Innovation To Commercialization: A Guide To Protecting Your Intellectual Property

WHAT IS INTELLECTUAL PROPERTY?

Intellectual property (IP) refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images and designs used in commerce.

Intellectual property is divided into two categories: Industrial property, which includes inventions (patents), trademarks, industrial designs and geographic indications of source; and copyright, which includes literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs. Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings and those of broadcasters in their radio and television programs.

Source: World Intellectual Property Organization

INTRODUCTION

At Borden Ladner Gervais LLP (BLG), we are excited by new ideas. We also understand that nurturing an idea and developing it into a viable business opportunity can be a daunting task. How do you translate your discovery into dollars?

A strong foundation for your company is absolutely crucial. In many cases, that foundation is your company's Intellectual Property (IP). Your IP must be effectively protected from the outset to adequately support a clear path to commercialization.

We have developed this reference guide to provide a basic introduction to patents and commercialization. Whether it serves as an introduction to the subjects or simply reinforces your current knowledge, we hope that it will assist innovators on the path from innovation to commercialization in bringing products and services to market for the benefit of Canada.

PATENTS

What is a patent and what does it do?

A patent is an IP right granted by a country to the patent holder for a specific period of time. It gives the patent holder the exclusive right to prevent others from making, using, offering for sale, selling or importing articles covered by the invention without the patent holder's permission. In exchange for this exclusive right granted by a country, the patent holder must disclose the invention to the public.

What a patent does not do is grant the right to make, use, offer for sale, sell or import the patented article. The patent holder must comply with laws that affect the manufacture, advertising, use and sale of the patented article (for example, the Food and Drugs Act and its regulations may apply to a biotechnology invention).

A patent only offers protection in the country in which it is obtained. Therefore, an Applicant should obtain a patent in every country where a substantial market exists for the patented article (including articles developed from a patented process).

What criteria must my invention meet to be patentable?

Invention

Each country has its own laws governing what is patentable. In Canada, an invention is defined as "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." In the United States, whoever "invents or discovers any new and useful process, machine, manufacture or composition of matter" or any improvement thereof is entitled to a patent. In Europe "any invention which [is] susceptible of industrial application" is patentable unless a specific exclusion is noted. Each country continues to clarify the limits of the law regarding what is, and is not, patentable.For example, the Canadian courts and the Canadian Patent Act have established the following criteria:

the subject matter must relate to a useful art as distinct from a fine art; the inventor must adequately describe the subject matter so it is operable, controllable and reproducible; the subject matter must have practical application in industry, trade or commerce; and the subject matter must be more than a mere scientific principle or abstract theorem. The terms "art," "process," "machine," "manufacture" and "composition of matter" are not defined in the Patent Act and are used as generally understood. Although this seems to include anything and everything, the Canadian courts and sections of the Patent Act exclude specific subject matter from being patentable. For example, a patent cannot be granted for software. Business methods may be patentable according to a ruling of the Federal Court in the Amazon1 decision. The court held that there are three important elements in the test for whether subject matter falls within the definition of an "art": i) it must have a practical application, ii) it must be a new and inventive method of applying skill or knowledge, iii) it must have a commercially useful result. Methods of medical treatment are also not patentable. Canadian courts do not allow patents for higher life forms, including plants and animals. The Supreme Court of Canada ruled accordingly in the Harvard Mouse decision.2 However, a subsequent decision allowed claims to a plant cell to be enforceable against an infringer possessing an entire plant.3 This decision gives inventors of new higher life forms some protection.

The law continues to evolve. In particular, caution needs to be taken when attempting to patent diagnostic methods, methods of medical treatment, higher life forms, business methods and computer programs. The laws on these subjects vary depending upon the country, and the specific limitations can be subtle. Often commercially valuable patents can be designed with use of the appropriate wording. Therefore it is very helpful to consult a patent agent on these matters.

Novelty/Disclosure

In many countries an invention must not have been disclosed anywhere in the world before the initial patent application is filed (not necessarily in Canada) or the invention will not be patentable. Disclosure means any form of public disclosure including journal articles, published patent applications, abstracts, conference proceedings, trade pamphlets, magazine articles, theses, PowerPoint presentations, oral disclosures and trade-show viewings.

In Canada, an exception exists where the novelty of the invention will not be destroyed if the inventor, or someone acquiring knowledge directly or indirectly from the inventor, makes the information public within one year before the patent application is filed. Inventors should pay particular attention to journals or conference materials that post material on the Internet before the print versions are published. The earliest public disclosure date will prevail. The USA, Mexico and Australia offer a similar grace period.

As noted, many countries do not allow grace periods, meaning that, if the invention is disclosed anywhere in the world before the initial application is filed (not necessarily in any one of those countries), it will not qualify for protection in all of those countries. For this reason, inventors are strongly advised not to disclose their invention before filing...