Table of Contents
POLICY, BACKGROUND AND OVERVIEW
1
VALIDITY
2
Statutory Subject Matter
2
Utility
3
Sufficiency of Specification
5
Novelty
6
Obviousness
6
Critical Dates for Validity
7
Other Grounds of Invalidity – Presumptions, Requirements, Fraud, Double Patent
8
SPECIALIZED FIELDS OF PATENT PROTECTION
9
Biotech and Pharmaceutical Patents
9
Computer-Related Inventions and Business Methods
9
CLAIM CONSTRUCTION
11
INFRINGEMENT, REMEDIES AND DEFENCES
12
Infringement
12
Remedies
12
Defences
13
Critical Dates for Infringement
13
US PRACTICE
13
LICENSING OF PATENTS
15
Random:
16
University of Victoria Faculty of Law
i
Policy, Background and Overview
•
•
•
Policy: Social contract of the patent system: inventors get a monopoly (s. 42) for a period of time
(s. 44), and in turn give their knowledge to the public in a reproducible manner:
o Quote: The specification of an invention must
(PA s. 27(3))
 (a) correctly and fully describe the invention and its operation or use …
 (b) set out clearly the various steps … in such full, clear, concise and exact terms as to
enable any person skilled in the art … to make, construct, compound or use it;
 (c) in the case of a machine, explain the principle of the machine and the best mode in
which the inventor has contemplated the application of that principle; and
 (d) in the case of a process, explain the necessary sequence, if any, of the various steps, so
as to distinguish the invention from other inventions.
o Quote: The specification must end with … claims defining distinctly and in explicit terms the
subject-matter of the invention for which an exclusive privilege … is claimed.
(PA s. 27(4))
Requirements and grounds for invalidity of a patent:
o Novel: The invention can’t be previously disclosed (unless by inventor – special rules) (PA s. 28.2)
o Non-obvious: An objective inquiry taking place on the claim date
(PA s. 28.3)
 Prof.: Takes place on the claim date to avoid hindsight analysis. Low standard to meet.
o Utility: The claims achieve the desired result (described in the patent spec.) (PA s. 2 “invention”)
 Reproducibility is a factor here. Perhaps why professional skills are not patentable? (Lawson)
o Sufficiency: Must disclose enough for those skilled in the art to reproduce it
(PA s. 27(3)(b))
o Best Mode: The inventor must disclose the preferred method of use of a machine (PA s. 27(3)(c))
o Ambiguity: This ground of attack almost never succeeds, but it is provided for
(PA s. 27(4))
o Material Allegation: This provision has never been successfully plead – Even where two
people stole an invention and patented it, the court refused to apply it, instead choosing to allow
the inventorship to be corrected (i.e. replace the applicants with the real inventors) (PA s. 53(1))
Term of Patent Protection: For patent applications filed after 1 Oct 1989 (which is all active
patents, now), the term of protection is 20 years
(PA s. 44)
o If maintenance fees are not paid, it may expire early.
(PA s. 46)
1
Validity
•
•
•
•
Presumption of Validity: The onus is on the party alleging invalidity to show invalidity (PA s. 43(2))
Need to Address Each and Every Claim: The invalidity of one claim does not affect another(PA s. 58)
The first step of validity analysis is construing the claims. See Claim Construction, p. 11.
A valid patent is “an invention” that has utility, provides sufficient disclosure, and is novel and nonobvious.
Statutory Subject Matter
•
•
•
•
The PA allows patents to be granted for “inventions”, which is defined to mean “any new and
useful art, process, machine, manufacture or composition of matter” (exhaustive list)
(PA s. 2)
o The claims must be examined as a whole, using purposive construction. You cannot break the
claims into sections in a form and substance or contribution approach as suggested by Patent
Commissioner.
(Amazon)
o This list is exhaustive, and isn’t so broad as to include everything created by man(Harvard Mouse)
o The commissioner has no power to add exclusions as a matter of policy (Amazon) nor discretion
to refuse a patent for public policy grounds (Harvard Mouse and s.40 – Commissioner can
reject for reasons of law)
Art: This has multiple definitions.
o Art includes both process or art (and methods fall under art)
o The narrow definition of art from Lawson (act performed by physical agent upon physical
object to produce change in character or condition) was broadened in Shell Oil and Progressive
Gaming.
(Amazon)
o There is a three-test for determining if something is “art”:
 1. It is not a disembodied idea but has a method of practical application;
 The FC held that a claim cannot be a mere idea, or discovery, but there must be a
practical application. It is not necessary for the material objects in question to physically
change into another thing, like the Manipulation of Cards in Progress Games. A change
in of information stored in a computer would constitute a practical application.
 The FCA held that a practical application is not sufficient, there must be something with
physical existence, or something that manifests a discernible effect or change. A mere
change of information in a computer would not be sufficient – would need some sort of
output step that results in a discernible effect or change.
