CPATA Patent Knowledge flashcards

32 cards. Read the term and the definition here. The deck at the top of this page is optional.

Claim date

The date against which novelty and obviousness are assessed under sections 28.2 and 28.3 of the Patent Act. It is normally the filing date, or the earliest valid priority date claimed.

Grace period

Section 28.2(b) of the Patent Act protects an inventor's own disclosure made within 12 months before the claim date. Disclosures by third parties derived from the inventor are also covered.

Maintenance fee

Annual fee payable to CIPO on each anniversary of the filing date to keep an application or patent in force. Non-payment within the grace period results in abandonment under the Patent Rules.

Request for examination

A formal request filed with CIPO, with the prescribed fee, to have a patent application examined. Under the current Rules it must be filed within four years of the filing date.

Anticipation

A novelty attack under section 28.2 requiring a single prior art reference to disclose all elements of the claim, including any non-essential variants, so the skilled person could perform the invention.

Obviousness

Section 28.3 bars claims whose subject matter would have been obvious to a person skilled in the art at the claim date. Canadian courts apply the Windsurfing/ Pozzoli four-step framework without hindsight.

Sound prediction

The doctrine from Apotex v Wellcome permitting utility to be established by prediction where the specification discloses a factual basis and an articulable line of reasoning supporting the claimed utility.

Double patenting

A doctrine preventing the same applicant from obtaining two patents for the same invention. The test asks whether the claims are co-extensive or patentably distinct (Whirlpool).

Purposive construction

The approach from Free World Trust requiring claims to be read in light of the specification and the skilled person's common general knowledge, not literally or in isolation.

Essential element

A claim element is essential if the skilled person would consider it necessary to the working of the invention. Non-essential elements may be substituted without infringement under the variant test.

Regulatory review exception

Section 55.2(1) permits making, using, and selling a patented invention solely for regulatory approval of a drug. Section 55.2(2) extends this to the early working of generic drugs.

Accounting of profits

An equitable remedy in patent infringement awarding the patentee the infringer's profits attributable to the infringement. It is an alternative to damages and cannot be combined with them.

Antecedent basis

A drafting rule requiring each claim element to be introduced with 'a' or 'an' before being referenced with 'the' or 'said'. Violations can render the claim ambiguous and invalid.

Overbreadth

A ground of invalidity where a claim is broader than the invention disclosed and enabled in the specification. The claim must be supported across its full scope by the description.

Means-plus-function

A claim format describing an element by its function rather than structure. It is construed to cover the corresponding structure in the specification and equivalents, not all means for performing the function.

Enablement

Section 27(3) requires the specification to describe the invention and its operation or use sufficiently for a person skilled in the art to make and use the claimed invention without undue experimentation.

Office Action

A written report from a CIPO examiner identifying defects such as lack of novelty, obviousness, or clarity. The applicant must respond within the set period, typically four months, extendable with fees.

Final Action

An examiner's report issued after two prior reports on the same grounds. The applicant may request a review by the Commissioner or appeal to the Federal Court.

New matter

Amendments that add disclosure beyond the application as filed are prohibited under section 38.2. Such amendments are not permitted after allowance and may invalidate the patent.

Small entity

A status allowing reduced CIPO fees for applicants with 50 or fewer employees and no obligation to transfer rights to a larger entity. Misrepresentation can invalidate the patent.

Paris Convention priority

A 12-month period from the first filing during which a subsequent application in a member state can claim the earlier filing date. The priority claim must be made within 16 months.

PCT national phase

The stage at which an international application enters national offices. In Canada the deadline is 30 months from the priority date, with translation required if not in English or French.

Foreign Filing Licence

Section 25.1 requires a Canadian applicant to obtain a licence from the Commissioner before filing abroad for an invention made in Canada. Failure renders the Canadian patent void.

Chapter II examination

An optional PCT procedure before the International Preliminary Examining Authority that produces a preliminary opinion on novelty, inventive step, and industrial applicability, useful for national phase strategy.

Shop right

An employer's non-exclusive, royalty-free licence to use an employee's invention made using the employer's resources. It does not transfer ownership of the invention to the employer.

Hired to invent

A duty implied where an employee is specifically engaged to solve a problem or invent. In such cases ownership of the resulting invention may vest in the employer absent an express assignment.

Assignment recordal

Recording an assignment with CIPO under section 49. Recordal is recommended but not required for validity; it provides notice to third parties and supports standing in litigation.

Joint ownership

Where two or more inventors own a patent, each holds an undivided interest. Each may exploit the invention but cannot grant a licence without the other's consent.

CPATA

The College of Patent Agents and Trademark Agents regulates patent and trademark agents in Canada. It sets competency, ethics, and professional development requirements for registered agents.

Conflict of interest

A situation where an agent's duty to one client conflicts with a duty to another or with the agent's own interest. Informed written consent of all parties is required before acting.

Trust account

A separate account holding client funds. It must be reconciled monthly, and misappropriation is grounds for disbarment. Client funds must not be commingled with the agent's own funds.

Industrial design term

Registration protects the visual features of shape, configuration, pattern, or ornament for 10 years from registration, or 15 years from filing, whichever expires first.