CPATA Patent Knowledge key terms

A requirement that the claimed invention was not disclosed to the public, by the applicant or anyone else, before the applicable critical date, so the invention must be new relative to the prior art.

The requirement that the claimed invention not be obvious to a person skilled in the art in light of the prior art, assessed at the claim date using the problem-solution approach.

The requirement that the subject matter of a claim be operable and capable of producing a useful result; in Canada it is assessed on the basis of sound prediction where the result is not demonstrated.

A doctrine allowing utility to be established without demonstrated data where there is a factual basis, an articulable line of reasoning, and proper disclosure of both in the specification.

The categories of invention eligible for patent protection, namely art, process, machine, manufacture or composition of matter, excluding mere scientific principles, abstract theorems, methods of medical treatment and higher life forms.

All information disclosed or made available to the public before the critical date that can be cited against novelty or inventive step, including patents, publications, products and public uses.

The date against which novelty and obviousness are measured, generally the claim date, subject to exceptions such as the one-year grace period for disclosures by the applicant.

A twelve-month window before the filing date during which disclosures made by the applicant, or by someone who obtained the information from the applicant, do not count as prior art.

The date on which a claim is assessed for novelty and obviousness, being the filing date of the application or the priority date validly claimed for that subject matter.

The hypothetical skilled but unimaginative worker with ordinary competence in the relevant field, used as the reference point for obviousness, sufficiency and claim construction.

The process of determining the scope and meaning of claim terms by reading them purposively in light of the whole specification and the common knowledge of the skilled person.

The Canadian approach to interpreting claims by identifying the problem and solution and deciding which elements are essential, rather than applying a literal or purely textual reading.

A claim feature that is indispensable to the working of the invention as defined by the inventor, and which therefore cannot be varied or omitted without altering the claimed invention.

The requirement that the specification describe the invention and its operation or use in terms sufficiently full, clear and exact to enable a person skilled in the art to make and use it.

The requirement, under the Patent Act, that the specification disclose the best mode contemplated by the inventor of carrying out the invention at the time of filing.

The numbered statements at the end of the specification that define the monopoly sought, each of which must be clear, supported and limited to a single invention where required.

The requirement that an application relate to a single inventive concept, or to a group of inventions linked by a single general inventive concept, failing which a divisional may be required.

A separate application carved out of a parent application for subject matter disclosed but not claimed in the parent, retaining the parent's filing or priority date.

A request to obtain the benefit of an earlier filing date in a convention country or under the Patent Cooperation Treaty for subject matter disclosed in that earlier application.

An international treaty administered by WIPO that lets applicants file a single international application, obtain an international search and optionally a preliminary examination, then enter national or regional phases.

A report issued by an International Searching Authority listing the documents considered relevant to novelty and inventive step, accompanied by a written opinion on patentability.

The step of bringing a PCT international application before a national or regional office, such as CIPO, within the applicable time limit, to continue prosecution there.

An international treaty providing, among other things, the right of priority for patent applications filed first in one member country and later in another.

A rule under which any public disclosure anywhere in the world before the critical date defeats novelty, subject only to statutory exceptions such as the grace period.

A written communication from a patent examiner identifying objections to an application, such as lack of novelty or clarity, and setting a deadline for a response.

The applicant's written reply to an examiner's report, which must address each objection, may amend the claims and specification, and must be filed within the set period.

A change to the claims, description or drawings during prosecution, which must not add matter not reasonably discoverable from the original disclosure and must comply with the Rules.

The examiner's decision that the application complies with the Act and Rules, after which the applicant must pay the final fee to obtain the patent.

A periodic payment required to keep a pending application or granted patent in force, failing which the application or patent lapses subject to possible reinstatement.

The procedure for restoring a lapsed application or patent, typically on payment of a fee and a showing that the failure to pay was unintentional, within the prescribed period.

Unauthorized making, constructing, using or selling a patented invention, or importing it for those purposes, within Canada during the term of the patent.

Infringement established where every essential element of a valid claim is found in the accused product or process, as determined by purposive construction.

Liability arising where a party knowingly influences or encourages another to infringe a patent, for example by supplying a component intended for use in an infringing process.

The relief a court may grant for infringement or invalidity, including damages, an accounting of profits, injunctions, delivery up and declarations of invalidity.

A court order restraining a party from infringing a patent, which may be interlocutory pending trial or permanent following a finding of infringement.

A remedy requiring the infringer to disgorge profits attributable to the infringing activity, calculated on a causation basis rather than as compensation for the patentee's loss.

A compensatory remedy measured by the losses the patentee suffered because of the infringement, including lost sales and reasonable royalties where appropriate.

A defence or counterclaim asserting that a claim is void for want of novelty, inventive step, utility, sufficiency or patentable subject matter, or for improper amendment.

A transfer of ownership of a patent or application, which under the Act must be in writing signed by the assignor and may be recorded with the Commissioner.

A permission granted by a patentee allowing another party to use the patented invention, which may be exclusive or non-exclusive and is often recorded with the Commissioner.

An invention made by an employee in the course of employment, ownership of which depends on the contract and the employee's duties, with statutory provisions governing certain public servants.

The legal title to an application or patent, which initially belongs to the inventor or inventors unless transferred, and which determines who may prosecute or enforce the patent.

A situation where a practitioner's personal, financial or other interest may impair independent judgment on behalf of a client, requiring disclosure and informed consent or withdrawal.

The duties of competence, confidentiality, loyalty, candour and integrity owed by a patent agent to clients, the public and the profession, enforceable through the regulatory body.

The duty to keep a client's technical and business information secret and to avoid disclosing or misusing it without authority, surviving the end of the relationship.

Rules governing which version of the Act or Rules applies to an application or patent, often turning on filing or grant dates, particularly around the 2019 amendments.