 2. It is a new and inventive method of applying skill or knowledge.
 3. It has a commercially useful result.
o Business Methods are not excluded as patentable subject matter, and there is no technological
requirement to gain a patent.
(Amazon FCA)
o New uses of an old compound are valid subject matter (s.2), as an art.
(Shell Oil)
Manufacture: "a non-living mechanistic product or process"
(Harvard Mouse)
o A higher life form is not a manufacture within the meaning of the PA
(Harvard Mouse)
Composition of Matter: Composition requires an inventor to have added or mixed ingredients. (HM)
o Cannot mean all matter, or else rest of SSM would become redundant.
o A higher life form is not a composition of matter because the life form is not composed of
ingredients combined or mixed by a maker.
(HM)
o Matter is a physical or corporeal substance, different than an immaterial or incorporate
substance (spirit, soul, mind).
o The oncomouse cells were patentable subject matter though, and they give protection to the
whole mouse in light of Monsanto.
o Lower life forms (microorganisms, identical mass-produced life) may be patentable
(Abitibi)
2
•
•
o A Fertilized Mouse Egg is patentable subject matter.
(HM)
Exclusions
o Methods of medical treatment are excluded subject matter. SEE PHARMA (Tennessee Eastman)
o S.27(8) holds that no patent shall be granted for any mere scientific principle or abstract
theorem.
 If the claimed method has a field of practical application, then it does not violate s.27(8) (TE, Obiter)
Microscopic vs. Macroscopic Claims: A microscopic claim (e.g. of a plant gene) can impose a
macroscopic restriction (e.g. on the plant). Macroscopic acts infringe microscopic claims. (Monsanto)
Utility
•
•
•
•
•
•
“invention” means any new and useful art, process, machine, manufacture or composition of matter(s.2)
An invention is "not useful" if the claims encompass something that does not work, which means
o Either it does nothing (general utility)
o Or a it fails to do what the specification promises (promised utility)
(Consolboard)
 See below for this requirement.
o Utility is assessed claim by claim – each clam must deliver a promised specification
(Amfac)
o Practical usefulness, commercial utility, or public benefit is not required, unless one is
promised. The invention does not have be an improvement over the prior art.
(Consolboard)
The law is unsettled where a claim contains a non-useful element:
o Narrow View - Where the scope of a claim includes some element which is useless the claim is
invalid for lack of utility, even if a PSITA would know not to use the invalid element.(Mineral Separation)
 This view has never been overruled, but the FC seemingly backed away from it in P&G.
 Ex: 2 Types of Xanthate claimed, one does not work = not-useful.
o Broad View - A claim is not invalid merely because it encompasses a non-useful embodiment.
There must be something in the patent positively pointing towards the useless element. (P& Gamble)
 Ex: Claims encompassed range of options for amount of chemical, including values that
would not work, but none were specified. The claims did not positively point to the useless
elements.
 Perhaps they can be reconciled because in MS, only type of Xanthate that was known was
one that did not work. Therefore, patent positively pointed towards non-working xanthate.
 For exam: note that P and G is more often followed, but because MS lurks in the
background, you will apply both.
Promised Utility – The law is unsettled on what constitutes a promise of utility.
o Amfac represents the onerous view that an object of the invention clause constitutes a specific
promise of utility, and so every claim must fulfill that object or that particular claim is not
useful
(Amfac)
 Ex: “Primary objective” is to produce fires with edges cut off. Claim 16 did not remove the
edges, so it is invalid for lack of promised utility.
o Mylan states that an object clause should not always be construed as a promise of the invention.(Mylan)
Toxicity not critical to utility in patent law sense. The thing only needs to work
(AZT)
Although normally the specification does not have to prove utility (Consolboard), in some cases the
specification must demonstrate the utility or provide a sound prediction of utility. IF IT DOES
NOT, IT is invalid for lack of utility.
o In AZT, the court held that where a new use of an old compound is the gravamen of the
invention, then utility must be demonstrated or a sound prediction must be made.
o However, Pfizer v Apotex held that this doctrine could apply equally to new compounds.
3
o Furthermore, in Eurocopter the demonstrated utility or sound predication requirement was
applied to a mechanical invention.
o Therefore, it is not entirely clear when demonstrated utility or a sound prediction is required.
Piecing these cases together, it appears that there is no need to demonstrate utility where utility
is self-evident, like when dealing with predictable arts. However, when dealing with
unpredictable arts without self-evident utility, like compounds interacting with the human body
or unorthodox-designed machines like in Eurocopter, then utility must be demonstrated or a
sound predication must be made.
o Application: Based on the facts at case, this art appears to be predictable/unpredictable, and
so the Consolboard standard of not proving utility will be applied. Or, this is unpredictable, and
so utility must be demonstrated or a sound prediction must have been made:
o Sound Prediction requires:
(AZT)
 A factual basis for the prediction
 An articulable and sound line of reasoning from which the desired result can be inferred
from the factual basis; and
 A proper disclosure
 The soundness of the predication is a question of fact that requires evidence to be led about
what was known at the priority date. Even if the patent later proved to have utility, if a
sound prediction was not made at the priority date, the patent fails for utility.
