The Concept of Invention
The law of patents seeks to
protect inventions. The question
then is, what is an invention?
Defining an Invention
 Webster’s
dictionary defines an
invention as “a device, contrivance, or
process originated after study and
experiment.”
Defining an Invention
 S.
2 of the Patent Act provides that an
“invention” means “any new and useful
art, process, machine, manufacture or
composition of matter, or any new and
useful improvement in any art, process,
machine, manufacture of composition of
matter.” (Emphasis added)
Manufacture & Composition of
Matter

A manufacture denotes a non-living
mechanistic product or process.
 A composition of matter must be limited in
some way so as not to include a “machine” or
“manufacture”, but to imply a combination or
mixture of various ingredients that does not
include higher life form whose genetic code
has been altered by scientific manipulation.
 Manufacture connotes the making of s/thing.
Machine
 A machine
is any instrument or
assemblage of parts for the
transmission of force, energy or power
in a predetermined manner.
…Art
 The
word “art” in the Patent Act must be
given its general connotation of learning
or knowledge as commonly used in
expressions such as “state of the art” or
“the prior art”; thus an addition to the
cumulative wisdom in a field whereby a
desired result is effected having
commercial value is a “new and useful”
art.
…Art
 The
decision of the court in Lawson v.
Comm’r of Patents strongly suggests
that for an art to be patentable “there
must be some manual, chemical, or
physical effect to transform or reduce
something to a different state of thing.
See Re Dixon Application.
Process
 Similarly,
for a process to be patentable,
it must confer some advantage which is
material, in the sense that the process
belongs to a useful art as distinct from a
fine art. The word “process” is also used
interchangeably with “method.”
…improvement of ..
 Patents
may be granted for the new use
of an old compound as there is
inventive ingenuity in such discovery.
The Patent Act, however, requires that
the claims must be directed to such new
use. In other words, claims directed to
the compound itself or to the old use of
the invention are not patentable.
Art. 27 (1) of TRIPS
 “Subject
to the provisions of paras 2
and 3, patents shall be available for any
inventions, whether products of
processes, in all fields of technology,
provided that they are NEW, involve and
INVENTIVE STEP and are CAPABLE
OF INDUSTRIAL APPLICATION.”
Limits on Inventions?
However, s. 27 (8) provides that “no patent
shall be granted for any mere scientific
principle or abstract theorem.”
 Similarly, s. 20 (1) - (13) which empowers the
state to confiscate certain inventions
pertaining to munitions of war strongly
suggest that patents may not be issued to
ALL inventions.
 In addition, s. 22 places limits on nuclear
inventions.

Limits on Inventions
 More
importantly, s. 27 (1) stipulates
that, “the commissioner shall grant a
patent for an invention to the inventor or
the inventor’s legal representative if an
application for the patent in Canada is
filed in ACCORDAMCE with this Act
and ALL OTHER REQUIREMENTS for
the issuance of a patent under this Act
are met.”
Summary
 As
the majority of the SC held in
Harvard case, “while the definition of
“invention” is broad, Parliament did not
define invention as “anything new and
useful made by man…just because all
inventions are unanticipated and
unforeseeable, it does not necessarily
follow that they are all patentable.”
Summary
 The
combined effect of all the
provisions stated above is that an
invention is not necessarily a juridical
fact or recognized as such by law
unless it falls within the scope of
patentable subject matter. A
development may thus be inventive and
yet not comprise proper subject matter
of patents.
Deconstructing an Invention

The alleged invention must be new (NOVEL).
 The alleged invention must not have been
obvious to a person “skilled to the art”.
 The alleged invention must be useful, that
industrially applicable. (sound prediction)
 Finally, the invention must fall within judicially
recognized categories of “patentable subjectmatter.”
Novelty in Patent Law

The colloquial or pedestrian concept of
novelty differs from patent law’s conception of
newness. In the context of patent law, the test
of novelty is quite technical, requiring the
satisfaction of certain set standards.
 The criterion of novelty seeks to debar from
patentability, “inventions” which do no more
than to repeat information or knowledge
which is already part of the “prior art.” This
refers to the concept of “anticipation”.
Date of Invention and Prior Art

To determine whether an invention is new,
two factors are relevant, namely, the date of
invention and the prior art at the date of
invention.
 The court must first determine the relevant
date of invention. The date of invention is a
question of fact. As the court held in Ernest
Scragg v. Leesona, date of invention may be
established by proof that the invention was
formulated by a given date.
Date of Invention

