What You Need to Know About Patents: How, Why, and Where

Whether you are a new and exciting startup or a successful, well-established business, patents are part of any well-rounded intellectual property portfolio.

What Is a Patent?

The patent system has been established as a bargain between a government and an inventor with the purpose to encourage the exchange of information between inventors, and fuel innovation and creativity for the benefit of society. This bargain consists of granting an inventor a monopoly over her/his invention, in the form of a patent, for a limited period of time, in exchange for full disclosure of the invention to the public. The disclosure must be made to the extent that the public would be able to make the same successful use of the invention as the inventor, once the period of monopoly has expired. The period of monopoly is generally 20 years from the filing date of a patent application. Once a patent is granted by a government to an inventor, it gives the inventor or patentee the right to exclude others from making, selling, or using the invention, for the period of the monopoly, in the jurisdiction in which the patent is granted.

What Can I Patent?

A patent may be granted for an invention in any field of technology so long as the invention is novel, non-obvious, useful, and falls under the definition of an invention in a given jurisdiction. According to Canadian and United States Law, for example, an invention consists of any new and useful art, process, machine or composition of matter or any new and useful improvement of these. While some categories of invention are specifically excluded by law (see below), various aspects of an invention may still be protected in ways that are acceptable in many jurisdictions.

Is my Invention Patentable?

For an invention to be patentable it must be novel (new), non-obvious (inventive), and useful. The invention must also fit into the judicial definition of an “invention” and must not consist of subject-matter which is excluded under the law. Depending on the jurisdiction, subject-matters which are excluded and cannot be patented include:

• scientific principles,
• abstract theorems,
• laws of nature,
• natural phenomena,
• schemes, rules and methods for performing mental acts,
• playing games or doing business,
• computer programs and
• methods of medical treatment.

Novelty

To receive a patent, an invention has to be novel, i.e. new. This means that the invention must not have been known, nor disclosed to the public prior to applying for the patent. The invention cannot be known from, for example, existing products, scientific publications, or other patents available in any country and in any language.

Furthermore, the invention must not be publically disclosed by the inventor prior to the filing of the patent application. Although some countries such as Canada and the U.S allow for a grace period of up to one year before the filing of a patent application, during which public disclosure is acceptable, most jurisdictions do not allow this. As such, it is highly recommended to discuss any previous or planned public disclosure with a patent agent, in order to time the filings of the patent application in such a way as to maximize protection in the jurisdictions of interest.

Non-obviousness

For an invention to be non-obvious or inventive, the invention must not have been obvious to make for a person skilled in the art having the common general knowledge in the field and/or having information that existed in the art at the time the application was filed.

In practice, this means that combinations or substitutions of known elements, use of known techniques to improve an invention, or the existence of a teaching, suggestion or motivation in the prior art to arrive at an invention, for example, will generally not be considered inventive unless the results were unexpected and unpredictable. This requirement is often negotiated during the examination process with national patent examiners during the prosecution of a patent application.

Utility

For an invention to be useful it must have a practical purpose. For example, for patents with chemical or pharmaceutical applications, utility is often demonstrated with data acquired prior to the filing of a patent application. Alternatively, utility may also be established by a sound prediction. In such cases, the invention needs a sound line of reasoning leading to the desired utility, based on a factual basis disclosed in the patent application at the time of filing.

Can I Get an International Patent?

A patent is only valid and may be enforced in the jurisdiction in which it is granted. Although patent applications may be submitted through world-wide and regional agencies such as the World Intellectual Property Organization (WIPO) and the European Patent Office (EPO), there are no world-wide or regional patents per se. A separate patent must be obtained in every jurisdiction or country in which an inventor wishes to commercialize and protect the invention from potential infringement.

It is, therefore, highly recommended that the jurisdictions in which patent protection is wished to be sought be determined prior to submission of any patent application related to an invention, in order to develop the best filing strategy and make optimal use of the systems established by WIPO and EPO in order to minimize costs and delays related to multiple filings.

BCF’s Patents team can help optimise the value of your innovations. Should you have any questions regarding this article or patents in general, please do not hesitate to contact our team.