable in another country. To exercise an enforceable patent in another country, you will need to apply for the patent right in each country separately. In the same way, the existence of a patent in another country does not automatically mean that patent is granted in Canada.

Similarity of a Patent in Another Country
However, if a patent or similar patented invention exists in another country, while not enforceable in Canada, it’s existence may affect the ability to obtain a Canadian patent. A similar invention outside of Canada raises issues around the novelty requirement for an invention to be patentable in Canada.

How do you get around this issue? When applying for a patent it is important to be clear how your invention differentiates from something similar in other jurisdictions. When submitting your patent application in Canada, you should disclose any patent in another jurisdiction you believe is similar to your own invention. If possible, provide the name of the inventor, the number of the patent, the country and the date of issue of the similar patent. The most important thing you will need to include is a list of the similarities and differences between your product/invention and the previously patented invention.[8]

Footnotes:
[1] Patent Act, RSC 1985, c P-4 [Patent Act].
[2] Patent Act, supra note 1 at s 42.
[3] Canadian Intellectual Property Office, “What is a Patent” (28 February 2022), online: http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03716.html
[4] Government of Canada, “Manual of Patent Office Practice (MOPOP)” (28 February 2022), online: https://s3.ca-central-1.amazonaws.com/manuels-manuals-opic-cipo/MOPOP_English.html#_Toc95464691 at Chapter 17.
[5] Supra note 3
[6] Supra note 3
[7] Supra note 3.
[8] Supra note 2, s 67(2).