Chapter 1: Introduction to Canadian Patent Law

Table of Contents

Patents protect inventions: either the functionality of a machine, a composition of matter or a process. In Canada, patent law is governed by the Patent Act, R.S.C. 1985, C. 33 (3rd. Supp.).

The Federal Government of Canada grants patents to inventors or assignees of inventors. Every patent grants to the patentee and its assignees for the term of the patent, beginning at the grant of the patent, the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used. ⁽¹⁾

The right to exclude others is exercised by suing infringers or granting licenses. It is up to the patent owner to enforce the patent. It has been said that a patent is not a monopoly but rather is a "licence to litigate".

A patent is sometimes described as contract between the inventor and the government. In consideration for the inventor disclosing the invention in the patent and making it available to the public after the expiration of the patent, the government grants to the inventor the right to exclude others from making, using or selling the invention during the term of the patent.

2. Anatomy of a Patent

Every patent has a similar structure. The entire patent is called the "specification". The two main parts of the patent are the "description" (sometimes called the "disclosure") and the "claims".

The description and the claims serve two very different purposes:

(a) the description tells the public how the make or use the invention when the patent expires; and

(b) the claims describe what is not to be made or used during the term of the patent.

2.1 The Title Page

The title page of a patent provides "tombstone information" concerning the patent: the title, the inventors, the person to whom the patent was granted, the application date, the priority date, the grant date and, for patents filed after October 1, 1989, the date that the patent application was "laid open" to the public.

2.2 The Abstract

The Abstract is the "headnote" of the patent, providing a summary of the invention and its use. It includes a summary of the disclosure and indicates the technical field to which the invention relates. It should describe the technical problem and the solution of the problem by the invention. Its purpose is to provide a succinct description of an invention so that a reader can decide whether the rest of the patent is of interest.

Abstracts are now available through on-line computer databases and are commonly used for searching the technical literature to see what areas are already patented.

The Canadian Manual of Patent Office Practice, which describes the procedures followed by the Canadian Patent Office, describes the purpose of the Abstract as follows:

6.01

CONTENT OF ABSTRACTS

Applicants for patents are required to submit an abstract of the disclosure with each application to provide a synopsis of the invention disclosed. The abstract shall be a summary of the disclosure, and shall indicate the technical field to which the invention pertains. It shall be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention and the principal use(s) of the invention. Where applicable the chemical formula that best characterizes the invention shall also be included. The text of the abstract should avoid patent jargon so that it may be readily understood by technicians, scientists, industrialists and other persons who are interested in obtaining information about issued patents. It should provide a means for quickly determining the nature of the disclosure so that the reader can decide whether a copy of the full specification would be useful to him. It should be a clear and concise condensation of the technical content of the disclosure.

2.3 The Claims

The claims define the monopoly in words.

A patent may have many claims, each defining the invention in different words and describing it broad or narrow functional language.

A typical claim has the following form: Preamble ... transitional phrase ... claim elements.

In Canada, claims are most commonly of the form having a brief preamble describing the apparatus or method in terms of its field of use, the transition "comprising", and followed by the claim elements (apparatus elements or process steps) which are like a checklist of the components of the claimed invention.

Claims are sometimes analogized as a series of "fences" surrounding and protecting the valuable invention. The claims define the metes and bounds surrounding the protected invention, much like surveying terminology defines the metes and bounds to a piece of land containing gold. The fences must be clearly defined in order to give the necessary warning. Property which is not owned by the inventor must not be fenced in, otherwise the claim will be invalid as being broader than the invention.⁽²⁾

Claims are usually drafted with multiple, dependant claims. As such, they are like a set of nested fences, each fence surrounding a more particularized form of the invention. If one of the outer most fences fails ⁽³⁾, the inner ones remain to protect the invention. The larger fences are the broad claims; the narrowest fences are the narrow claims.

Another way of considering a claim is to describe them by use of a Venn diagram, a mathematical illustration used to identify "sets". The Venn diagram of some claims would be analogous to an aerial photograph of the "fences" surrounding the invention. The claims would be a series of sets and subsets, all including the invention at the centre of the sets. Anything that met the description of that set, would fall inside that claim and infringe it.

The invention can be described in a number of ways and therefore, there can be different sets of claims each with dependant claims, all protecting the invention at the core.

	The broadest fence (#1 in the diagram at left) includes the most and would correspond to the broadest claim; the narrowest fence (#4) would include the least and would correspond to the narrowest claim.
	The invention can be described a number of ways. There can be different sets of claims, represented by the elliptical fences 5 to 9 at left, all of which protect the invention at the core.
	A patent could have any number of these sets of independent claims; all of which would protect the invention.
	A patent’s claims can also be illustrated as a tree-structure, with branches indicating dependency. The tree structure to the left illustrates the claims of the patent shown in the Venn diagrams above. Claim 2 is dependent on claim 1, claim 3 is dependent on claim 2, etc.

the form of the claim

In Canada, an invention can be claimed in one patent in more than one statutory class: ie. as an apparatus or a process or both. For example, an invention may be defined by a process claim, or as an apparatus which carries out the process.