(AZT)
 Concern over floodgates, but has never been an issue in the US due to patent costs.
 Example – Sound prediction met for ATZ when in vitro clinical trials performed, but sound
prediction would not have been met if it was only tested in mice.
4
Sufficiency of Specification
•
•
•
•
•
S.27 holds that the patent’s specification must sufficiently disclose the invention to enable a person
skilled in the art to make/use/etc. the invention.
A sufficient disclosure fulfills the patentee’s side of the bargain in exchange for a term of
monopoly. The specification does not normally have to disclose utility.
(Consolboard)
Sufficiency is now considered on the whole of the patent, not claim by claim like every other
country. Failure to sufficiently disclose one of the claims invalidates the entire patent.
(Teva)
The law is unsettled on what constitutes sufficient disclosure:
o P&G holds that a disclosure is sufficient as long as it enables a POSITA to make/use the
invention without requiring new inventive ingenuity, even if the POSITA has to perform routine
trials and experiments not amounting to new inventions along the way.
 This is a qualitative standard. The amount of work does not matter, only if inventive
ingenuity is required.
o However, the SCC recently held in Teva that a patent requiring the PSITA to perform a “minor
research project” to determine what the true invention is invalid because of insufficient
disclosure. It is unclear if a “minor research project” would include things that would amount to
less than an inventive step, however, in the case having to perform a relatively routine test on
two chemicals (which did not appear to be inventive) to determine which one worked was
found to be constitute a minor research project.
 The two cases could be possibly reconciled if the 2-element part of test for disclosure for
anticipation discussed in Sanofi was applied to sufficiency of disclosure here. Perhaps
Pfizer holds that for discovering the actual invention, there can be no experimentation, as
was the case in Sanofi. P & G would then apply to the enablement part of disclosure, which
allows for experiments short of inventive steps for enabling a PSITA to make or use the
invention. Views this way, P & G and Teva do not contradict each other.
"Best Mode": For machines only, the best mode of implementation (as known to the inventor at
the time) must be disclosed (and not just a mode of implementation)
(PA s. 27(3)(c))
5
Novelty
•
An invention must be novel (s.2 - i.e. not anticipated), meaning that is has not been previously
disclosed in a manner to make the subject matter available to the public:
o By the applicant (or someone through the applicant) up to one year before filing date (s.28.2(a))
 Filing date = date filed in Canada, or the PCT filing date
o By another party before the claim date
(s.28.2(b))
 Claim date = date filed if file first in CA, or foreign file date if file in CA <12 months
o By another party’s CA co-pending application with an earlier file or priority date than the claim
date of the subject application, but a later publication date.
(s.28.2(c,d))
•
Anticipation is met if the invention is disclosed, either by a single prior publication or the prior use
of a product, and if the disclosure enables a PSITA to make / use the invention.
(Sanofi)
o Disclosure by Publication requires:
(Beloit aff’d Free World Trust)
 A prior, single, publication
 That contains all the information that is needed to produce the claimed invention without the
exercise of any inventive skill.
 That is so clear a direction that a skilled person reading and following it would in every case
and without the possibility of error be led to the claimed invention.
 There is no room for experiments or errors or reference to external documents.
(Sanofi)
o Enablement is met if a person skilled in the art can make or perform the invention without
undue burden. (Sanofi)
 Routine trials are acceptable; however, prolonged or arduous trial and error constitute undue
burden. Hence there is both a qualitative and quantitative aspect to consider.
(Sanofi)
o Prior use - The sale or use of a product to the public amounts to an enabling disclosure (and
hence the patent is anticipated) if:
(Canwell)
 The public, which can constitute one person who is free in law and equity to do what she
wants, is sold or can use the product unconditionally, AND
 Note that there can be explicit and implicit confidentiality agreements, like when
dealing with prototypes
(Corlac)
 A PSITA, in accordance with known and analytical skills at the time of sale or use, can
analyze (reverse engineer) the product, without resulting to using inventive skill, and
discover the elements of the claims.
 It does not matter that the product was actually analyzed, only that the invention was
capable of being discovered through the analyzing.
 Nor does it matter how much time or work it takes a skilled person to discover the
invention, only that no inventive skill was required
 (muddied in Sanofi – enablement cannot require such prolonged or arduous trials to
make it non-routine)
 It is also not necessary that the product itself is capable of exact reproduction, only that the
elements of the claim are disclosed through the analysis.
