doing business in canada - Davies Ward Phillips & Vineberg LLP

Industrial and Intellectual PropertyPATENTSThe process for obtaining a patent in Canada is set out in the federal Patent Act. Such process is generallyconsistent with patent legislation in other countries which are signatories to the Patent Cooperation Treaty of1970, to which Canada adhered in January 1990.To qualify as patentable in Canada, an invention must be novel and useful, and must not be obvious to a personskilled in the particular art or subject matter of the invention. The invention may be any new and useful art,process, machine, manufacture, composition of matter, or improvement in any of the above categories.The basic principle of the Patent Act is that a patent is only granted to an original inventor or to his or her legalrepresentatives. Companies that employ inventors or are actively involved in R&D should therefore clarify theownership of any potential or future inventions, in written agreements, with those individuals or employeeslikely to participate in the creative process. In addition, a patent is granted on the basis of the first to file, unlikethe first to invent rule applied in some other jurisdictions. Because of the importance of the filing date of anapplication, an applicant should make every effort to file at least the minimum permitted information as early aspossible.There is no requirement in Canada that a product be marked as patented, although it may be prudent to do so,in order to give notice of the patent to third parties. However, it is an offence to mark an article as "patented" ifit has not been patented in Canada.The term of a Canadian patent depends on the filing date. For applications filed before October 1, 1989, the termof the patent is 17 years from the date of the granting of the patent. For applications filed after October 1, 1989,the term of the patent is 20 years from the date of the filing of the application in Canada.Once a patent is granted, the patentee enjoys exclusive rights to make, construct or use the invention or to sellit to others for their use. These exclusive rights may be assigned or licensed by the patentee. If these exclusiverights are infringed by an unauthorized third party, a patentee may seek an injunction to stop the infringementand may also claim for damages resulting from the infringement.If a person has a patent (or has filed an application) in another country, in accordance with the terms of anypatent treaty or convention to which Canada is a party, it may have the same force and effect as if filed inCanada, provided that the application is properly filed in Canada within 12 months after the date of filing in theother country.A number of requirements must be met in order for a Canadian patent to be granted.First, novelty is a condition of patentability in Canada. Therefore, any public disclosure of an invention, in Canadaor elsewhere in the world, before the filing date of a Canadian patent application can be a bar to patentability.However, if the disclosure is by the applicant or a person who has been informed by him or her of the invention,the applicant has a 12-month period during which to file an application.Secondly, a patent will only be granted if the invention has utility. That is, it must be workable and of industrialvalue. For example, it would be impossible to be granted a patent for a scientific principle, an abstract theoremor a medical treatment.48 Industrial and Intellectual Property