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If you've come up with an innovative idea, it's important to protect your intellectual property by obtaining a patent. In Canada, the process of getting a patent can be complex and time-consuming, but it's well worth the effort. Here's a step-by-step guide to getting a patent in Canada.
Step 1: Conduct a search (Patentability/ Pre-Fling/Novelty Search)
Before you invest your time and money in obtaining a patent, it's important to do a search to ensure that your invention is novel and is not publicly available/ disclosed. A patentability search helps to identify relevant prior arts at the initial stages of IP creation. It enables you to make informed decisions about patent drafting and filing strategies and, in turn, reduces patent prosecution cost and time.
It is a good practice to conduct a thorough search yourself or outsource it to an expert to comprehensively search every aspect of an invention to find out the closest prior art (whether in patents or non-patent literature).
Apart from various commercial patent databases, free patent databases (such as Google Patents, USPTO search, and Espacenet.com), Google/ Bing and other Non-Patent Literature (NPL) database, you can also conduct a search on the Canadian Intellectual Property Office (CIPO) website. If anywhere you find similar literature, you may need to modify your invention or look for a different solution.
Step 2: Drafting of a patent application
Patent drafting is the art of techno-legal writing to encompass different features of an invention in written form. Different jurisdictions have different requirements and, therefore, require a different drafting style.
In Canada like many other jurisdictions, one can file provisional patent application (PPA) and after that non-provisional patent application can be filed within 12 months of filing the PPA. A PPA can be either a fully drafted patent application, a partially developed patent application, or in exceptional circumstances, any written document (such as a white paper, technical specification, or presentation).
It is important that the drafted PPA captures the essence of the invention so that the priority can be claimed from the date of filing of PPA. However, the drafted non-provisional patent application must include following aspects:
1. Petition: The petition is a formal request for a patent and includes:
The title of the patent
Your name and address
The name and address of co-applicants (if applicable)
2. Statement of entitlement: The drafted application must provide one of the following statements:
The applicant or applicants are entitled to apply for a patent
The applicant is the sole inventor of the subject matter
The applicants are all inventors and the sole inventors of the subject matter
This statement should be included in the petition itself or should be provided in a separate document.
3. Inventor Information: The drafted application must provide the names and addresses of all inventors.
4. Abstract: Abstract of the invention should be provided in 150 words or fewer.
5. Claims: The claims written in the drafted application are the legal foundation that protects the invention. They form a boundary around patent defining your invention.
While writing the claims section, consider the scope, characteristics and structure of the claims.
6. Description: The description must be able to answer the questions of "what is your invention" and "how does it work." It should be clear enough that someone else could make and use the invention using only the description you provide.
7. Drawings: Whenever possible, include a drawing for inventions. If you can't illustrate your invention with drawings, you may include photographs that show the invention with your application.
Step 3: File a patent application
Once you're confident that your invention is novel, it's time to file a patent application. Patent filing is a complex procedure which requires submitting various forms in a specified format within strict timelines as specified by the patent office.
The application must include a detailed description of your invention, as well as drawings, if necessary. You can file your application online or by mail, but keep in mind that it can take up to 18 months for your application to be available in the publicly accessible Canadian Patents Database.
Step 4: Request for examination
You can request examination when you file your application. Otherwise, for most applications, you have up to 4 years from your filing date to make a request for examination. You will not receive a reminder that a request for examination of a patent application must be made by a certain date.
If you do not make a request within the 4 year period, you'll receive a notice and have 2 months to request examination and pay the late fee and examination fee. If you never make the request or don't pay the fees in time, the application will be deemed abandoned.
Step 5: Wait for Patent examination
After you file your patent application is available in the publicly accessible Canadian Patents Database, CIPO will conduct a preliminary examination to ensure it meets the requirements for patentability.
If your application is approved, it will be placed in a queue for a full examination. This can take up to 30 months from the date of your application.
Step 6: Respond to objections
During the examination, CIPO may raise objections to your application, such as objecting that your invention is not novel or inventive. You'll have an opportunity to respond to these objections and make any necessary changes to your application.
These objections may include prior art(s) cited by the examiner and/or reasons why the examiner has objected/ rejected the claims. In response to the office action, an office action response needs to be submitted by the applicant to the CIPO during the prosecution of the patent application.
The applicant or his legal representative who responds to an office action should be aware of techno-legal language as he would be amending a part of the objected claim elements or arguing on the objections raised by the patent examiner. The response needs to submitted within a specified timeframe.
Step 7: Obtain a patent
Once all obstacles have been cleared, CIPO will issue a Notice of Allowance, which means that your patent is approved. You'll need to pay a final fee and complete a few formalities before your patent is granted.
After that, you'll have exclusive rights to your invention in Canada for 20 years from the date of your application.
Step 8: Maintain your patent
After your patent is granted, you'll need to maintain it by paying maintenance fees every year. If you fail to pay these fees, your patent will expire.
In conclusion, obtaining a patent in Canada is a complex process that involves many steps and can take years to complete. However, it's a necessary step to ensure that your intellectual property is protected and no one uses your creation without your consent. This could be a huge differentiator between you and your competitors.
In case, you are not familiar or confident with the patent application process or need assistance with your application, consider hiring a registered patent agent or patent expert to help you navigate the process.
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