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Patentability

What are the criteria for patentability in your jurisdiction?

In Canada, the following patentability criteria apply:

  • The claimed invention must be patentable subject matter according to Section 2 of the Patent Act. The definition of an ‘invention’ pursuant to Section 2 is:

any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter.

  • The claimed invention must not be obvious. In this regard, Section 28.3 of the Patent Act states that:

The subject-matter defined by a claim in an application for a patent in Canada must be subject-matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains.

In assessing whether a claimed invention is obvious, information already available to the public and information disclosed to the public by the patent applicant more than one year before the filing date will be taken into consideration.

  • The claimed invention must have utility. In Canada, this requirement is a low standard. An invention must actually work (eg, no perpetual motion machines), but beyond this standard, “no particular level of utility is required; a ‘mere scintilla’ of utility will suffice”.
  • The claimed invention must be novel (ie, not anticipated). An invention is said to be anticipated (and therefore not patentable), if a single document disclosed the invention to the public more than one year before the filing date of the application. This disclosure must enable a person skilled in the art to work the invention without undue burden (Section 28.2 of the Patent Act).

What are the limits on patentability?

Patents cannot be issued for:

  • methods of medical treatment;
  • higher life forms;
  • hypothetical inventions;
  • mere scientific principles or abstract theorem (Section 27(8) of the Patent Act); and
  • nuclear technologies (Section 22 of the Patent Act states that any patent application pertaining to nuclear technology will be referred to the Nuclear Safety Commission before being considered by an examiner).

Section 21 of the Patent Act provides an exception that permits developing and less-developed countries to use patented products – including pharmaceutical products – to address public health problems (eg, HIV/AIDS, tuberculosis, malaria and other epidemics).

To what extent can inventions covering software be patented?

To be patentable, software must be properly regarded as falling under one of the categories of invention outlined in Section 2 of the Patent Act, namely:

any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter.”

The software must be more than an algorithm (Section 27(8) of the Patent Act prohibits: “mere scientific principles or abstract theorem”). If the software is a method and the method, on its own merits, does not pertain to patentable subject matter under Section 2 of the Patent Act, the method does not become patentable subject matter by virtue of being carried out on a computer.

Chapter 16 of the Manual of Patent Office Practice provides a full description of the Canadian IP Office’s position on the patentability of software.

The Patent Office takes the position that, generally speaking, a computer program is not, by itself, patentable subject matter. However, if running the program on a computer results in a novel and inventive technological solution to a technological problem, the program is viewed as modifying the technological nature of the computer as a whole and is patentable (Manual of Patent Office Practice, Chapter 16.03.02). 

To what extent can inventions covering business methods be patented?

It is possible to patent a business method in Canada. The Federal Court of Appeal has previously stated that “no Canadian jurisprudence determines conclusively that a business method cannot be patentable subject matter”, and that the Patent Office should be “open to the possibility that a novel business method may be an essential element of a valid patent claim”. 

To what extent can inventions relating to stem cells be patented?

This question has not been specifically addressed by any court decisions and it is not expressly addressed in the Patent Act. However, case law differentiates between lower life forms (which are patentable) and higher life forms (which are not). Chapter 17 of the Manual of Patent Office Practice provides the Canadian IP Office’s position that patentable subject matter includes embryonic, multipotent and pluripotent stem cells. However, the manual also states that totipotent cells are considered ‘higher life forms’ and are therefore not patentable under Canadian law. Chapter 17 specifically notes that:

animals at any stage of development are not statutory subject-matter eligible for patent, and consequently fertilized eggs and totipotent stem cells are included in the higher life form proscription.

Are there restrictions on any other kinds of invention?

Please see the limitations on patentability above.

Grace period

Does your jurisdiction have a grace period? If so, how does it work?

Under Section 28 of the Patent Act, an inventor may disclose the subject matter within the claims of the patent within one year of the Canadian filing date without affecting patentability. For Patent Cooperation Treaty (PCT) applications, the Canadian filing date is deemed to be the date of the PCT international filing date. 

Oppositions

What types of patent opposition procedure are available in your jurisdiction?

Canada has no pre or post-grant opposition procedure.    

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

Any person may request re-examination of any claim or claims of a patent issued after October 1 1989. The commissioner of patents will establish a re-examination board and determine whether the request for re-examination raises a substantial new question of patentability. If such a question is raised, re-examination of the patent proceeds based on this question. The person making the request does not participate in the re-examination process.

Under Section 34.1 of the Patent Act, any person may file prior art in respect of a pending Canadian patent application. The person filing the prior art must explain the pertinence of the prior art. The examiner is under no obligation to take the prior art into consideration. 

How can patent office decisions be appealed in your jurisdiction?

Final decisions to reject patent applications by the Canadian IP Office can be appealed to the Patent Appeal Board (PAB). The PAB will make a recommendation to the commissioner of patents after conducting an oral hearing, if requested by the applicant. Appeals of the commissioner’s decisions are heard by the Federal Court.

Timescale and costs

How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

On average, it takes approximately three years from the time that a request for examination is made for a patent to be granted. The request for examination can be made at the time of filing. 

Government fees range from approximately C$500 for a small entity with minimal prosecution to over C$2,000 for a large entity. In addition, annual maintenance fees of between C$50 and C$450 are payable to maintain an application.

Total costs – including government and professional fees –range from C$10,000 for a simple mechanical invention with little active prosecution, to C$50,000 or more for a more complicated invention with active prosecution. Patentability searches and opinions will increase costs.

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