A combination-type claim is one where the invention is described as a combination of elements or steps which achieve a desired result or interaction.

In some instances, the invention is best described by either an improvement claim (a claim where only the improvement to an existing apparatus or process is claimed), or European-style claim (one where the preamble describes the known prior art).

A claim for an apparatus should not contain a process step as an element; similarly a claim for a method should not contain an article as an element. Such claims are referred to as ones with "mixed elements". An example of the first type is:

A digital signal processor comprising:

a) a first register for storing signal data,

b) transferring said signal data to a second register...

You can incorporate a process limitation in a claim for an apparatus. For example:

A computer comprising:

"means for storing signal data..." or

"a first register for storing data..."

The clause beginning with the word "for" describes the function or process carried out by the apparatus.

A claim can recite a process step that contains a hardware or machine limitation. For example:

A method for processing seismic data, comprising the steps of:

collecting the time-varying seismic detector output signals from a plurality of seismic sensors positioned in a cable ... [emphasis added]

In the latter example, the signals are collected from a recited structure. The structure is the hardware or machine limitation within the process step.

the preamble to the claim

Combination-type claims traditionally begin with a preamble that is designed to identify the class of invention and recite any prior art elements with which the invention co-operates

The invention should be described in terms of statutory subject matter.

the body of the claim

In a combination-type claim, the invention is described as a combination of parts which interact to achieve a certain result or function. In formulating a combination-type claim, functional limitations may be expressed in "means-plus-function" format. Under U.S. practice, the court will interpret the recited "means" as including the preferred means disclosed in the specification as well as functional equivalents, subject to any express limitation in the disclosure.

dependant claims

After drafting independent claims in one or more statutory classes, the patent agent usually then drafts a number of dependent claims for defining subordinate features to those recited in the independent claims or to further define features and/or structure of the essential claim elements.

types of claims

A patent can be for an article, a method or a composition. An example of a method claim is:

1. The method of conditioning fabrics which comprises commingling pieces of damp fabric by tumbling said pieces under heat in a laundry dryer together with a substrate carrying a transferable conditioning agent, thereby to effect transfer of the conditioning agent to the fabric while being dried.

An example of an article or product claim is:

19. A fabric conditioning article comprising a flexible substrate carrying a normally solid fabric conditioning agent, said fabric conditioning agent comprising a material which has a softening temperature below the temperature of from about 120^o F. to about 190^o F. encountered in a laundry dryer to enhance thereby transfer of said fabric conditioning agent to fabrics contacted therewith, the weight ratio of fabric conditioning agent to flexible substrate being at least 0.25:1.

Jepson claim

In the United States, the Jepson claim is popular.

A Jepson claim recites the prior art in the preamble, uses the transitional phrase "the improvement comprising" and then recites the new elements or improvements to the prior device or method.

Rule 6.3 of the Patent Cooperation Treaty Rules requires that wherever possible, claims should be written in this form. It is not necessary to write them in this form in a P.C.T. application if you have filed your application in a country in which the form is not mandatory.

Click here for an example of a Jepson claim.

Markush claim

Markush claims are often used in chemical composition patents where a selection can be made from a "class" of claim elements.

An example of a Markush claim is:

1. A liquid dishwasher detergent emulsion having high alkalinity, high levels of sequestrant and high temperature stability, said detergent emulsion comprising:

i) 4 to 25% w/w of an alkali metal hydroxide suitable for use in a dishwasher;

ii) 0.2 to 5% w/w of a low foaming free non-ionic surfactant;

iii) 0.5 to 3% w/w of a polyacrylic acid suitable for enhancing sheeting action on non-porous surfaces;

iv) 15 to 30% w/w of a potassium polyphosphate sequestering composition enriched in tripolyphosphate and comprising minimal amounts of ortho and long forms of polyphosphates to facilitate thereby solubility of said potassium polyphosphate in water;

v) 2 to 6% w/w of a polymeric emulsion stabilizer for said free nonionic surfactant, the polymeric emulsion stabilizer being a chemically associated polycarboxylic acid polymer and a nonionic surfactant formed by polymerization of said nonionic surfactant with a polymerizable reactant selected from the group consisting of acrylic acid, polyacrylic acid, copolymers of acrylic acid and an ethylenically unsaturated polycarboxylic acid or an anhydride thereof, copolymers of ethylenically unsaturated polycarboxylic acid or anhydride thereof with a non-carboxy containing ethylenically unsaturated monomer, said nonionic surfactant and said reactant being polymerized in an aqueous media;

vi) 0 to 15% w/w of a sequestering agent to enhance hard water sequestering characteristics of said potassium polyphosphate; and

vii) water to make up the balance of composition to 100% w/w.