The date of invention may be established
verbally or in writing or by evaluating the point
in time at which the process, manufacture, or
machine was constructed. It is the date on
which the inventor reduced his/her ideas to
perfection. The date of conception of the idea
does not determine the date of invention.
However, patent law permits some
experimentation with the invention after the
date of invention.
Public Domain and Prior Art
 The
terms “prior art” and “public
domain” are different. In patent law,
prior art refers to that body of
knowledge in the specific field in issue
ordinarily known and available to the
average person working in that relevant
and specific field of knowledge. Prior art
is field-specific and narrower than
information in the public domain.
Anticipation defined
 An
invention is said to have been
anticipated if prior to the filing of the
application, another patent, document
and/or reliable oral information had
previously described, embodied or put
in public use the alleged invention.
The Nature of “Anticipation”
 The
test of anticipation does not
necessarily deny that there may have
been an invention, rather, it asserts that
the idea expressed in the invention was
already disclosed to persons skilled in
that art (Beloit case). It is immaterial
that the inventor was in fact unaware
that the invention had been described
elsewhere.
Pre Oct. 1, 1989 and Post
Oct. 1 1989

The legal regime on anticipation and novelty
may be delimited to two time frames, i.e, the
law on pre-October 1, 1989 applications and
the law on post-October 1, 1989 applications.
 For applications in the former period, no such
patent will be valid if the subject matter of the
alleged invention had been described in any
publication printed in Canada or in any other
country more than 2 years before the actual
filing date. Energy Absorption case.
Anticipation, pre-Oct. 1 1989,
CONT’D
 If
an invention lacks novelty, the patent
is invalid and there cannot be a
successful case of infringement of the
patent. Novelty is a question of fact. It is
tested as of either,
 The date of the invention or
 Two years before the filing date
The ‘date of invention”

In the pre-October 1, 1989 regime, Canada
operated a FIRST TO INVENT model. The
definition of the phrase “first to invent” is
discussed in Scott Paper case, (1981), 53
C.P.R. (2d) 26 (F.C.T.D.).
 The date of filing is the date the
Commissioner receives the documents,
information, and fees prescribed for the
purposes of the application at the Patent
Office.
First to file and first to invent

In the global scheme, there are two different
ways to assert priority. The first and most
widespread is the FIRST TO FILE SYSTEM.
The second is the FIRST TO INVENT. Until
1989, Canada and the US operated the
former. Only the US now operates the latter.
In the FIRST TO INVENT regime, NOVELTY
is determined by reference to EITHER the
date of the invention or two years before the
filing date. See Bayer v. Apotex
Anticipation, pre-Oct, 1 1989

The law presumes that every patented
invention is novel. Hence, the onus is on the
person asserting otherwise to prove same.
 It is often very difficult to invalidate a patent
on the grounds of anticipation. This is
because anticipation cannot be proved by an
assemblage of elements gathered from
glosses selected here and there in several
anterior specifications.
Anticipation and Oral
disclosure

The law on anticipation is that the prior art on
the subject of the application must not have
been publicly available prior to the invention.
The tenor of the old legislation seemed to
limit relevant prior art to “patents and printed
publications”, hence the issue arises as to
whether an affidavit evidence or oral
disclosure on the existence of an
embodiment of the alleged invention are
admissible in assessing novelty.
Oral Disclosure

In Tenneco Chemicals, [1967] 1 Ex. C.R. 188,
Jackett P. opined that the patent examiner
was bound to consider oral sources of
disclosure as sufficient to invalidate a patent
on the grounds of anticipation. However,
considering some of the remarks of Justice
Binnie, in the Electro Sante case, the law on
the relevance of oral anticipation seems
unsettled.
Anticipation and Mosaicing

The practice of “mosaicing”, that is, gathering
together various references in order to build a
composite case of anticipation is not
permissible under Canadian Patent law.
Mosaicing may be relevant in dealing with the
test of obviousness, not with anticipation. On
the latter, the law requires that there be A
SINGLE DOCUMENT or INVENTION
anticipating the alleged invention. Anticipation
and obviousness are two different concepts.
Obviousness & Inventiveness
 The
test of obviousness deals with an
alleged lack of “inventiveness”. Here,
the prior art is reviewed and its
cumulative effect weighed in the light of
whether the alleged inventive step
would have been obvious to the
proverbial “workman skilled in the art.”
Ahh!! This Gives me all I want
 Anticipation
asserts that the alleged
invention was already known to persons
skilled in the art. The information must
be found in a single document or
invention which gives the person skilled
in the art what is claimed and teaches
him/her all that is necessary to replicate
the alleged invention.
Anticipation, Cont’d (Electro)

