Patent quest.

Q: I have a Canadian patent on a new chemical compound for use in cancer therapy. I have now discovered that this compound may be useful for treating other diseases. Does my patent cover these other therapies?

A: The answer will depend on what you claimed in your patent. A patent has two main parts--the description and the claims. The description provides information on how to make and use your invention, and the claims define the scope of the invention protected by the patent.

If you claimed the compound itself, then you should be able to successfully enforce the patent against any third party using the compound without your permission. This may involve suing the third party for patent infringement in a court proceeding. This also assumes that the claim is valid. An acceptable defence to patent infringement is that the patent claim is invalid and should not have been granted by the Canadian Patent Office.

On the other hand, if you claimed the compound in terms of how it is to be used, then it is unlikely that you would be able to successfully enforce the patent against a third party using the compound for a different use than what is claimed.

However you claimed the compound in the patent, you should nevertheless consider seeking further patent protection for the use of your compound for the new therapies. A new use of a known compound is patentable in Canada and many other countries in the world.

Lawyer and patent agent, Daphne C. Lainson, MCIC, answers your questions on patenting your discoveries. Send your questions to patentquest@accn.ca.

Daphne C. Lainson, MCIC, is a lawyer and patent agent with the law firm Smart & Biggar in Ottawa, ON. Smart & Biggar is Canada's largest firm practising exclusively in intellectual property and technology law.

Disclaimer: The preceding is intended as informational only, and does not constitute professional advice.