For a startup, patents protect its technologies and is a must to have as far as potential angel and venture investors are concerned. In Canada the Patent Act governs patent protection. Pursuant to the Patent Act, Canadian Patent Office grants a patent to any “art, process, machine manufacture or composition of matter” or any new and useful “improvement”. Anyone of these qualifiers is patentable in Canada if it is “new and useful”. Unlike in the US where the courts stated that “anything under the sun that is made by man” is patentable, the underlying idea of the Canadian patent system is to protect ideas of “practical application in industry, trade or commerce”. Canadian judges are reluctant to extend the concept of invention beyond established precedent – “it is Parliament job’s, not the courts, to extend or contract patentability”. The novelty requirement means that the invention must be new and not previously patented, described, or otherwise anticipated. Non-obviousness requires that the invention, in light of the prior art, is not obvious to a person skilled in such prior art. The usefulness element requires the invention to have specific and substantial benefits that the inventor must disclose.
To register a patent an inventor must truthfully disclose in the patent petition the substance of an invention. The Patent Act provides that even innocently made false “material allegations” invalidate the patent. Omissions made willfully for the purpose of misleading also invalidate the patent. A Canadian registered patent typically grants to an inventor a twenty-year monopoly and allows the owner to exclude others from making, using, importing, offering for sale, or selling the invention. If a third party infringes a patent, the patent holder can bring an action to a court of law and through litigation stop the infringing user from continued infringement of the patent and can also seek damages, legal fees, and costs. There is no such thing as an international patent. A patent has to be registered in each and every country the entrepreneur wants to have a protection. Patents are not renewable, and when the term expires the subject matter of the patent becomes part of the public domain and is open to public use.
Drafting a patent application involves writing an abstract, specification and claims, as well as selecting drawings and diagrams. The claims are the most important part of the patent: they define the scope of the inventor’s rights. A claim can be thought of as a fence surrounding a parcel of land. The greater the fence, the greater the rights it encompasses. At the same time, a fence that encroaches on the property of another will be taken down. In other words, a poorly drafted claim will not protect the invention. A court will invalidate a patent containing such a claim. Not surprisingly, drafting patent claims involves specialized knowledge and skills.
The specification is a description of the invention. While not as crucial as the claims, the specification is also very important. If the meaning of a claim is disputed, one looks to the specification for resolution. Claims often stand or fall depending on the language of the specification. It must also be noted that, while claims can be amended during prosecution, nothing new can be added to the specification. While the inventor provides the material for the specification, it is the experience and skill of the patent lawyer that determines the strength of the patent.