A patent is the grant to a patentee and the patentee's legal representatives for the term of twenty years from the filing date, the exclusive right, privilege and liberty of making, constructing or using the invention and selling it to others to be used.

To acknowledge and reward those individuals or companies that have invested effort and resources to create new innovations while ensuring that the innovation becomes available to the public and is ultimately exploited for the public good.

Any novel and useful art, process, machine, manufacture or composition of matter or any novel and useful improvement to same, may be patentable subject material.

Ideas, scientific principles or abstract theorems are NOT patentable.

Further, subject matter must not be obvious to someone skilled in the art or science to which it pertains. In other words, the invention must have inventive merit and not be something that anyone skilled in the art would have been led to develop given all of the knowledge available to them at that time.

Subject matter defined by a claim in an application submitted for a patent, in Canada and in the United States, must not have been disclosed to the public directly or indirectly for more than 12 months prior to the filing date of the application. In most European countries any public disclosure prior to filing an application would bar the inventor from filing for patent protection in that country.

A Non-disclosure Agreement or Confidentiality Agreement may be used if an invention must be disclosed, in a limited fashion, to manufacturers, investors and the like.

Inventorship defines the individual or individuals who developed the invention. The name of the inventor is printed on all Patents, regardless of the ownership.

Ownership defines who owns the patent. A patent or patent application can be assigned to another individual or company. The owners name also appears on the patent, provided assignment occurs prior to printing of the patent document. Registration of the assignment with the Patent Office ensures that all inquiries regarding the Patent reveal the correct ownership.

In Canada, there is a starting presumption that an Employee is the owner of an invention, even on those invented while they are an employee of a company. This rule has been established since as early as about 1904.

The comon law rule in Canada is that the mere existence of an employment relationship does not disqualify employees from patenting inventions made during the course of their employment. This rule holds true even where the invention relates to an aspect of the employer's business, the employee used the employer's time and materials to bring his or her invention to completion, and the employee has allowed the employer to use the invention while he or she was employed.

This presumption can be overruled: first, that the employee signed an express contract to the contrary; or secondly that the employee was actually hired for the express purpose of inventing or innovating. Note that the line between employee and independent contractor is not as clear as in the case of copyright ownership. Basically, the same patent ownership principles apply to employees and independent contractors alike. In the case of an independent contractor, the second principle may be more a function of whether it can be implied that the invention should be transferred. A factor includes whether it would have made proper business sense for the employer to hire the contractor unless any inventions went to the employer.

In the first instance, unless there is some evidence of duress, an employee's signed agreement to sign over any inventions is usually enough to sell or "assign" the patent rights to the employer.

In the second situation, the fact that an employee was hired and paid (their salary or wages) to invent then infers that the invention should belong to the employer. Uncertainty and argument can arise however when one examines the employee's job description (if there is one) and the employee's actual duties. Basically, as stated by the court, "While the mere fact of employment does not obligate an employee to transfer an invention to the employer, where it is the product of the very work that the employee is paid to do, then the employer is the rightful owner of the invention."

As an oversimplification, if the warehouse janitor invents a new inventory system, it would be hard to find it belongs to the company. Conversely, if a skilled employee was hired to design a solution for premature gear failures and did, then that invention likely belongs to the employer.

Three real-life Canadian legal cases on this issue may help.

1. Company Wins: An employee was hired to design PC computer cases. He did. He quit. He filed a patent for a PC computer case. The company was successful in asserting ownership of the design.
2. Employee Wins: The employee worked for many years to design automobile door-locking rods. The employee moved and resigned his position. He signed a consulting agreement. Later, on his own initiative, but eventually paid for by the company, he invented a 3-D hinge. The company asked him to sign it all over. He didn't. He wanted more money, they wouldn't pay. They suspended him. Before the invention, and under threat of discontinuing the consulting arrangement, the employee was required to sign an invention transfer agreement. This was later found to be signed under duress and not-enforceable. So without an express agreement to assign, did the conduct suggest and implied obligation to assign ? Not in this case. Employee remains the winner.
3. Employee wins: In this case employee manager H made an invention outside the scope of his duties and mostly outside business hours. The company was mostly marketing, not manufacturing. H eventually left the company. The company was aware of the invention and after initial reluctance to its concept decided to file a patent application, but without H, they inserted employee D as inventor. Former employee H wins ruling to have patent inventorship and ownership to be amended or else have the patent declared invalid. This case points out the two exceptions to the employees claim and regarding hiring to invent, the case sets forth a checklist of factors which would influence the decision of whether to give the invention to the employee or the company.
4. an express contract to the contrary, OR (2) Where a person was employed for the purpose of inventing or innovating which requires considering nature and context of the employer/employee relationship which include:
   1. whether the employee was hired for the express purpose of inventing;
   2. whether the employee at the time of hiring had previously made inventions;
   3. whether the employer had incentive plans encouraging product development;
   4. whether the conduct of the employee once the invention had been created suggested ownership was held by the employer;
   5. whether the invention was the product of the problem the employee was instructed to solve, i.e., whether it was duty to make inventions;
   6. whether the employee's invention arose following his or her consultation through normal company channels (i.e., was help sought?);
   7. whether the employee was dealing with highly confidential information or confidential work; and
   8. whether it was a term of the servant's employment that he could not use the ideas which he developed to his own advantage.

In Canada, a patent application must contain a Petition to The comissioner of Patents requesting grant of a patent on behalf of the inventor or to an assignee of the inventor and a specification describing the invention. In the United States, a specification must be accompanied by a Declaration signed by all of the inventors.

The specification must correctly and fully describe the invention and its operation and use, as it is intended by the inventor. In other words, the description must be enabling, allowing a person of skill in the art or science to which the invention pertains, to make, construct, compound or use it. Machines must be described in both principle of operation and in a best mode in which the inventor has contemplated its use and for processes, to explain the necessary sequence of steps allowing it to be clearly distinguished from all others.

Generally, a specification will indicate the field to which the invention applies, a background describing the prior art and outlining the problems associated with those inventions, if any, the objectives of the present invention and a summary of the invention.

It is required the specification end with a claim or claims outlining, in explicit terms, the subject matter or scope of the invention for which exclusive privilege or property is claimed.

Further, it is required that an abstract be provided, describing the invention as clearly and succinctly as possible.

Information is available from the Canadian Intellectual Properties Office through Industry Canada or the United States Patent and Trademark Office, outlining the basic information required for writing and filing a patent application.

Our fees are, for the most part, based upon the time spent on your application, chargeable at an hourly rate. In addition, the patent offices charge fees as well. The following patent office fees are associated with a patent or patent application:

• Filing Fee
• Request for Examination fee (in Canada)
• Fees to register documents such as Assignments of Ownership
• Maintenance Fees: Every year beginning on the 2nd anniversary of filing in Canada and at 3.5, 7.5 and 11.5 years after issuance in the US
• Issue fees

Click for a detailed list of the costs comonly associated with a patent application.