Obviousness
•
•
Subject-matter must not have been obvious on the claim date to a person skilled in the art (PA s. 28.3)
o Prior Art: Includes all information disclosed more than one year before the filing date by the
applicant (or a proxy), and all information disclosed before the claim date by anyone else such
that the information had become “available to the public” in Canada/elsewhere
(PA 28.3)
The test for obvious is:
(Windsurfing, aff’d Sanofi)
o 1. Identify the notional person skilled in the art (what do they do?) and their relevant common
6
•
general knowledge (what do they know?)
o 2. Identify the inventive concept of the claim in question (or construe it, if necessary)
 The inventive concept must include at least all of the inventive objects, but can also include
additional information from the specification as to why they are inventive
(Bridge View)
o 3. Identify the differences between the "state of the art" and the inventive concept of the claim.
o 4. Do these differences constitute steps that would have been obvious to the person skilled in
the art (without any knowledge of claimed invention), or do they require any degree of
invention?
 Even if each individual element is known, the combination of the elements may still be
unobvious
(Corlac)
Obvious to try:
(Sanofi)
o In areas where advances are often won by experimentation, an inventive step may not have been
obvious per se, but it may have been obvious to try. Factors for obvious to try include:
 Is it more or less self-evident that what is being tried ought to work? Were finite number of
identified predictable solutions were known to persons skilled in the art?
 Like 5 options, so you’d try each.
 What are the extent, nature and amount of effort required to achieve the invention? Does it
require routine trials or non-routine prolonged and arduous trials?
 Is there a motive provided in the prior art to find the solution the patent addresses?
Critical Dates for Validity
•
s. 28.2 = novelty
s. 28.3 = obviousness
•
•
Claim date: The earliest of the following two dates:
(PA s. 28.1)
o Regular: The date that the application was filed with CIPO
o Convention Priority: The date that the application was filed in a Convention country
 Usually this must be no more than 12 months before Canadian filing
Filing date: The date that the application was filed with CIPO
Critical Dates for each Type of Prior Art: To be included in the prior art, require the following:
o Public disclosures by the applicant: The publication date of the disclosure must be more than
one year before the filing date of the application.
(PA ss. 28.2(1)(a), 28.3(a))
o Public disclosures by others: The publication date of the disclosure must be prior to the claim
date of the application.
(PA ss. 28.2(1)(b), 28.3(b))
o Co-pending Canadian patent applications of others:
 The filing date of the copending application must be prior to your claim date(PA s. 28.2(1)(c))
 The claim date of the copending application must be prior to your claim date(PA s. 28.3(1)(d))
 nb – as a practical matter, this is only relevant if the publication date is be after your claim
date (otherwise they would fall under “Public disclosures by others”)
7
Other Grounds of Invalidity – Presumptions, Requirements, Fraud, Double Patent
•
•
•
•
•
•
•
•
•
•
Presumption of Validity: The onus is on the party alleging invalidity to show invalidity (PA s. 43(2))
Need to Address Each and Every Claim: The invalidity of one claim does not affect another(PA s. 58)
MATERIAL ALLEGATIONS AND BAD FAITH
Section 53(1) holds a patent is void if any material allegation in a patent’s application petition is
untrue, or if the specification and drawings contain more or less than is necessary for obtaining the
end for which they purport to be made, and the omission or addition is wilfully made for the
purpose of misleading.
o Test for s.53:
(Corlac v Weatherford)
 1. Is the petition untrue?
 Must list the inventors - Inventor is one who came up with the inventive concept and
reduced it to a definite and practical shape
 2. Is the untrue thing material?
 What constitutes a material allegation is fact specific.
 3. Was the omission or addition willfully made for the purpose of misleading?
 Corlac alluded to that it is an open debate if this requirement be met, but the SCC in
Apotex affirmed the requirement.
o The relevant date for s.53 is the date of issue; changes can be made while the patent is pending.
o Section 27(3) is a separate requirement from s.53(1)
(Teva v Pfizer)
Section 73(1)(a) holds that an application for a patent in Canada shall be deemed to be abandoned
if the applicant does not reply in good faith to any requisition made by an examiner in connection
with an examination, within six months after the requisition is made or within any shorter period
established by the Commissioner;
o This good faith requirement only applies to a patent application response. Once the patent is
granted, the section cannot apply, despite the holdings of Lundbeck Canada etc..
(Corlac)
Ambiguity – Section 27(4) holds the claims must define the invention distinctly and in explicit
terms, and so, in theory, if the claims are ambiguous the patent is void. However, this ground is
very unlikely to succeed as courts construe the claims with a mind willing to understand(Almecon v Nutron)
o A claim may be ambiguous if:
 The meaning would not be clear to a person skilled in the art
 It is impossible to say with certainty which of several suggested constructions of a patent is
the correct one
Double Patenting
Section 36 holds that “a” patent is granted for “one invention only”. An application that describes
more than one invention may be narrowed or be split into two patents. This is a procedural matter,
not meant invalidate a patent. Interpretation acts hold that singular can mean plural.
