Protecting innovation: What you should know about patents and Canada’s manufacturing sector

Sustained innovation is a key objective promoted by the SME’s “Take Back Manufacturing” initiative toward maintaining and improving Canada’s global competitiveness in manufacturing. As R&D investments are made by private and government organizations to promote the invention and improvement of products and manufacturing technologies, it is crucial that Canada’s investments be protected so that Canadians can reap the rewards. Patents and other forms of intellectual property (IP) can help protect R&D investments in the manufacturing sector.  

While there are different forms of IP — such as patents, industrial designs, trademarks, copyrights and trade secrets — that may be relevant to the manufacturing sector, patents can protect technological advances and be used to control where and by whom such technological advances are practised, irrespective of labour rates. A patent is essentially a bargain with the state whereby the inventor gives full disclosure of an invention in exchange for a limited period of exclusivity — usually 20 years from when a patent application is filed — during which time the patent owner has the legal right to stop others from making, using or selling the invention in the country in which the patent is granted. Upon expiration of this limited period of exclusivity, the invention can be exploited by anyone.  

A Canadian patent can, for example, be used to prevent others from: making the invention in Canada, even if the invention is subsequently sold abroad; using the invention in Canada, even if the invention is made abroad; and selling the invention in Canada, even if the invention is made abroad. A Canadian patent related to a process for making a product can also be used to prevent others from using that patented process to make a product abroad and then importing and selling that product in Canada. Even though a patentable invention may have been developed in Canada by Canadians, a patent for that same invention may be obtained in foreign countries to give the patent owner the right to stop others from making, using or selling that invention in those foreign countries.  

To be patentable, an invention must be new and inventive (i.e., not obvious). For some countries, any public disclosure can be considered as destroying the novelty of the invention and can therefore prevent the grant of a valid patent. Thus, it is always advisable to keep an invention confidential until a patent application has been filed. In the United States and Canada, a grace period is provided where a valid patent may still be obtained if the inventor has previously sold, used or disclosed the invention less than one year before the filing of the patent application.

The requirement for inventiveness essentially means that the invention cannot be apparent to a person skilled in the relevant technical area who has the benefit of common general knowledge and public literature in that area. However, inventors should not get bogged down by this requirement because inventions can appear obvious in hindsight, especially to those who made them. In reality, most patents that are granted are not for pioneer inventions, but are for improvements over existing technologies. There are a number of factors that can assist in demonstrating inventiveness, so if a potentially patentable invention has been identified that could provide your company with a competitive advantage, you should consult your patent counsel.

There is a wide range of inventions that can be patented and there can often be more than one patentable aspect associated with a particular technology. When considering the different ways a particular technology could be protected, it is a good idea to consider the entire life cycle of the product/technology (e.g., design, testing, manufacturing, using, servicing, repairing and/or recycling) to identify all of the components that contribute to the overall competitive advantage of the technology.

The legal definition for a patentable invention is “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter.” In the context of manufacturing, machines and manufactures can, for example, include: a product with a unique combination of features; a machine/system/tool used for manufacturing, testing, servicing, repairing or recycling a product; and improvement(s) in the foregoing.

Examples of patentable processes can include: a series of steps for manufacturing, testing, using, servicing, repairing or recycling a product; ways of controlling/operating new or existing machines; steps/parameters for treating a material or part; and computer-implemented processes. Examples of patentable compositions of matter can include alloys, plastics, additives, lubricants, coatings, etc.

Enforcing a patent does not always involve prohibitively expensive litigation. In reality, there are relatively few cases that end up in trial. Often the mere existence of a patent or pending patent application can be enough to deter potential infringers. Patent applications automatically get published 18 months from being filed and can easily be accessed online by competitors. Nevertheless, it is usually a good idea to warn competitors by marking patented products with applicable patent numbers. Products for which a patent application is pending can also be marked as “Patent Pending” together with the applicable published patent application number(s).

Patents can also be used strategically to generate licensing revenue for a company by licensing out non-core technologies to another in a non-competing field. On the other hand, perhaps a licence can be obtained for technology complementary to yours instead of spending valuable R&D resources trying to design around patented technology. Patent databases can be a great source of information for identifying potential licensors/licensees and collaborators. There are also patent monetization firms that can help identify potential licensees for your patents or potential licensors for technology complementary to yours.

Patents and other forms of IP can be valuable assets for manufacturing companies and, in some cases, be the most valuable assets. As Canada’s manufacturing sector continues to rely on technological innovations to remain competitive on the world stage, it is paramount that the IP associated with such innovations be protected.

Andre Theriault, M.E.Sc., P. Eng. (Andre.Theriault@nortonrosefulbright.com), is a registered patent agent with the law firm of Norton Rose Fulbright in Toronto. His practice includes the preparation and prosecution of patent applications relating to manufacturing processes, mechanical systems, aerospace, medical devices, software and computer-related devices.

This article originally appeared in the May 2014 issue of Manufacturing AUTOMATION.