CPATA Patent Knowledge common mistakes

Candidates carry over US-style thinking from study materials or prior practice. Section 28.2(1) of the Patent Act gives a limited grace period only for disclosure by the applicant or by a person who obtained the subject matter from the applicant, and the exceptions in 28.2(2) and (3) (e.g., disclosure at a recognized exhibition or by a person who did not know and could not reasonably have known) are narrow. The interaction with the claim date and with disclosures in other jurisdictions is easy to misapply.

Candidates conflate US eligibility doctrine (Alice/Mayo) with Canadian law, or forget that Canadian practice permits use claims and 'Swiss-type'-style formats but not methods of surgery or therapy on a living subject. The Amazon.com one-click decision and the push to claim computer-implemented inventions also create confusion about what is 'statutory' under section 2.

The Patent Rules set out a sequence of notices (the requisition for examination, the notice of non-compliance, the final action) and specific response periods, and candidates often memorize the US or PCT timelines instead. Maintenance fees are due annually on the filing anniversary, and late payment triggers a surcharge and, if unpaid, deemed abandonment with a reinstatement window that has its own fee and timing rules.

Candidates treat PCT national phase as automatic and uniform across countries. Canada has its own entry requirements, including the 30-month period from the priority date (extendable in limited circumstances), a copy of the international application and any amendments, and payment of the national fee. Errors in the priority claim or in the applicant's identity can be fatal or require correction under the Rules.

Candidates memorize a list of factors without understanding which are dispositive. Canadian courts apply the Windsurfing/Pozzoli framework as adopted in Sanofi, and the 'obvious to try' analysis has specific factors (whether the route was obvious, the extent of effort, the predictability of the art). Candidates also forget that the standard is the notional skilled person at the claim date with the common general knowledge, not the inventor's actual path.

Canadian law requires the specification to describe the invention and its operation or use in such full, clear, concise, and exact terms as to enable a person skilled in the art to make and use it. Utility is a requirement, and for compounds whose utility is not demonstrated, the sound-prediction doctrine requires a factual basis and a sound line of reasoning. Candidates trained on US practice underestimate how much Canadian examiners and courts demand in the specification.

Infringement under the Patent Act is territorial. Candidates mix up the location of the infringing act with the location of the patentee, and they overlook that exporting a product made by a patented process from Canada, or inducing or contributing to infringement in Canada, can still be actionable. The 'extraterritorial' issue also arises with divided infringement and with products assembled abroad from Canadian-made components.

Candidates assume that a signed assignment automatically binds the world, or that an employer owns an employee's invention by default. In Canada, the default rule is that an employee owns inventions made in the course of employment unless the employment contract or the nature of the duties implies otherwise, and recordal of assignments and licences with CIPO affects the ability to deal with the patent and to sue. The distinction between assignment and licence, and between exclusive and non-exclusive licences, also matters for standing.

Patent practice often involves inventors, assignees, licensees, and joint owners with divergent interests, and candidates underestimate how the professional conduct rules apply. The duty of loyalty and the duty of confidentiality survive the end of the retainer, and a joint retainer requires full disclosure and consent. Candidates also forget the duty of candour to the Office and the limits on communications with an unrepresented adverse party.

The 2019 changes introduced new examination deadlines, new fees, and changes to the treatment of divisional applications, among other things, and the transitional rules determine which version applies. Candidates study the current rules only and then misapply them to older applications, or they miss that certain provisions apply based on the filing date or the date of a request for examination.