Nevertheless, s.36 has been the basis for the “double-patenting” prohibition. Double patenting
holds the claims of a later-issued patent cannot be identical or an obvious variant of the claims of
earlier-issued patent.
o However, obviousness is assessed according to what is known at the issue date of the patent,
rather than the file date for a normal obvious inquiry. Therefore, the prohibition against doublepatenting can lead to odd results, such in Whirlpool where a later-issued patent was nonobvious at file date, but became obvious due to the patentee’s disclosure before issue date.
A safe harbor for double patenting is Consolboard, which holds that if patents are granted on
divisional applications directed by the Patent Office they cannot be deemed invalid or open to
attack by reason only of the grant of the original patent.
8
Specialized Fields of Patent Protection
Biotech and Pharmaceutical Patents
•
•
•
•
•
•
•
•
•
Biotech:
Patents can claim a gene, a tool for handing the gene, the cell itself, and the method of producing
the cell, but they cannot claim a higher life form on the macroscopic scale.
(Harvard Mouse)
o However, use of the macroscopic organism that is composed of patented microscopic elements
can constitute infringement of the microscopic elements.
(Monsanto)
Patent office held “totipotent” stem cells cannot be patented because they could become a higher
life form; however, all of the judges in Harvard Mouse held that a fertilized egg, which could
obviously become a higher life form, could constitute patentable subject matter. Therefore, the
patent office must be wrong.
o Pluripotent stem cells can be patented, as they cannot form an embryo.
o Seeds are also not patentable because they will grow into a higher life form; however, they can
also be compared to a fertilized mouse.
o What could seeds be? Composition of Matter if inventor does the combining.
Pharma:
A new use of a known compound is patentable.
(AZT)
However, one cannot patent a method of medical treatment
(Tennessee Eastmann)
o This exclusion was introduced to prevent patentees from circumscribing s.41, which held you
couldn’t claim a medicine or food itself. However, even though s.41 was repealed, the exclusion
still stands.
o This exception is not violated if the claims are limited to a simple form, like a claim use for
manufacture of a medication or a claim use for treatment of a disease, without detailed steps.
These claims are restricted to claiming the commercial offering, rather than seeking to fence in
an area of medical treatment.
Claiming a dosage regime that leaves it up to a doctor to determine how much to administer is a
claim to a method of medical treatment. However, a claim to a certain sized pill is okay because it
is again targeted at a commercial usage, not a method of medical treatment.
Professional Skills
o Professional skills are not patentable because claims that contain non-reproducible intuition or
gut-feelings are simply not “useful” due to their reliance upon subjective interpretive or
judgmental considerations.
(Lawson)
o However, if the claimed steps are reproducible, in the sense that its methods are clearly defined
and precise, and for example, can be performed by a machine or computer program, then the
claim should not be considered a professional skill and should be considered patentable.
 Here, the CLAIM is reproducible and could be performed by a machine/software, so it
should not be considered a professional skill.
o Given that the section the prohibition against medical treatments has been removed, it may
make sense to incorporate the methods of medical treatment exclusion into the professional
skills exclusion. Methods of medical treatment that require intuition and gut-feeling would still
be prohibited because they are Professional Skills; however, if a method is reproducible,
especially by a machine or computer, than it should be allowed.
Merryl Dow – Traditional knowledge does not generally fit within the patent act.
Computer-Related Inventions and Business Methods
•
•
No Distillation: Even if the component of the invention that makes it new and non-obvious is nonstatutory subject-matter, the patent itself isn’t necessarily non-statutory subject matter
(Amazon)
Business methods can qualify as art/process.
(Amazon)
9
•
•
•
•
GO to definition of ART and work through.
Example: Invention is a business method (Amazon's "one-click" purchasing). Patentable
(Amazon)
Example: Invention is software that analyzes data from oil/gas boreholes. Take measurements,
stores them on magnetic tape and applies mathematical formulae which transforms them into userfriendly representations. Not patentable – just an application of formulae.
(Schlumberger)
o Prof: This is a 30-year-old, bad decision. Almost no statutory cites, unclear ratio. Essentially, it
has been confined to its facts – it is often-cited, but never applied. It may have been better
solved as failing to qualify as art because it failed to manifest a discernible change or effect. Do
not rely on this case.
Tips on protecting computerized inventions / drafting claims
o Always want a claim to target a single party.
 Split complex claims into separate claims.
 If two parties are named in a claim, to sue one party you must prove that part is controlled
the second, or had specific intent to induce the second party.
(Bauer)
o Method Claims generally target the end user – person who install and use
 Don’t normally want to target end user – low $, possible customer
o Apparatus Claims target the vendor or the manufacturer
 If the software is installed on the apparatus at time of selling or making
o Computer-readable medium claims target the seller of infringing software.
 However, the software must be contained on a computer readable medium (like a CD), in
Canada.
 A server can also constitute a computer readable medium. Therefore, the owner of a server
in Canada from which people download infringing software “uses” a computer-readable
medium, and is liable.