“Although the various components were
earlier known to persons skilled in the art, the
inventor brought the elements together to
achieve what the Commissioner of Patents
considered a new, useful and ingenious
result. The claimed invention effected an
ingenious combination rather than a mere
aggregation of previously known
components” Binnie, J. in Freeworld v. Electro
Sante, at para. 27.
Mosaicing and disclosure

The disclosure of a single copy of a
document disclosing the invention would
suffice to invalidate the patent if the
disclosure was made without an obligation of
confidence.
 Similarly, the disclosure of the invention to
ONE person without an obligation of
confidence puts the invention in the public
domain and out of the reach of valid
patentability. See the Gibson case.
Prior Publication

“To constitute a prior publication, the
information contained in the document must
be EQUAL to that given by the patent and
show EVERYTHING that is ESSENTIAL to it
so that a workman of ORDINARY SKILL in
the RELEVANT art would at once have
perceived, understood and been able
practically to apply the invention without the
necessity of further experiment.” Thorson, J,
in Ernest Scragg at 71.
Anticipation

Reference to other documents is not
permissible UNLESS there is a CLEAR
instruction or inference to do so in the
document at hand (See Binnie, J, in Free
World v. Electro Sante). According to his
lordship, ‘a signpost, however clear, upon the
patentee’s invention will not suffice. The prior
inventor must be clearly shown to have
planted his flag at the precise destination
before the patentee.”
Anticipation, cont’d
 In
the much-cited case of Reeves Bros,
the court held that a valid anticipation
must compose of the following. The
Prior art must:
1. Give an exact description;
2. Give directions which will inevitably
result in something within the claims;
The Reeves case:

Give clear and unmistakable directions;
 Give information which for the purpose of
practical utility is equal to that given by the
subject patent
 Convey information so that a person
grappling with the same problem must be
able to say “Ah ! that gives me what I wish”
 Be contained in one SINGLE document
Reeves’ Tests

More importantly, the information given by the
purported PRIOR ART, “must the purpose of
practical utility, be EQUAL to that given in the
patent in suit.” See Dickson, J. in
Consolboard case.
 In short, in the words of Justice Binnie, “the
test for anticipation is difficult to meet”.
(Electro Sante Case), The better line of attack
is obviousness, rather than anticipation.
Anticipation

The rigorous nature of the test of anticipation
impels the conclusion that a very “old prior
patent used for an apparently different
purpose which could only be said by a patent
agent to have all essential elements is not an
anticipation” HUGHES, at 329.
 Similarly, if the claim is a combination of
elements, the prior art must contain EACH
ELEMENT of the combination.
The Gillette defence
 There
is a style of pleading by patent
lawyers in which the defence of
anticipation is raised in such a way as to
contend that the alleged invention by
the plaintiff was already disclosed in the
prior art and as such does not infringe
or that the PATENT IS INVALID. This is
known as the Gillette defence. Courts
are very skeptical of this line of defence.
Anticipation
 “The
test of anticipation is a difficult
defence to establish because courts
recognize that it is all too easy after an
invention has been disclosed to find its
antecedents in bits and pieces of earlier
learning. It takes little ingenuity to
assemble a dossier of prior art with the
benefit of 20-20 hindsight.” Binnie J. in
Electro Sante v. Free World
Prior Publication, pre-10/01/89
 The
pre-October 1, 1989 regime
provided that patents may not issue for
alleged inventions that was in any
patent or publication printed in Canada
or elsewhere more than two years
before the actual filing date of the
application in Canada.
What is a“Printed Publication”

In order for a document to qualify as a printed
publication, it must
 A) have become generally available without
restriction to members of the public,
 B) the person or persons receiving the
document, to be categorized as members of
the public must have no special relationship
with the author;
 C) the onus is on the person asserting
publication to prove the fact of publication.
Printed Publication

In J M Voith GmbH, the court held that the
distribution of a brochure at a trade
convention to customers and others
constituted publication
 On the other hand, placement of a document
in a restricted area of a library kept by a trade
association and thereby treated as
confidential was held not to constitute
publication. See Koehring Canada case
Xter of Printed Publication

In sum, a typewritten document is not a
printed publication. See Xerox case
 Photostat copies may be considered printed
publication.
 Offset printing is printing within the meaning
of “printed publication.”
 Is a photocopy of a typescript including handdrawn figures a “printed” document? In the
US, the courts have interpreted the words as
conjunctive rather than in the alternative.
Anticipation by Foreign patent
 Under
the pre-October 1, 1989 regime,
an application for a patent must be filed
in Canada before a patent for the same
invention has been issued by any other
country, or within 12 months from the
filing of an application for the same
invention in another country.
Prior Use or Sale in Canada
 For
applications filed before Oct 1,
1989, no patent may issue for an
invention that was in public use or on
sale in Canada for more than 2 years
before the filing of the application in
Canada. Note that this provision differs
from experimental use exemptions.
Gibney v. Ford Motors

