The Patent System
Specification
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The specification has two parts: “disclosure” &
“claims”
27(3) The specification of an invention must
 (a) correctly and fully describe the invention
and its operation or use as contemplated by the
inventor;
(4) The specification must end with a claim or
claims defining distinctly and in explicit terms the
subject-matter of the invention for which an
exclusive privilege or property is claimed.
Specification
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The claims define the monopoly
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So that others will know whether they are infringing
One of the important features of the claims is to
make it clear to other people what they are not
entitled to do during the life of the patent. . .
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Whitford J, American Cyanamid Co v Berk
Pharmaceuticals, Ltd, [1976] RPC 231, 234 (Ch D
Specification
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The disclosure describes the invention to the
world
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So that others will be able to practice the
invention after the patent term expires
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‘Quid pro quo’ for patent monopoly
[The disclosure] should be a complete description
which will enable anybody, after the patent has
expired, to put the invention into practice.
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Whitford J, American Cyanamid Co v Berk Pharmaceuticals, Ltd,
[1976] RPC 231, 234 (Ch D
Specification
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The disclosure also reveals knowledge that may
be useful even during the term
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Invention is monopolized, knowledge is not
These monopolies are granted to encourage
people to make inventions and to make the
nature and working of them known. . .
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Whitford J, American Cyanamid Co v Berk
Pharmaceuticals, Ltd, [1976] RPC 231, 234 (Ch D
Claims
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“Embodiment”
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“The inventive concept”
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The specific machine or compound which the
inventor has come up with
The inventor’s contribution
“Invention”
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The invention defined by the claims
Claims
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The inventor is entitled to claim the inventive
concept, not just their particular embodiment
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But the concept must be described in concrete terms
But the court will not determine the inventive
concept
That is left to the inventor in prosecuting the patent
 Recall – the inventor (& her agent) writes her own
patent
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Claims
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The claims define the scope of the monopoly
 In an infringement action, the court compares
the defendant’s product with the claims not
with the plaintiff’s product
 Validity, infringement, etc are all determined
with reference to the invention as claimed
Claims
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“Men substitute words for reality and then fight
over words”
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Edwin Howard Armstrong, pioneer in radio, on his
experiences in patent litigation, quoted by Hayhurst, in
Patent Law in Canada
BVD v Can. Celanese
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Issue: stiffening shirt collars
The prior art consisted of coating material with
cellulose which left a stiff and glassy surface: eg
the Van Heusen patent
BVD v Can. Celanese
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The substance of the plaintiff’s Dreyfus invention
was a method of making a flexible composite textile
material by weaving cellulose into the fabric
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the very substance of Dreyfus' invention was. . .to make
a composite textile material by taking a plurality of
fabrics and uniting them by the use of a fabric composed
of or containing yarns, filaments or fibres of a
thermoplastic cellulose derivative and the application
thereto of heat and pressure
There is no doubt that this invention was new,
useful and not obvious
BVD v Can. Celanese
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Problem
 The claim did not mention weaving
A process for the manufacture of composite
sheet material which comprises treating a fabric
containing a thermoplastic derivative of cellulose
with a softening agent, associating it with
another fabric, and uniting the fabrics by
subjecting them to heat and pressure
BVD v Can. Celanese
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The patent was invalid because the scope of the
invention as claimed was not novel
 The prior art spread the cellulose over the
fabric and then applied heat
 Spreading falls within “associated”
BVD v Can. Celanese
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The inventive concept was novel
The invention as claimed was not
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Result
Invalid patent
 Note: the consequence is not just that
plaintiff loses infringement action, but patent
for real invention is rendered worthless by
overly broad claims
Claiming
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To avoid this problem multiple claims are
standard
 Begin by claiming the broadest possible scope
 Gradually narrow to the specific embodiment
Claiming
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Claims stand or fall independently
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58 When, in any action or proceeding respecting a
patent that contains two or more claims, one or
more of those claims is or are held to be valid but
another or others is or are held to be invalid or void,
effect shall be given to the patent as if it contained
only the valid claim or claims
Construction
Principles
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We must look to the whole of the disclosure and
the claims to ascertain the nature of the
invention and methods of its performance,
(Noranda Mines Limited v Minerals Separation
North American Corporation [[1950] SCR 36],
being neither benevolent nor harsh, but rather
seeking a construction which is reasonable and
fair to both patentee and public.