 If the server is outside of Canada, the owner did not “use” the server inside of Canada, and
hence is not liable. Though he may have used a signal, signals are not patentable anymore
according to CIPO, a holding yet to be challenged in court.
 Cannot draft “non-functional” CRM claims, like a song.
10
Claim Construction
•
•
•
Claims must be construed using purposive construction for both infringement or validity purposes .(Whirlpool)
The basic principles governing construction are:
(Free World Trust, aff’d Whirlpool)
o The PA promotes adherence to the language of the claims (which promotes fairness/certainty)
o The claim language must be read in an informed and purposive manner
o The language of the claims defines the monopoly (no "spirit of the invention" to be found)
o A purposive construction of the claims will show that some elements are essential and others by
either the material effects principle or the claims language primacy principle:
 The Material Effects principle holds that an element will not be essential where it is
obvious to a person skilled in the art at the publication date that the substitution of the
element for any variant, i.e. not just the infringing variant, would perform substantially the
same function in substantially the same way to achieve substantially the same result.
 However, even if the element has no material effect, the Claim Language Primacy
Principle holds that the element is essential unless it was obvious for a person skilled in the
art, based on the specification and not extrinsic evidence, that the inventor intended the
element to be non-essential.
 Note that the patent must be read with a mind willing to understand.
Notes
o Claim Differentiation Principle - If one claim differs from another in only a single feature, the
feature is essential.
(Whirlpool)
o Purposive construction can narrow or limit claims
(Whirlpool)
o Dictionary definitions can help, but terms must ultimately be interpreted in light of the entire
specification
o The disclosure can aid in interpretation, but you cannot import words into the claims.
o Claim construction is a matter of law for the judge to decide (standard of correctness).
o There is a presumption of essentiality unless it is rebutted.
(Corlac)
11
Infringement, Remedies and Defences
Infringement
•
•
•
•
•
•
•
•
The relevant sections of the PA are ss. 54-58 (define jurisdiction, liability, etc.)
(PA ss. 54-58)
o Can bring action for infringement in provincial court (s.54(1)). However, normally one would
go to Federal Court (s.54(2)) as only they can invalidate a patent (s.60(1)) and give an order
enforceable across Canada.
The first step of infringement analysis is construing the claims. See Claim Construction, p. 11.
Once the claims are construed, it becomes a factual inquiry: Was there infringement?
(Whirlpool)
The PA grants patentees “the exclusive right, privilege and liberty of making, constructing and
using the invention and selling it to others to be used”
(PA s. 42)
o Essential Elements: "If the accused device takes all of the essential elements of the invention,
there is infringement." (nb – if ∆ didn’t make it, need to show “use” as well) (Free World Trust)
 There is no infringement if an essential element is different or omitted. (Free World Trust)
 There may still be infringement if non-essential elements are substituted or omitted.
o Use: Has the inventor been deprived, in whole or in part, directly or indirectly, of the full
enjoyment of the monopoly conferred by the patent? Consider these principles:
(Monsanto)
 "Use" or "exploiter", in their ordinary dictionary meaning, denote utilization with a view to
production or advantage.
 All commercial benefits to be derived from the invention belong to the patent holder.
 Possession of a patented object or an object incorporating a patented feature may constitute
"use" of the object's stand-by or insurance utility and thus constitute infringement.
 Possession, in commercial circumstances, raises a rebuttable presumption of use of the
patent
 Intention is generally irrelevant to determining whether there has been "use", but the
absence of intention to employ or gain any advantage from the invention may be
relevant to rebutting this presumption of use.
 Stand by use – Even if you don’t actively use the patent, you can still have standby use
of the patent.
Components: Where a defendant's commercial or business activity involves a thing of which a
patented part is a significant or important component, infringement is established.
(Monsanto)
o This is an "expansive doctrine" – it doesn’t matter if the thing itself was patented or not.
Inducing Infringement: Inducing another to infringe is itself infringement
(Windsurfer)
o Example: π’s patent only claims a completed board; ∆ sells it unassembled and leaves
assembly to purchases. Infringement found; ∆ induced consumers’ infringement
(Windsurfer)
o Just having a potential of infringement is not enough – it must be the product’s only purpose
Improvements: Creating an improvement doesn’t grant rights to the underlying invention (and so
use/etc. of the improved invention may be infringement)
(PA s. 32)
Right to Sue: The owner of a patent has the right to sue; licensees can't sue unless the owner is a
co-plaintiff or confers the right to sue in the licence.
Remedies
•
•
After the Issue of the Patent - Infringer is liable for all damage sustained by the patentee
(s.55(1))
o Damages award to put the patentee in the position he would have been if the harm had not been
committed.
 Could include what he would from sales or a royalty (Monsanto)
o Punitive damages are also possible.
