General:
1) Declaration of Entitlement required in Canada. Evidence of Entitlement required before filing date in Canada. Evidence to support Entitlement may include:
- Assignment (executed before the Canadian filing date),
- Employment agreement,
- Oral or another agreement (recommend filing a
confirming assignment of an oral agreement).
It is recommended that an assignment still be filed at the Canadian Patent Office. An assignment executed after the PCT filing date can not be used as a basis for Entitlement. To correct Entitlement based on an assignment executed after the filing date amendment of the applicant to list the inventors, removal of the applicant listed on PCT, followed by filing the assignment from inventors to assignee is required.
2) Voluntary Divisional applications should not be filed with the Canadian Patent Office. A divisional application should be filed following receipt of a unity of invention objection issued by the Examiner. In order to ensure that a unity of invention objection is raised, additional claims directed to any desired subject matter should be filed as early as possible during prosecution. There are no excess claim fees in Canada. However, maintenance fees on the divisional application are due from the date of filing of the parent application.
3) Joint Ownership of Patents: In Canada, a patent co-owner cannot dispose of anything less than their entire interest in the patent (e.g. a license) without first obtaining the consent of the other co-owners. Any form of disposition of a partial interest in a patent, which has the effect of diluting the interest of the other co-owners, requires the consent of such co-owners.
Life Science:
4) Embryonic stem cells are considered patentable subject matter provided they cannot develop into an animal - for example, totipotent stem cells are not allowed. Pluripotent stem cells, multipotent stem cells, or adult stem cells are acceptable subject matter.
5) Animals at any stage of development, from fertilized eggs on, are considered higher life forms and not patentable. Plant are also considered higher life forms and not patentable. Claims to an animal cell or a plant cell are acceptable.
6) Organs and tissues are not considered compositions of matter and are not patentable. A Patent Office Notice (June 2006) states that "[o]rgans and tissues are created by complex processes, elements of which require no human intervention, and do not consist of ingredients or substances that have been combined or mixed together by a person." However, an artificial organ-like or tissue-like structure, generated by the hand-of-man by combining various cellular components and/or inert components, may be considered to be a composition of matter and patentable.
7) Methods of medical treatment are not allowed in Canada. Claims directed to a method of medical treatment may be amended to a "use" format which is accepted in Canada.
Information Technology:
8) Computer programs per se expressed as lines of code or listings are the subject of copyright protection but software that has been integrated with a traditionally patentable subject matter may be patentable if the traditional criteria for patentability are satisfied. The Patent Office's position is that for a method to be considered a patentable art, the method must be: an act or series of acts performed by some physical agent upon some physical object and producing in such object some change either of character or of condition; or it must produce an essentially economic result in relation to trade, industry or commerce.
9) Business method-related inventions are not automatically excluded from patentability. Rather, such inventions may be allowable in Canada provided they meet the substantive criteria for inventions as established by the Patent Act and Rules and the decisions of Canadian courts. For example, business methods implemented as computer programs may be protected by satisfying the patentability requirements for such subject matter as outlined above in Section 8. Subject matter that lays claim solely to the skills of a professional or uses a computer to automate a professional task is not considered patentable in Canada.
10) Computer-implemented inventions may be claimed using different claim types. The types typically include: 1. art or process claims (e.g. a method); 2. machine claims (e.g. an apparatus or system); and 3. manufacture claims (to a computer program product or computer media embodying code or data structures). Signal claims such as computer programs embodied in a propagated carrier wave are not considered patentable subject matter.
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