Novelty
Statutory Basis
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"invention" means any new and useful art. . .
But the novelty requirement is set out in detail in
s28.1/2
An invention which is not new is “anticipated”
Rationale
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The novelty requirement is a minimal standard
for ensuring that the invention is a contribution
to knowledge
At one time patents were granted individually on
application to the king
This system was abused
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Eg A monopoly in playing cards granted to a No
monopolies for
Technical
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When must an invention be new?
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Where must an invention be new?
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First to file v first to invent
Anywhere in the world
What does it mean for an invention to be new?
How similar does must the prior art be in order to
anticipate the invention?
 Where is the borderline with non-obviousness?
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First-to-File/Invent
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First-to-file
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When two patent applications are filed for the same
invention, the first person to file is entitled to the patent
All of the world except the US
US will be changing soon
First-to-invent
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When two patent applications are filed for the same
invention, the person who proves that they were the first
to invent is entitled to the patent
This is established in an “interference” proceeding
First-to-File/Invent
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The disadvantage of the first-to-invent standard
is that it leads to litigation
Evidence of invention must be kept in case of
interference proceedings
eg Engineering notebooks
 Must be kept for long periods as interference can be
declared long after issue
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This is true for anyone who wants to apply for a
US patent – not just US inventors
Qualified Absolute Novelty
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Absolute Novelty
 An invention is new if it is not part of the
state of the art / prior art as of the priority
date
 What is the priority date?
 What is the state of the art?
Qualified
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One year grace period for disclosure by inventor
Filing Date v Claim Date
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Claim date v filing date
Filing date is the date of filing of the Canadian
application
 Claim date is the date from which the Canadian
application can claim priority
 Often referred to as “priority date”
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Claim / Priority Date
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When is the “claim date”?
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For patent applications filed only in Canada, it is
simply the filing date: s 28.1(1)
However, the claim date is adjusted to allow for
the international patent filing system
Claim date is filing date of international filing under
PCT or other applicable treaty
 So long as filing in Canada follows within one year
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State of the Art
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State of the art is all information
 Made available to the public
 By use or written or oral description
 Anywhere in the world
 As of the priority date
State of the Art
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Plus all information
 In Canadian patent applications with an
earlier priority date, including convention
filings
It is irrelevant whether the prior application has been
published – it is considered as part of the state of the
art even though it is secret
 However, unpublished foreign applications are not
part of the state of the art
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State of the Art
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Result: First to file wins
Prior Public Knowledge
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S.28.2 (1)The subject-matter defined by a claim in
an application for a patent in Canada (the "pending
application") must not have been disclosed. . .
 (b) before the claim date by a person not
mentioned in paragraph (a) in such a manner that
the subject-matter became available to the public
in Canada or elsewhere;
Not previously disclosed to the public anywhere in
the world
Prior Canadian Application
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Or in a patent application . . .
 (c) in an application for a patent that is filed
in Canada by a person other than the
applicant, and has a filing date that is before
the claim date; or
Prior filing in Canada
Prior Convention Application
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(d) in an application (the "co-pending
application") for a patent that is filed in Canada
by a person other than the applicant and has a
filing date that is on or after the claim date if
[applicant has previously filed an application in a
convention country]
[prior to the claim date]
[and claimed convention priority]
Qualified
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Grace period after disclosure by inventor
(a) more than one year before the filing date by
the applicant, or by a person who obtained
knowledge, directly or indirectly, from the
applicant, in such a manner that the subjectmatter became available to the public in Canada
or elsewhere;
Qualified
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Note that grace period is not adjusted for
international filing
Inventor has one year from disclosure to file in
Canada
 Many systems do not have a grace period
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Do not count on it
Old Act – Pre-1993
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First-to-invent
Distinction between paper disclosure and use
Prior use outside Canada irrelevant
Two year grace period
For paper disclosure anywhere in the world
 For prior use in Canada
 Ie. First-to-invent could obtain patent so long as
filed within 2 years of disclosure by anyone
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What must be disclosed
What must be disclosed
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Prior use , prior sale, prior publication, all had
separate statutory bases at one time
Now simply “disclosed in such a manner that
the subject matter became available to the
public”
Old Law
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Prior to 1996 distinguish
Paper anticipation
 Prior use
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Old Law
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Paper Anticipation
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The prior disclosure is only by means of a
publication, ie the thing itself was never produced
The disclosure in the publication must be equal
to the patent disclosure
Old Law
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Prior Use
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Infringement after = anticipation prior
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Where the thing itself is disclosed the rule is:
Anything which would have infringed will be
sufficient to anticipate
It does not matter if it would have been difficult
to reverse engineer to discover the invention, or
that it never in fact was reverse engineered
Current Law:
Enabling Disclosure
Enabling Disclosure
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Disclose
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In order to anticipate invention, prior art must:
AND
Enable
Disclosure
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Must disclose the very thing that is claimed
A signpost, however, clear, upon the road to 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.
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Sachs LJ, General Tire v Firestone Tire
Disclosure
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The requirements that must be met before an
invention should be held to have been
anticipated by a prior publication must, for the
purposes of practical utility, be equal to that
given by the subsequent patent. . . . It is not
enough to prove that an apparatus described in
it could have been used to produce a particular
result. There must be clear directions so to use
it.