Ptf instituted action for infringement of a
patent relating to a protector for a generator.
Ptf put a protective makeshift cover on the
generator of an unidentified customer. No
precautions as to secrecy or confidence were
taken in respect of such use. The dft argued,
and the court agreed that the subject matter
of the patent had been used in public in
Canada for more than 2 years b/4 the
application for patent was filed.
Use Prior to Filing for Patent

Limited public use, partly or primarily for
experimental purposes, may not be excused
if the public character of the use in not in
question. A prior use that is experimental
does not invalidate a patent. A fortiori, where
public experimentation is the ONLY means by
which an inventor could test the device, a
court may hold that such use was not
commercial and hence, not fatal to the patent.
Black-Box Inventions

If the patent deals with a device or method of
manufacture which method or mechanisms of
the device can only be disclosed by
dissecting the device or method of
manufacture, it is not necessary to prove that
the device or method WAS IN FACT
dissected. Mere sale or public use of the
device or method is enough to invalidate the
patent. See Risi Stone case
Anticipation Under New Law
 S.
28 (1), the filing date of an
application is the date on which the
Comm’r receives the documents,
information and FEES prescribed for the
purposes of this section or, if they are
received on different dates, the last
date.
Anticipation Under New Law

However, s. 28 (2) provides that the subjectmatter defined in an application for a patent
must not have been disclosed more than 1
year BEFORE the FILING DATE, or by a
person who obtained knowledge, directly or
indirectly, from the applicant in such a manner
that the subject matter became available to
the public in Canada or ELSEWHERE.
Absolute Novelty

The first implication of s. 28 (2) is that all
applications are governed by a regime of
ABSOLUTE NOVELTY.
 S. 34 (1) the Patent Act encourages
applicants to file a description setting out the
background art known to the applicant to be
important for understanding, searching, and
examining the invention. Note that this is
subjective and relies on the applicant’s good
faith and integrity. See also s. 34 (2)
Absolute Novelty

No patent would be valid if prior to the
application date, there is
 A) a prior application pending describing the
same invention
 B) subsequently filed an application which
claims an earlier convention filing date which
describes the same invention,
 C) a third party disclosed the invention in
such a manner as it becomes available to the
public,
Absolute Novelty

D) the applicant, or someone deriving
knowledge from the applicant has, more than
one year before the effective filing date,
disclosed the invention in such a manner as it
became available to the public.
 The first two requirements clearly create a
first to file system in Canada. In rare cases
where 2 or more applicants, filed on the same
day, or on on same convention dates, all the
applicants will get a patent.
Absolute Novelty

Conditions c & d combine to create a regime
of absolute novelty.
 More importantly, the nature of the disclosure
required to constitute prior art has been
broadened beyond the narrow scope of
‘printed publication.’
 Under the new rules, if the invention has
been disclosed prior to the claimed date in
such a manner that it becomes available to
the public, then anticipation is in issue.
Patent Cooperation Treaty

Articles 50-102 pertain to the modalities for
the application of the Patent Cooperation
Treaty in respect of international patents.
 ArtS. 53 (1) and 56 provide that the Comm’r
shall act as an International Searching
Authority and the Designated Office,
respectively, in accordance with the PCT.
 The “international filing date” means the date
accorded to an international application by a
receiving date pursuant to Art 11 of PCT.
Reeves, Beloit, and Freeworld

The general rules that one must be able to
find a SINGLE document to find, for practical
purposes, that is which is said to be the
invention still applies under the new law
where the alleged anticipation involves a
publication. Baker Petrolite case
 However, where the issue is prior use or sale,
the court would carefully examine the
circumstances of the case. The courts apply
the following principles:
Absolute Novelty

Sale or prior use is not enough, the prior use
or sale must be an ‘enabling disclosure’
 For chemicals, the test is whether its
composition can be discovered through
analysis of the product,
 It is not necessary to show that a member of
the public actually analyzed the chemical or
reverse engineered the device. See Canwell
v. Baker Electrolite (2002) 211 DLR 35
Protest in the form of Prior Art

Under s. 34 (1), a protest, in the form of a
prior art, may be filed against a patent on
grounds of anticipation. The prior art shall
consist of patents and printed publication that
the protestor believes to have a bearing on
the patentability of any claim in an application
for a patent. Given the evidentiary problems
and the absence of any obligation by the
patent office to deal justly with the protest, it
doubtful whether s. 34 (1) (2) is useful.