Patents apply to
inventions. To be considered
patentable, an invention must pass three criteria: •
novelty — the invention must be new, i.e., "first in the world". •
non-obviousness — it must be inventive, "showing ingenuity and not obvious to someone of average skill who works in the field of that invention". •
utility — the invention must be useful, i.e., functional and operative.
Novelty To be patentable, an invention must be
novel. That is, the invention must not have been described or claimed in a previously filed third-party Canadian patent application, and must not have been previously publicly disclosed by a third party, anywhere in the world. The test for novelty is whether or not a single, publicly disclosed example of
prior art "contained all of the information which, for practical purposes, is needed to produce the claimed invention without the exercise of any inventive skill". If a third party previously filed a Canadian patent application disclosing the invention, or if a third party document or device previously publicly disclosed the invention anywhere in the world, then a subsequently applied-for Canadian patent application for that invention is lacking in novelty and is invalid. A lack of novelty is often referred to as "anticipation". For example, if a piece of prior art has each of the elements of a claimed invention, the piece of prior art is said to "anticipate" the claimed invention, or alternatively, the claimed invention is said to have been "anticipated by" the piece of prior art. In Canada, the requirements for novelty are codified under s. 28.2 of the
Patent Act: The section does not restrict disclosure to prior patents, giving a broad description of what includes prior disclosure; so long as the subject-matter was disclosed "in such manner that the subject-matter became available to the public", the subject-matter is barred from being patented.
Non-obviousness The test for
non-obviousness (also sometimes referred to as "inventive ingenuity" or "inventive step") is whether an "
unimaginative skilled technician, in light of their general knowledge and the literature and information on the subject available to them on (the date that the application is filed in Canada), would have been led directly and without difficulty to [the] invention." The requirement for non-obviousness is codified under s. 28.3 of the
Patent Act. In
Apotex Inc. v. Sanofi‑Synthelabo Canada Inc., the
Supreme Court of Canada affirmed the test for non-obviousness laid out in the 1985 English case of
Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd.: • Identify the notional "person skilled in the art" and the relevant common general knowledge of that person; • Identify the inventive concept of the claim in question or if that cannot readily be done, construe it; • Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed; • Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
Utility For a product to have
utility it must perform some useful function. The requirement for utility originates from the definition of invention as a "new and useful art" The requirement is generally easy to meet, however, it does limit the scope of protection by excluding methods that would not be useful.
Subject matter In addition to the three criteria above, in order to be patentable the invention must also be: and medical treatments within the body (diagnoses based on, for example,
blood tests, are patentable). Some types of
computer programs are also not patentable by law, as
computer code by itself is not something physical. However, according to the
Canadian Intellectual Property Office, a computer program may be patentable if it offers a new and inventive solution to a problem by modifying how the computer works. Some things that cannot be patented include: • "disembodied
ideas,
concepts or discoveries" • "
scientific principles and abstract
theorems" • "methods of
medical treatment or
surgery" • "higher
life forms" • "
forms of energy" • "features of solely intellectual or aesthetic significance" • "
printed matter" The list of prohibited matters notably differs from the United States. With respect to patents for software, while mere algorithms are not patentable
per se (mere algorithms may be protected by Canadian copyright law), software may be protected by Canadian patent law if it meets the traditional criteria for patentability (that is, it must be new, non-obvious and useful). In other words, if for example the software is new and non-obvious, it would be patentable in Canada if the software directly provided a functional
real world useful result (and not merely the calculation of a mere algorithm). == Filing a patent ==