Understanding Which Criteria Is Used When Deciding Which Patents Are Granted : Part 1

Whether simple or complex, every invention starts with an idea. Unfortunately, the idea itself is not patentable, the inventor must know how to build it or make it work before filing for patent protection. A prototype or working model is not required for a patent, but if an invention is incorrectly described in a patent application, it could be invalidated if challenged. Patents can be valuable to businesses and individuals, particularly when an invention is commercialized. In Canada, patents can provide up to 20 years of protection with the payment of annual renewal fees.

To obtain a patent in Canada, an applicant needs to apply to the Canadian Intellectual Property Office (CIPO). There are no common law rights to a patent. If a patent application is not filed for an invention, anyone can make, use or sell the invention without a risk of infringement. Before filing an application, a search of existing patents and applications can be performed to help determine whether others have rights in similar technology and the likelihood of success in obtaining an issued patent. A search can help tailor the way in which your invention is protected and limit the potential for infringement on someone else’s patent. A search cannot guarantee success or that there is no infringement, but it can provide insight and knowledge. Once a patent application is filed, a patentee can claim patent pending status. However, the ability to prevent others from infringing your technology is only available after the patent application has successfully gone through examination and been issued as a patent.

The Patent Act and the Patent Rules determine the application process in Canada. Four main categories must be met for your patent application to be granted. These four criteria include:

  • Patentable subject
  • Novelty
  • Usefulness
  • Non-obviousness

We will expand on what each of these criteria means to get a better understanding of how the process of patents in Canada works.

Patentable Subject

The first criteria, patentable subject matter, describes what qualifies for patent protection. Patentable subject matter includes processes, manufactures, machines, compositions of matter and improvements to these. There are also a number of things that are not considered patentable subject matter. Medical treatments, higher life forms, scientific principles, theorems and energy (e.g. electric current, electromagnets) are not patentable. While medical treatments cannot be patented, methods of diagnosing may be.

In Part 2 of our blog, we will outline the details of the other 3 criteria used for granting or rejecting patents. Be sure to keep an eye out.

If you have any questions about patents or the application, contact our team today for a free consultation.