GETTING INVENTIVE – A BRIEF GUIDE TO PATENTS (1 OF 2)
October 28, 2016
Out of the different types of intellectual property (IP), patents are easily the most misunderstood.
Most businesses would not know where to start when it comes to protecting an invention.
So fear not – this blog post is the first of two that will give you a brief overview of what you need to know about patents.
Patents are creatures of statute and in Canada are governed by the Patent Act.
Patents are essentially a grant of a privilege or property to an individual by the government.
The origins of modern patent legislation can be traced back to the Venetian Patent Act of 1474 and later the English Statute of Monopolies in 1623.
This may seem like a boring start, but the fact that patents exist by government statutes is an important distinction.
Unlike other types of intellectual property, such as copyrights and trademarks, patents are not protected at common law.
So if you do not follow the Patent Act your invention will not be protected by patent.
WHAT IS A PATENT?
A patent is essentially a registered monopoly that is provided by the Government of Canada to use an invention in Canada for up to twenty years from the date that the patent application was filed.
The public policy behind this scheme is that the exclusive right of an inventor to exploit his | her invention for up to twenty years will stimulate and encourage inventions. In addition, the public benefits from inventions as inventors are required to fully disclose their invention to the public in exchange for this exclusive right; and this disclosure can also benefit the public by allowing others to learn from the registered inventions (so the scheme also aims to prevent hoarding and hiding of valuable ideas and inventions).
In order to be patentable, an invention must be:
patentable subject matter (it can be a process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter)
new (it must be new compared to any element of “prior art” – which essentially means anything in existence prior to the invention)
useful (it must work as described and has a use – in other words, it has to do something)
not obvious (it must be result of an “inventive spark” and cannot appear obvious to a person “skilled in the art” when considered in light of all elements of prior art)
Whether an invention is obvious is determined by an assessment, measured on a balance of probabilities, whether someone ordinary skill and knowledge in the field would have come directly and without difficulty to the solution disclosed by the patent.
For those problem-solvers that like to cut to the core of a problem – note that simplicity is not obviousness. It is a high threshold to prove that an invention is obvious.
So if people review your patent application and think that they could have | should have thought of it, that is not the same thing as your invention being obvious. Simple inventions can be profitable ones.
SO WHAT NEXT?
If you have an idea or an invention, you may not know what do to in order to protect that idea | invention. You may not know how to determine if your idea | invention is really new and has not been thought of or developed by someone else.
A patent agent is a person who is registered pursuant to the Patent Act to act as an agent for the purpose of assisting with the preparation and prosecution of patent applications. Apart from the inventor him | herself, only a patent agent is able to communicate with the patent office regarding a patent application. Patent agents have their own statutory monopoly of sorts to protect their trade, but the result is that when you retain a patent agent that person should be very specialized and experienced in assisting with your patent application and guiding you through the registration process.
To get back to your invention, to determine whether it was preceded by “prior art” or whether it is new, you will need to compare your invention against existing patents and patent applications – which you can do by searching the Canadian Patents Database.
You should also review books, articles, trade publications, the general accepted knowledge that exists in the field of discovery – all of these areas can be the source of prior art. So if your invention exists in some way in any of these fields, it may not be new for the purpose of a patent application.
Also, while the PatentAct will give you a monopoly over your invention within Canada only, you should consider the global state of your field when determining whether there is any prior art that would render your invention – for lack of a better way to phrase it - “not new”. (Sorry about the grammar in that sentence.)
Searching the database of the United States Patent and Trademark Office, as well as the patent offices of other countries. Think globally – and as a practical tip, searching the databases patents offices located in countries are centres of innovation distinguished in your field of expertise. So after the United States, perhaps look to the United Kingdom, China, India or Germany.
If this seems daunting, remember that patent agent can advise you regarding this process and should be able to help coordinate all of these searches.
OWNERSHIP OF INVENTIONS
Ownership of patents – or any IP for that matter – is critically important.
If you do not have rights to a patent you cannot profit from it.
Generally speaking, the rule is that the inventor of an invention is the owner.
The law is less clear when it comes to employees who create inventions.
Specifically, the Patent Act is silent on employees and their ownership of the inventions that they create in the course of their employment.
As a result, these situations are often resolved at common law. Common law provides that employees own their inventions unless their employment contract states otherwise. If their employment contract does not deal with inventions, then the rule is that if the invention was created in the normal course of the employee’s duties, then the employer will likely own the invention.
So, for example, if someone working in Apple’s mail room (in Canada) invents the next generation application and his | her employment contract does not deal with inventions, at common law that mail room employee should own the right to that invention.
IMPORTANCE OF WRITTEN AGREEMENTS
Because ownership of inventions can be critical to a business’ success, I strongly advise clients who are in the innovation business to deal with inventions and other IP in their employees’ contracts of employment.
It is an easy and effective way to deal with this issue and prevent future complications.
In addition to employment contracts, you should carefully review the terms and conditions of agreements your business enters into with third parties - such as a third party service provider.
Some questions to consider when your business is entering into agreements with others:
Is that third party getting access to your confidential information or inventions?
Does that agreement deal with ownership of inventions that are based wholly or in part on the work of that third party service provider?
Does that agreement place an obligation to keep any information disclosed or inadvertently provided strictly confidential?
What restrictions are placed on that third party regarding the use of any information disclosed or obtained pursuant to your relationship?
What are the remedies for a breach of that agreement?
Properly drafted agreements can mean the difference between a business’ success or failure.
So make sure you talk to your lawyer about your business’ standard agreements and the agreements that your business is asked to sign.
An ounce of prevention is worth a pound of cure, and carefully reviewing the terms and conditions of agreements is well worth the investment.
[UP NEXT - our next post will look at the patent application process, defending your patent and moving forward to commercialize your patent.]