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Thorson P. The King v. Uhlemann Optical Co.
Disclosure
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Nor is it sufficient to show that it contained
suggestions which, taken with other suggestions,
might be shown to foreshadow the invention or
important steps in it. There must be more than
the nucleus of an idea which, in the light of
subsequent experience, could be looked on as
being the beginning of a new development.
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Thorson P. The King v. Uhlemann Optical Co.
Enablement
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Must provide sufficient information for a person
skilled in the art to be able to arrive at the
invention that has been disclosed
Enablement means that the ordinary skilled
person would have been able to perform the
invention which satisfies the requirement of
disclosure.
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Synthon
Enablement
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Some trial and error is permitted at the
enablement stage
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Contrast disclosure which requires the flag to be
planted at the precise location
E.g. Invention claims chemical compound
which was previously sold in the open market
Disclosure is satisfied
 Enablement is satisfied IF skilled chemist can
‘reverse engineer’ the compound
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Enablement
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The prior patent must provide enough
information to allow the subsequently claimed
invention to be performed without undue
burden. . . . If inventive steps are required, the
prior art will not be considered as enabling.
However, routine trials are acceptable and would
not be considered undue burden
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Sanofi
Enabling Disclosure
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No longer true that “Infringement after =
anticipation prior”
If the use did not enable a person skilled in the art to
perform
 Infringement after
 But not anticipating before
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Rationale
 An
invention is a piece of
information. Making matter available to the
public within the meaning of section 2(2)
therefore requires the communication of
information. The use of a product makes the
invention part of the state of the art only so far
as that use makes available the necessary
information.
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Merrell Dow v Norton HL, per Lord Hoffmann
Rationale
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Old approach viewed an invention as a thing
New approach views invention as information
Difference is important only when disclosure of
the thing is not equivalent to disclosure of the
information
Example
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Same chemical as claimed in patent was sold on
the open market and
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(1) Formula / method of manufacture is not
publically known and cannot be determined from
the chemical itself
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Not enabling
(2) Formula can be determined from compound
itself by skilled chemist using standard techniques
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Enabling
Merrell Dow v Norton
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Merrell Dow held expired patent on terfenadine.
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Then discovered active metabolite and patented
that.
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Anti-histamine
Active metabolite is inevitably made when
terfenadine is swallowed.
Norton sells terfenadine.
Is patent on active metabolite is invalid as
anticipated by prior use or terfenadine patent?
Merrell Dow v Norton
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No anticipation by use
When terfenadine swallowed by end-consumers.
 Who then make active metabolite
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Not anticipated on this basis:
Use disclosed “no information to the public about
the nature of the product or how to make it.”
 Recall: “the product” = active metabolite
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Merrell Dow v Norton
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Anticipation by terfenadine patent
Disclosed = Yes
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“In this case, knowledge of the acid metabolite was
in my view made available to the public by the
terfenadine specification under the description "a
part of the chemical reaction in the human body
produced by the ingestion of terfenadine and having
an anti-histamine effect".”
Merrell Dow v Norton
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Anticipation by terfenadine patent
Enabled = Yes
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Anyone would know who to make the active
metabolite – by swallowing terfenadine
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(Note: for the purposes of the litigation, patent was
construed to claim only active metabolite in the human
body)
Apotex v Sanofi-Synthelabo
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Selection patent = ‘777 clopidogrel bisulfate
Genus = ‘875 – large class of compounds,
encompassing clopidogrel bisulfate
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Claim specifies a class of free bases, including
clopidogrel, and pharmaceutically acceptable salts,
which include the bisulfate: total # in class =
approx. 250,000
Apotex v Sanofi-Synthelabo
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Sanofi holds
Enabling disclosure approach to anticipation from
Synthon is correct
 Selection patents are valid in principle
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Apotex v Sanofi-Synthelabo
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On the facts – No disclosure in prior art
 “If in reading the genus patent the special
advantages of the invention of the selection
patent are not disclosed, the genus patent
does not anticipate the selection patent.”
Apotex v Sanofi-Synthelabo
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On the facts – No enablement in prior art (obiter)
 For anticipation, the genus patent must provide
enough information so as to allow the selected
invention to be performed without undue burden.
In this case, the applications judge concluded that
the ‘875 patent did not specifically lead to the
claimed invention. He noted, on the record before
him, that if one were to follow the teachings of the
prior art, one would obtain racemates, never their
isomers.
Apotex v Sanofi-Synthelabo
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Discovering the special properties of the enantiomer of
clopidogrel bisulfate was undue, whether or not it was
inventive (non-obvious)
 In determining whether the enablement step for
proving anticipation has been met, it is important to
note that routine trials are acceptable but inventive
steps are not permitted.
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Court ultimately concluded that it was in fact
non-obvious
Available to the “public”
Public
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The inventor can disclose to others so long as
the disclosure is confidential
Eg to raise money
 Saunders Airglide
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Grace period does not run because there is no
disclosure in the relevant sense
Public
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Disclosure is made to the public so long as the
use is not secret
There is no requirement that the use be actively
publicized
 Windsurfer cases
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Public
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Disclosure to any public anywhere in the world
“or elsewhere” s28.2
 E.g. use in India anticipates invention in US
(Turmeric)
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Windsurfer cases
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Why is isolated prior use a bar to patentability?