Before the Patent Issues, but after publication of the Patent – Infringer is liable to pay a
reasonable compensation to the patentee. (Publication = 18 months)
(s.55(2))
12
•
•
Alternatively, the patentee can elect for an accounting of profits instead
o An equitable remedy that the court can refuse (for example if patentee has unclean hands)
o How much D made with patented invention – how much D would have made = $$
Patentee can also seek injunctive relief
(s.57(1))
o However, also an equitable remedy.
o Difficult to receive a preliminary injunction as irreprepable harm is difficult to prove as one
must show that $ is not adaquete
o Once infringement is proved, patentee receives presumption of permanent injunction
Defences
•
•
•
•
•
Previous Purchaser: If you acquire a copy of an invention before its claim date, using that copy
and selling it are not infringements
(PA s. 56(1))
o Claim date = filing date, unless US filing date <1 year.
o If the patent’s filing date is in [1 Oct 1989, 1 Jan 1994), the critical date is publication(PA s. 56(3))
o If the patent’s filing date is prior to 1 Oct 1989, the critical date is the date of grant (PA s. 56(4))
Licence: Your licence may grant you the right to do what you're doing (read carefully!)
o Competition Act: If you're excluding others such that the market isn't being satisfied, others
may get compulsory licences.
Limitation Period: 6-year limitation period for liability for infringement.
(PA s. 55.01)
Invalidity: Any of the headings under Validity, p. 2, can be attacked.
(PA s. 59)
Declatory Relief – parties with correct standing can seek patent be declared invalid
(s.60)
Critical Dates for Infringement
•
•
•
•
Infringement Generally: Must be between date of grant and date of expiry or lapse
(PA s. 55(1))
o See Policy, Background and Overview, p. 1, for provisions on term, expiry and lapse
Limitation Period: 6-year limitation period for liability for infringement.
(PA s. 55.01)
Post-Publication but Pre-Grant Activities: Between publication date and issue date
(PA s. 55(2))
Prior acquisition defence (if patent issued on or after Oct. 1, 1996 on the basis of an application
filed on or after Oct. 1, 1989): Acquisition must be prior to the claim date.
(PA s. 56(1))
US Practice
•
•
Infringement:
The US has a two-step test to prove infringement (Canada rejected this in Whirlpool):
(Phillips)
o Literal infringement: Does it fall literally under the claims?
o Doctrine of Equivalence: Was the Pith and Marrow of the invention taken? Does it perform
substantially the same function in substantially the same way for substantially the same result?
 However, the patentee can be estopped from claiming equivalents based on Prosecution
History Estoppel. Any claim that is narrowed for a “substantial reason related to
patentability” during prosecution cannot later claim the broader equivalent, even if it wasn’t
narrowed to distinguish around prior art.
(Festo)
 This is a rebuttable presumption of a complete bar. The patentee can rebut this principle by
proving that the amendment cannot reasonably be viewed as surrendering a particular
equivalent:
 The equivalent was unforeseeable at the time of the application
 The rationale underlying the amendment bears no more than a tangential relation to the
equivalent in question
 The patentee could not reasonably have been expected to have described the
13
•
•
•
insubstantial substitute in question.
Claim Construction:
o Claim construction is purely an issue of law, and the claims can be construed by a judge alone
in a pre-trail Markman hearing. In Canada, claim construction is also an issue of law, but we
have no preliminary hearings.
(Phillips)
o Means plus Function Claims – When a claim is drafted in means terms, without the recital of
structure, material, or acts, it is construed specially under 35 USC 122 f.
 The claim covers the structure, material, or acts reverenced in the specification, and their
equivalents.
 35 USC 122 f is not used if the structure is specified.
 In Canada means claims are allowed, but there is no special construction.
Claim Construction Principles:
(Philips)
o The bedrock of claim construction is the claims define the invention. (same)
o Words of claims are generally given their ordinary and customary meaning according to a
PSITA at the filing date (in Canada = publication date)
o The ordinary meaning cannot be looked at in a vacuum, but in the context of the entire patent,
including the specification.
o Intrinsic Evidence is most reliable evidence
 Other words in the same claim give meaning to the surroundings words
 Claim Differentiation Principle – presence of a dependent claim that adds a particular
limitation gives rise to a presumption that the limitation in question is not present in the
independent claim
 The specification is always highly relevant and the best intrinsic evidence; however, never
import limitations from the written description into the claims
 Prosecution History is considered admissible intrinsic evidence in US (Not in Ca –
Whirlpool – intrinsic is limited to four corners of the patent)
o Extrinsic Evidence can be used for guidance
 Dictionaries, treatises, expert testimony
o If there is an ambiguity, the claims should be construed to preserve their validity
Inequitable Conduct:
o The patentee has a duty of candor and good faith in dealing with the Office to disclose all 1.
relevant information 2. material to patentability
(Rule 56)
o A finding of inequitable conduct now requires the claimant, not the patentee, to prove the two
separate elements, intent and materiality distinctly.
