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OVERVIEW OF PATENT LAW IN CANADA

Canada's patent system underwent a major overhaul in 1989.  The following important changes were introduced at that time, and are applicable to all patent applications filed since then, as well as to patents issuing therefrom:

• entitlement to a patent became based on the first to file rather than the first to invent;
• the term for patents, formerly 17 years from the date of issue, became 20 years from the Canadian filing date;
• publication of patent applications 18 months after the priority date commenced;
• annual maintenance fees, applicable to patents and pending applications, were introduced;
• A requirement was added to request examination.  The request must be made within five years after the Canadian filing date.  No examination occurs until such a request is filed. 

CONDITIONS OF PATENTABILITY

In order to be patentable, an invention must be novel and inventive; it must have utility and it must relate to patentable subject matter. 

In order to be considered novel, the subject matter of a claim must not have been disclosed in such a manner that it became available to the public before the filing date of the application for the patent, or the priority date, if any.  This critical date is called the claim date.  In the case of disclosure of the invention originating from the inventor, a grace period applies.  The critical date is one year prior to the Canadian filing date.  In order to establish that an invention lacks novelty, it must be shown that the whole invention is disclosed in a single source with sufficient clarity that a person reading and following it would, in every case and without possibility of error, be led to the invention.

In order to satisfy the requirement of inventiveness, the invention must not be so obvious, having regard to information which has been disclosed in such a manner that it became available to the public, that an unimaginative person skilled in the art to which the invention pertains would have been led directly and without difficulty to the invention.  As in the case of novelty, the critical date is the claim date, and the grace period applies to information originating from the inventor.

The requirement that an invention have utility is really a two-pronged requirement.  Firstly, the patent as claimed must not encompass embodiments that will not work.  Accordingly, all of the essential elements of the invention must be included in the claim.  The second prong of the utility requirement is that the invention as claimed must not encompass embodiments that will not achieve the results promised in the patent.  Accordingly, a claim which is limited to embodiments which work will nevertheless lack utility if any of those embodiments does not work as well as promised.

Patentable subject matter includes an art, process, machine, manufacture and composition of matter.  Subject matter that is prohibited from patentability includes a mere scientific principle and abstract theorems.  Methods of medical treatment are not considered to be patentable subject matter.  However a claim to a drug for a particular therapeutic application or disease condition is patentable.  Also, U.S. method of medical treatment claims can be converted to Swiss style claims which are allowed.  Although a plant is not considered patentable subject matter per se, the genes and any genetically engineered cells that may be used in the plant may be covered in a patent. The Plant Breeders' Rights Act governs the rights which may be sought with respect to new plant varieties.  Lower organisms such as bacteria are patentable.  Transgenic animals are not considered patentable subject matter.  However, claims to a method of making a transgenic non-human mammal and its use are patentable.  Also patentable are the product of genetic alteration at the cell or gene level.  Business methods are not considered patentable when they are directed only to things that involve professional skill, such as a scheme or plan, system of doing business, method of accounting or providing statistics.  However, claims to business methods which utilize the processing function of a computer may be allowable.  These inventions may include financial, marketing and other commercial activities. 

The validity of a patent (or a claim) may be challenged for failure to meet any of the four requirements discussed above.  It may also be held invalid on additional grounds including:

• ambiguity (i.e. the patent fails to differentiate clearly the aspects of the invention which are claimed to be exclusive from those which are not);
• insufficiency of disclosure (i.e. the patent fails to teach a person skilled in the art how to produce the invention); and
• overly broad claim (i.e. the claims encompass embodiments broader than the invention conceived or the invention disclosed).

INFRINGEMENT

Canada's Patent Act does not define infringement.  The Canadian test for patent infringement is based mainly on the 1982 Catnic decision of the U.K. House of Lords.  The elements of the claims of a patent are to be construed purposively from the point of view of the person skilled in the art aware of the common general knowledge and having read the patent as a whole with a mind willing to understand.  Based on the language of the claims, a determination is made of the essential elements of the claims.  If all of the essential elements of a claim are present, there is infringement.  Contrary to the situation in the U.S., Canadian patents are construed without regard to extrinsic evidence such as the prosecution history of the patent.

REMEDIES FOR INFRINGEMENT

The owner of a Canadian patent application (or a person claiming under the owner, such as a licensee) may take legal action against an infringer.  Possible remedies include damages suffered (though a successful plaintiff is often permitted to elect instead an accounting of the infringer's profits), an injunction prohibiting further infringing acts, a declaration that the patent is valid and infringed; delivery up of infringing articles, pre- and post-judgment interest, and costs of the action.

No legal action may be instituted against an infringer until the patent has been granted.  However, once the patent has been granted, a claim may be made for "reasonable compensation" for any damage suffered by reason of acts occurring after publication of the patent application but before grant that would have constituted an infringement of the patent if the patent had been granted on the publication date.

AMENDMENT AFTER ISSUE

Once a Canadian patent has issued, there are three ways by which it can be amended: (i) reissue; (ii) disclaimer; and (iii) re-examination. 

A patentee may seek reissue of a patent within four years of the issue date where the patent is deemed defective or inoperative by reason of insufficient description or by reason of the patentee's claiming more or less than he had a right to, and it appears that the error arose from accident, inadvertence or mistake, without any fraudulent or deceptive intention.  A reissued patent expires on the same date as the original patent.

A patentee may file a disclaimer where by any mistake, accident or inadvertence, and without any wilful intent to defraud or mislead the public, (i) the specification is too broad, claiming more than the patentee was entitled to, or (ii) the specification claims subject matter of which the named inventor was not the inventor.  A disclaimer may relate to a whole claim, but may also relate to a portion of a claim.  Accordingly, a disclaimer can be filed in relation to a claim which would otherwise be overly broad, so as to disclaim the portion which goes beyond the invention made or disclosed.  In this way, the narrowed (disclaimed) claim remains.

Re-examination of a patent can be requested by anyone who pays the required fee.  The person making the request files prior art with an explanation of its pertinency.  If the request was filed by a person other than the patentee, the patentee is given notice.  What follows is a process of re-examination of the patent which could give rise to cancellation, confirmation or amendment of the claims.

Third parties may also file prior art for consideration by a patent examiner before the patent application has issued.  However, unlike in the re-examination process, those filing such prior art before issue are not entitled to participate in the process of examination of the application.

REGISTRATION OF TRANSACTIONS

Every assignment of or grant of exclusive rights in a patent must be registered at the Patent Office.  At the very least, an unregistered assignment is void against a subsequent assignee who registers the subsequent assignment.  There is jurisprudence indicating that an unregistered patent licence may be void even against a subsequent assignee who was aware of the unregistered licence.

The purpose of this document is to provide information as to developments in the law.  It does not contain a full analysis of the law nor does it constitute an opinion of Ogilvy Renault or any member of the Firm on the points of law discussed.

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