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Per Dickson J Consolboard Inc v MacMillan Bloedel
(Saskatchewan Ltd [1981] 1 SCR 504
Principles
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There is no occasion for being too astute or
technical in the matter of objections to either
title or specification for. . ."where the language
of the specification, upon a reasonable view of
it, can be so read as to afford the inventor
protection for that which he has actually in good
faith invented, the court, as a rule, will
endeavour to give effect to that construction"
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Per Dickson J Consolboard Inc v MacMillan Bloedel
(Saskatchewan Ltd [1981] 1 SCR 504
Principles
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[T]he patent should be approached "with a
judicial anxiety to support a really useful
invention"
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Per Dickson J Consolboard Inc v MacMillan Bloedel
(Saskatchewan Ltd [1981] 1 SCR 504
Specifics
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The patent is addressed to persons skilled in the
art
Expert evidence to explain the meaning of the
terms used in a claim is normally required
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Experts are not permitted to testify as to the
meaning of the claim
Construction of the patent is for the judge
Specifics
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The terms of the claims must be interpreted in
light of the disclosure
The disclosure cannot be used to change the
meaning of the claim
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Eg if more was disclosed than was claimed
True Monopoly v Copyright
American Cyanamid v Berk Pharm
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The broad claim would enable the plaintiffs to
stop any worker who dug up a soil sample
anywhere and found in it a strain of
Streptomyces aureofaciens and mutated that
strain to produce a near 100 per cent
tetracycline-producing strain, from using that
strain . . .
American Cyanamid v Berk Pharm
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So, on the broad claim, the plaintiffs could seek
to stop other workers from reaping the benefit
of what might be a long and possibly expensive
programme of work and research, to which the
plaintiffs, by their disclosure in this patent, could
not conceivably have made any kind of
contribution.
American Cyanamid v Berk Pharm
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It is clear that as between two independent
inventors the first to file receives the patent and
can exclude the other
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Is this case different from a standard case of
independent invention?
Does Whitford J’s objection apply in the
standard case?
What is the response?
American Cyanamid v Berk Pharm
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Suppose the only way to independently create
the drug is a long and expensive program of
research.
Does the result in this case undermine the
incentive for the originator to develop the drug
in the first place?
American Cyanamid v Berk Pharm
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From a public policy perspective, is it good or
bad to encourage other researchers to undertake
a long and expensive research program in order
to develop substantially the same drug?
Why would the originator want a broad patent,
if not to prevent independent creation?
Copyright v Patent
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Are uncopyrightable “ideas” patentable?
If so, why?
Why are ideas not copyrightable?
How are patents different from copyright in that
respect?
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Consider trivial ideas that cost little to develop
Presumption of Validity
Presumption of Validity
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43(2) After the patent is issued, it shall, in the
absence of any evidence to the contrary, be valid
...
Is this a substantive burden?
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That is, should the court defer to the examiner?
Or is it only necessary to raise some evidence?
Diversified v Tye-Sil
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Presumption of validity
Thus the section does impose on the party
attacking the patent for invalidity the onus of
showing that it is invalid and, in my opinion, the
onus so imposed is not an easy one to discharge
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Thorson P
This is not the law
Presumption of Validity
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The law is as follows:
. . .the peculiar effect of a presumption 'of law' (that
is the real presumption) is merely to invoke a rule of
law compelling the jury to reach the conclusion in
the absence of evidence to the contrary from the
opponent. If the opponent does offer evidence to
the contrary (sufficient to satisfy the judge's
requirement of some evidence), the presumption
disappears as a rule of law, and the case is in the
jury's hands free from any rule
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Decary JA Diversified Products Corp v Tye-Sil Corp
Presumption of Validity
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Is Decary JA right as a matter of policy?