(Therasense)
 There is no sliding scale that would cause a finding of intent or materiality to make up for
the absence of the other element.
 Inequitable conduct will not be met if the failure to disclose was cause by negligence. The
intent requirement means the claimant must prove that the applicant knew of the
information, knew it was material, and made a deliberate decision to withhold it.
 Intent to deceive can only be inferred if it is the single most reasonable inference
possible based on the evidence. If there are multiple inferences possible, can’t infer
deceit.
 In cases of omissions, materiality is established only when “but-for” the omission, the
patent would not have been granted.
 All affirmative misrepresentations are material, regardless of effect on the patent.
o This doctrine of inequitable conduct was greatly reigned in in Therasense.
14
Prior cases treated innocent conduct as inequitable conduct
o The remedy grew from dismissal of an action to finding the patent void to finding an entire
patent family void.
o Canada: This doctrine has been rejected to date here, though Justice Hughes has tried to
incorporate it through s.53 and 73:
 PA s. 53: A patent is void if a material allegation in the application is untrue. This has never
been successfully invoked to invalidate a patent [even where there was fraud!]
 PA s. 73: A patent application is abandoned if an Examiner's requisition is not responded to
in good faith. [tried to differentiate good faith from bone fide, the old saying]
•
Statutory Subject Matter:
(Bilski)
o The "machine-or-transformation" test is not the sole test for patentability.
 It holds that a process is patentable if it is tied to a particular machine or apparatus or it
transforms a particular article into a different state or thing.
o Business methods are not necessarily unpatentable.
o Abstract ideas are not patentable; however, a practical application of an abstract idea can be
patented. Something is likely just an abstract idea if allowing the claim would wholly pre-empt
the mathematical formula and in practical effect would be a patent on the algorithm itself. The
invention must be considered as a whole, rather than dissecting the claims into old and new
elements. Merely limiting an abstract idea to one field of use, or adding token post solution
components will not make it patentable.
•
Best Mode: All claims must have a “best mode” described in the US.
Licensing of Patents
•
When granting a license, consider:
o If the license is exclusive or non-exclusive
 An exclusive license grants the exclusive right to the patentee to use the patent. While a
licensee may want this to prevent competition, the licensor will oppose it out of concern
over the licensee not sufficiently using the intellectual property, which would limit any sort
of variable profits.
o Assignable vs Non-assignable License Agreements
 An assignable license allows the licensee to assign (i.e. sell) the agreement to someone else.
These are typically opposed by licensor’s because the licensee could theoretically assign the
intellectual property to an unfavorable party, like a competitor.
 However, an unfavorable party could get around a non-assignable clause by simply
purchasing the majority of shares of the licensee corporation and use the intellectual
property. To prevent this, the licensor will desire a Change of Control Clause that holds that
the licensor can terminate the license if it opposes a change of control over the licensee’s
corporation.
o Sublicensing
 The licensor will likely oppose a clause that allows the licensee to sublicense the lease to
someone else. Rather than a full prohibition, the licensee may be able to negotiate specific
terms or durations where a sublicense is allowed, perhaps dependent on approval by the
licensor.
o Validity of the patent
 The license should deal with the possibility that the patent be held invalid at a later date, or
15

that it infringes upon another patent. The licensee will seek an unqualified warranty and
representation that states the patent is valid. The licensor will seek to qualify the warrant
and representation to hold the patent is valid based on the licensor’s actual knowledge at the
time of the license.
The licensee should also seek a warranty and representation that no allegations of
infringement or invalidity have been made, which could also be qualified based on the
licensor’s knowledge.
Random:
•
•
•
•
•
•
Other Statutory Regimes
o Drawing on other statutory regimes can prove useful if their language is very similar; however,
if the statutory language is different, like UK to CA SSM, the non-CA principles should not be
applied
(Amazon FC)
o Caution should be given to following British Decisions
(Tennessee Eastman)
Patentee can choose to give words specific meanings, but it must be clear
(Mineral Seperation)
Drafting Claims:
o Avoid object of the invention clauses – instead of saying “it is a primary objective of the
invention to achieve X” say “an illustrative embodiment can achieve advantage X”.
Selection Patents are valid if:
(Sanofi)
o There is a substantial advantage to be secured or disadvantage to be avoided by the use of the
selected members.
o The whole of the selected members (subject to "a few exceptions here and there") possess the
advantage in question.
o The selection is in respect of a quality of a special character peculiar to the selected group. If
further research revealed a small number of unselected compounds possessing the same
advantage, that would not invalidate the selection patent. However, if research showed that a
larger number of unselected compounds possessed the same advantage, the quality of the
compound claimed in the selection patent would not be of a special character.
In Canada, "specification" includes the claims. (In the US, the claims are excluded)
(PA s. 27(4))
The court will endeavour to give protection to whatever the patentee has in good faith invented;
they will apply a fair construction, balancing the interests of the public and inventor. (Consolboard)
16