2. A liquid dishwasher detergent emulsion of claim 1 wherein said alkali metal hydroxide is selected from the group consisting of sodium hydroxide, potassium hydroxide and mixtures thereof.

2.4. The Description (Disclosure)

The nature of the invention must be defined in the disclosure and the manner in which the invention is to be carried out, must be described. In the case of a machine (for example, a computer), the best mode of operation must be described. In the case of a process (for example, the implementation of an algorithm by computer process), the necessary sequence of steps must be explained for distinguishing the invention from the prior art. ⁽⁴⁾

The description is like a manual that accompanies a kit such as a home barbecue. In the case of a patent for an apparatus, it includes a parts list identifying the parts needed to make the apparatus and assembly instructions explaining how to put the parts together. This description is used as a cross-reference to a series of drawings bearing numbers corresponding to the parts illustrating how the device is put together. Operating instructions explain how to use the device in the best manner known.

The description must describe the invention and its uses contemplated by the inventor.⁽⁵⁾The description must be clear, accurate, simple and easy to understand by the person or persons to whom the patent is directed, namely the skilled workers in the relevant field (See Claim Construction).

the body of the description

The disclosure is usually divided into the following sections;

(a) the Area of the Invention,

- a general description of the field of the invention;

(b) a description of the prior art and their problems,

- what solutions existed in the past to similar problems and what problems were not overcome by the prior art;

(c) the Object of the Invention,

- this describes the desired results of the invention. A statement of the object of the invention is not mandatory and is sometimes dangerous to include because all claims must meet the object or they will fail for being too broad; ⁽⁶⁾

(d) the Consistory Clause,

- a generalized description of the invention. Usually the language from the broadest claim is restated to make the description consistent with the broadest claim;

(e) the description of the preferred embodiment of the invention,

- an example of an implementation of the invention. Usually the best version of the invention known at the time that the patent application was filed. It is described with reference to the drawings;

(f) a description of further embodiments; and

(g) a generalised statement that the embodiments are illustrative and not limiting,

- an attempt by the inventor to let everyone know that the monopoly is not limited to the embodiment shown in the patent.

the drawings

The disclosure must also refer to any drawings forming part of the application. Many patent agents begin sketching informal or conceptual precursors to the formal drawings while drafting the claims and then finalize the drawings while drafting the description.

If certain information that is not otherwise publicly available is needed in order to make or use the invention, then it must be included in the description or else the patent will be declared invalid for failing to describe the best mode of operation of the invention or its necessary sequence of steps. ⁽⁷⁾

3. Example of a Skeleton of a Patent

The following is a skeleton for a typical patent application. What is written in italics would be replaced by that feature relevant to the invention.

TITLE

Abstract

A name of apparatus includes inventive features.

Field of the Invention

This invention relates in general to type of apparatus and more particularly to title of invention.

Background of the Invention

RECITE NATURE OF THE PROBLEM ADDRESSED BY THE INVENTION

Prior art name of apparatus have been devised to address to the problems cited above. For example, cite publicly available applications, patents, devices, papers.

Thus a type of apparatus which set out improved characteristics is desirable.

Summary of the Invention

One aspect of the present invention is to provide an improved type of apparatus.

In accordance with one aspect of the present invention, there is provided consistory clause.

Conveniently,

Preferably,

Advantages of the present invention are: list elements from the broadest claim. An advantage of an embodiment of the present invention is list from dependent claim.

Brief Description of the Drawings

A detailed description of the preferred embodiment(s) is(are) provided herein below with reference to the following drawings, in which like numbers refer to like elements. The drawings are:

Figure 1, in a describe view, illustrates a type of apparatus in accordance with an/the preferred embodiment of the present invention;

Figure 2, in a describe view, illustrates the type of apparatus of Figure 1.

Detailed Description of the Preferred Embodiment

Referring to Fig. 1, there is illustrated in a describe view, a type of apparatus in accordance with an/the preferred embodiment of the present invention. The type of apparatus includes describe parts in hierarchical fashion.

In Fig. 2, the type of apparatus of Fig. 1 is illustrated in a describe view. Fig. 2 shows describe parts in hierarchical fashion.

In operation, the type of apparatus can explain improved operation of device. How this is achieved is explained below with reference to Fig. list figures.

In summary, a *** is provided with *** for ***.

Other variations and modifications of the invention are possible. For example, set out alternative not described above.

While one (or more) embodiment(s) of this invention has (have) been illustrated in the accompanying drawings and described above, it will be evident to those skilled in the art that changes and modifications may be made therein without departing from the essence of this invention. All such modifications or variations are believed to be within the sphere and scope of the invention as defined by the claims appended hereto.

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THE EMBODIMENTS OF THE INVENTION IN WHICH AN EXCLUSIVE PROPERTY OR PRIVILEGE IS CLAIMED ARE DEFINED AS FOLLOWS:

Claims go here.

4. History of the Patent System

For a history of the patent system, see: