The Basics

So what is a patent? Technically, “patent” means something that is easily recognizable or obvious, as compared to something that is “latent”, or hidden or concealed (like a left-behind fingerprint on those forensic TV shows we all watch). It is used as an adjective that modifies the word “letters”. A “letters patent” is a legal term that effectively means a document from the government. In olde England, the King would issue letters patents as grants of his power or prerogative. For Canadians, the most well-known example of a letters patent is The Governor and Company of Adventurers of England trading into Hudson’s Bay, which created a company by letters patent that still exists. It was known as the Hudson’s Bay Company and is now a retail chain in Canada under the name The Bay.

So how does this relate to inventions? What we now refer to as a patent is in fact, a “letters patent for an invention”. It is a grant by the government of a limited monopoly to exploit an invention.

The grant of the patent is based on an exchange between the inventor, who has a secret invention that he or she is willing to disclose to the government (and thus to the public) in exchange for a monopoly period in which he or she can get a head start on the competition to exploit the invention.

Patent Documents & Ownership

For this reason, the patent document consists of two parts, the disclosure or description, which is where the inventor describes the invention that he or she is now sharing with the world, and the claims, which is where the inventor (in negotiation with the government) defines the scope of the monopoly that he or she will be entitled to for the duration of the term of the patent.

Originally, the term of the monopoly granted by a patent was 14 years, which was thought to represent a human generation. Gradually, the term has grown, first to 17 years from the date of grant of the patent, to the present 20 year term, which is effective from the date that the patent application was first filed.

The monopoly permits the patent owner to have the exclusive right to make, use or sell (and generally to import) the invention covered by the claims. This means that the patent owner can prevent anyone else from infringing (making, using, selling and/or importing without the owner’s permission) the claimed invention. However, in most jurisdictions, the government will not monitor for infringement or assist in the enforcement of the monopoly through their police force, leaving the owner of the patent to identify incidents of infringement and enforce its monopoly through a law suit, at the patent owner’s own cost. The remedies that the patent owner can receive include damages (money to compensate for the loss of revenue due to the infringement and in some cases, to punish the infringer for its actions) and an injunction (a court order preventing the infringer from continuing its infringing activity and/or to deliver up the infringing materials).

Initially, the patent owner is the inventor. However, the rights granted by the government may be sold or licensed (rented) to someone else. As a result, in the last 15 years or so, patents have become a vital financial resource. Some patent infringement cases have resulted in multi-billion dollar awards, especially in the high technology and pharmaceutical fields. Many complicated ways have been developed (and patented) to exploit patents, including security interests, insurance and derivatives.

Because the patent is a grant of a monopoly by a government, each national government issues its own patents. Legally, a patent issued by one government has no effect outside that government’s jurisdiction. In some cases, certain jurisdictions have a practical effect that extends beyond its borders. In particular, a US patent may serve as effective protection in Canada on the basis that an infringer is unlikely to seek to do business in Canada if it cannot do business in the US, with its much larger market.

Once you have applied for a patent in one jurisdiction, your patent agent can assist you with the minor steps involved in converting it into a patent application in other jurisdictions. There are over 200 patent-granting jurisdictions around the world and a number of ways to get patents. The important thing to remember is that there are very restrictive time limits to apply for patents and these generally cannot be extended.

What can you get a patent on?

In a nutshell, you can get a patent on anything that is an invention that has not previously been disclosed. The “not previously disclosed” requirement is known as the novelty requirement, which means that the inventive feature has not been publicly disclosed of the invention before the relevant prior art date of the patent application by anyone. A document that is or may be thought to publicly disclose an invention is known as “prior art”. It may be a patent or a publication, and in some cases, may be the use or sale of a product. The relevant prior art date differs depending upon the circumstances. As a general rule, it is the date that the application for a patent is first filed in a jurisdiction.

What constitutes an invention?

There are generally three additional characteristics besides the novelty requirement that must be met. First, it must be inventive, though you would be surprised at how simple some inventions are. But the invention must have some spark of ingenuity. The courts have referred to it as a “mere scintilla” of inventiveness. Usually, it is demonstrated by showing it has some previously unknown result or solution. Thus, one common way of trying to disprove inventiveness is to try to find prior art that can be combined in an obvious manner to achieve the result that the invention provides.

Second, the invention must constitute patentable subject matter. This means that the invention must meet certain minimal criteria. In most jurisdictions, the invention must be an art, process, machine, manufacture or an improvement on an art, process, machine or manufacture. Additionally, certain types of inventions are prohibited, in some cases on a jurisdiction by jurisdiction basis. Generally, things that are of an aesthetic nature are not patentable. In addition, in Canada, for example, you cannot get a patent for a method of medical treatment, or for software or for methods of doing business. In some jurisdictions, there are moral prohibitions, such as inventions with immoral objectives, or to patent lifeforms etc. Having said this, there are techniques that patent agents know of to change the form of the patent to circumvent some of these prohibitions.

Third, the invention must have commercial utility. This generally means that the invention actually works and provides a commercial benefit, such as making something work better, faster, or making it more inexpensive or smaller (or bigger!).