A patent is a set of exclusive rights granted by a country
to a patentee for a given period of time. In exchange, the
patentee is expected to provide a full description of the
invention so that others may benefit from this advance in
technology and knowledge.
The exclusive right granted to a patentee is the right to
preclude or exclude others from making, using or selling
the claimed invention. Like any property right, a patent
may be sold, licensed, mortgaged, assigned, transferred
or abandoned. The rights conferred by a patent extend
only throughout the country in which it was granted.
Consequently, a patentee must apply for patent rights in
other countries separately to obtain this protection there.
While the patent laws in Canada and the U.S. are similar
in many respects, there are some fundamental differences
of which prospective applicants and others ought to be
aware.
Rights to the Grant of a Patent
“First-to-file” and “first-to-invent” are patent concepts that
ultimately determine who has the right to the grant of a
patent for an invention.
Canada operates on a “first-to-file” patent system. This
means that, where more than one inventor has independently
made the same invention, a patent will be granted to the
inventor who was the first to file the patent application.
Consequently, even if an inventor can prove that he or she
was the first to have conceived the invention, that inventor
would be precluded from obtaining a patent if another
inventor had filed an earlier application. It is a race to the
Patent Office.
In contrast, the United States uses a “first-to-invent”
system. When an invention is first conceived by an inventor
and is diligently reduced to practice (i.e. by either practising
the invention or by filing a patent application), the date
of invention will be the date of conception. Thus, the first
inventor to have conceived the invention will be the inventor
entitled to the patent, even if another inventor had filed an
earlier patent application.
Ownership of a Patent
In Canada, both a natural person and a corporate entity
may apply for a patent. In the case where a corporate
entity is the applicant, the corporate entity will become the
owner of the patent when the patent issues.
In the United States, only a natural person (i.e., the inventor)
may apply for a patent. When the patent issues, each person
listed as an inventor will own the patent. In order for a corporate
entity to own the patent, each inventor must assign their
ownership rights to the corporate entity.
Examination
In order for a patent application to issue in Canada or the
United States, it must first be examined by a Patent Examiner
who is technically qualified in the field of technology to
which the invention relates. Once examination has been
initiated, the Examiner will conduct a search of prior art,
patents and non-patent literature to determine whether
the invention is sufficiently different from prior inventions
and/or prior art disclosures to justify the grant of a new
patent.
In Canada, examination of a patent application commences
only after an explicit request for examination has been
filed. It is possible to maintain an application pending for
up to five years from the Canadian filing date.
In the United States, a patent application is eligible for
examination automatically after the patent application has
been filed.
Grace Period
The Patent Acts of Canada and the United States provide
a one-year grace period that may precede the filing of a patent
application in those countries. These grace periods can allow
an inventor the opportunity to ascertain the marketability
of an invention before having to invest all of the resources
required to prepare and file a patent application.
In Canada, a patent application must be filed no more
than one year from the date that the applicant (or a person
obtaining knowledge directly or indirectly from the applicant)
first makes the invention available to the public in Canada
or elsewhere.
In the United States, an application must be filed within
one year from the date that the invention was patented or
described in a printed publication anywhere in the world
or within one year from the date that the invention was in
public use or on sale within the United States.
Consequently, the grace period in Canada strictly applies
to disclosures derived from the applicant. In contrast, the
grace period in the United States can apply to all public
disclosures, whether derived by the applicant or not.
Disclosure Requirements
In the United States, a patentee is obligated to disclose
to the Patent Office all prior art known to be material to
patentability. A patentee who intentionally fails to do so
has committed “fraud on the Patent Office” or engaged in
“inequitable conduct”, and the court may declare the patent
invalid or unenforceable.
In Canada, there is no obligation on the patentee to voluntarily
disclose all known material prior art to the Patent Office.
Consequently, a Canadian Patent cannot be invalidated on
this basis.
Maintenance Fees
Maintenance fees are fees paid in order to maintain the
active status of a patent document.
In Canada, maintenance fees for either a patent application
or an issued patent are due on each anniversary of the filing
date, beginning on the second anniversary. The amount
each year escalates during the life of the patent or patent
application.
Patent maintenance fees in the United States are due three
and a half years, seven and a half years and eleven and a
half years after the grant of the patent. No maintenance
fees are due while an application is still pending.
Prosecution History Estoppel
During the prosecution of a patent, an applicant may
withdraw or narrow certain claims in order to have the
patent approved by the Patent Examiner.
In the United States, the doctrine of prosecution history
(or “file-wrapper”) estoppel, permits the court to use the
Patent Office prosecution history to limit the interpretation
of a claim. Any amendment by the applicant to narrow a
claim in order to comply with the Patent Act, raises the
presumption that the territory between the original claim
and the amended claim has been surrendered. As a result,
the applicant may not have a cause of action for infringement
to a pre-amendment patent claim.
In contrast, the prosecution history of a patent application
cannot be used in construing the claims of a Canadian
patent. Consequently, in Canada, evidence from the Patent
Office prosecution history must be excluded for the purposes
of interpreting the claims.
Notice Requirement
In the United States, damages for patent infringement
may not be available if proper notice has not been provided.
Notice may be either “actual notice” by the patentee of the
existence of the patent, or “constructive notice”. Constructive
notice can include marking or labelling the patented article
or apparatus with the word “patent” or the abbreviation
“pat.” together with the patent number. Failure to give
notice may result in a loss of the right to compensation
for any infringing activities undertaken by a person before
that person was notified.
Canadian patent law has no notification or marking
requirements. Consequently, in Canada, damages are available
from the first date of infringement.
Jury Trials
In the United States, factual issues related to infringement
and validity can be decided by juries. However, a jury trial
for a patent matter is not an option in Canada. In Canada,
all patent cases are tried by judges alone.
Conclusion
As more Canadian entities enter the U.S. marketplace, an
increasing number are seeking patent protection both at
home and in the United States. Consequently, while the
patent laws in Canada and the United States are similar
in many respects, there are some fundamental differences
that should be taken into consideration before filing a patent
application in the United States.
Bennett Jones