Lawyer and patent agent, Daphne C. Lainson, MCIC, answers your
questions on patenting your discoveries. Send your questions to
patentquest@accn.ca.
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 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
in most other countries in the world.
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.
COPYRIGHT 2007 Chemical Institute of
Canada Reproduced with permission of the copyright holder. Further reproduction or distribution is prohibited without permission.
Copyright 2007, Gale Group. All rights
reserved. Gale Group is a Thomson Corporation Company.
NOTE: All illustrations and photos have been removed from this article.