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What is a Patent? .......................................................................................................................................... 3
What is an Invention? ................................................................................................................................... 8
Defining the 4 steps .................................................................................................................................. 9
NOVELITY ................................................................................................................................................ 13
Disclosure ................................................................................................................................................ 16
Step 2 Enabling Disclosure ...................................................................................................................... 18
OBVIOUSNESS ......................................................................................................................................... 19
Utility........................................................................................................................................................... 23
Computer related subject Matter ............................................................................................................... 31
Specification ................................................................................................................................................ 34
Scope of rights of a Patentee ...................................................................................................................... 38
Infringement of Patent ............................................................................................................................... 38
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What is a Patent?
Patent Summaries
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The word “patent” derives from the Latin verb patere which means “open”. a letter of
patent is an open letter addressed to the public, declaring that inventor/s has the
exclusive right to exploit and use the named invention in the letter for a fixed duration of
time.
A patent is also “government grant of the exclusive rights to make, use, and sell the
substance of a recent invention. The life of a patent is limited and only starts when the
patent document is issued by the government”
A patent holder has a right exclude others” from making use of the invention without the
consent for a limited period of time.” A patent is a negative, rather than a positive right.
There must be an exclusive and enforceable property right;
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A patent grant is currently limited for 20 years. it have to be granted before the time
period begins to run.
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A patent is a privilege not a right
4-Element of valid patent system
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A negative right
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Over an “invention;”[the right must pertain to an invention]
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For a delimited period of time.[20 years limit]
The exclusive right must be the predictable and transparent outcome of a set of legal
rules, prescriptions and process. it must be to a named holder either a person for
corporation
Andaman Patent
The Andaman’s granted exclusive legal privileges to their innovators and inventors.
The difference between the Andaman Regime and other well-known regimes
Andaman regime
Granted right to use
Construe information of public good
Was not made for the exploitation and
accumulation capital
Communal lifestyle and absence of rigorous
system of identification and evaluation of
invention
Ancient Geek Patent
Other well known regime
Grant exclusive proprietary interest on
patentee
Construe information as private property
Was made for the exploitation and
accumulation of capital
No communal life style and a system of
rigorous identification and evaluation of
invention
The ancient Sybarites,who were notorious for their pleasure seeking and luxurious life style gave
no proof that the Greeks had a patent regime.
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Granting an exemption from conscription and taxation, to inventors or innovators was definitely
part of the Greco-Roman custom; there was no legal enforceable right to these privileges.
"Kempt British Patent 1331"
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was a patent for a royal discretion granted to J. Kempt in 1331, the intention was to
promote local industries. Kemp was awarded for importing foreign technology into
Britain.
 Today such a patent would be an infringement of a patent .
 Kemp patent is an emblematic of the discredit regime of invention by importation rather
than by inspiration.
Tyrolean Patents, virca 1300-1400
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The Tyrolean grants on water technology as deployed in mining were grants made for the
discovery of mining well and ores.
 It is difficult to apply the word invention to the discovery of mining wells to other natural
resources.
Brunelleschi and Badalone A.D. 1421
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In 1941 a Florentine, Brunelleschi invented the sea craft- el Badalone.
He demanded for the exclusive use of invention which Florence yield to.
On June 18, 1421 a patent later was issues to Brunelleschi for a 3 years monopoly.
The patent letter failed to qualify as a legitimate patented the ground that it was an ad
hoc, one time grant
Venetian Patent Statute 1474
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The first real patent system was based on legislation enacted by the parliament of Venice
( 116 for , 10 against and 3 abstention)
 The law de limited the duration of patent (10 years)
 Define the scope of patentable subject matter.
 Provide for a system of examination of patent application
 Imposed a remedy for the infringement of patents
 Many inventors including Leonardo da Vinci obtained Venetian patent for the patent
office
 The Venetian law predated the Stuart Statute of Monopolies over 150 years.
Internationalization of Patents
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The decline of the Italian city-states led to the dispersal of Italian artisan’s across Western
Europe (following the discovery of a sea route to India and the persecution of the
innovators by the Vatican.
The Italian influence spread like a thread in all incipient patent systems of European.
The Statute of Monopolies
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A patent is a type of Monopoly
was developed to correct abuse
they raised price when created
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The Statutes of Monopolies were enacted in 1623
it was the first English language enactment to provide for the issuance of letter patent- an
open letter not seal.
 The Statue banned the patent on discoveries, laws of nature and other dubious
discoveries.
The Anti-patent Movement
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In the 19th Century the patent system in Europe and the US became enmeshed in the
bureaucratic bungling and litigiousness. The wave of laissez-faire economist led to the
demand for the abolition of patent system.
The pattern system was abolished in Prussia in 1863, in the Netherland in 1869, in Japan
in 1873. In the US, the lower house abolished in but the bill failed at senate by 3 votes.
The theories of patents: The Natural Law School:
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the labours of the mind and creations of the brain are as justly entitled to legal
protection as the labours of hand. This is a Lockean conception of IPRs.
an inventor has a natural right in his/her invention and society (the State),
a right granted in justice and fairness
the state has an obligation to recognize, protect and enforce that right.
there is a natural, human right to a patent
a right anchored in justice
Natural law- Subdivided into reward”/”natural property” schools
Natural law Justice theory
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Attained greatest height in the French Revolution
French Patent act of 1971 stipulated: Every novel idea whose realization or development
can be useful to society belongs primarily to him who conceived it, and it would be a
violation of the rights of man in their very essence if an industrial invention were not
regarded as the property of its creator.
 the age and the rights of the individuals was beginning to become important
The elements of the natural rights theory ;
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Patents are representations of property.
Property is a subject of exclusive ownership.
Patents are not governmental privileges but an inherent right of the inventor, independent
of state laws.
 Limitations on patent rights are infringements of human rights
 physical property and intangible property are the same in the context of patent
Limitation of the Natural rights theory :
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Patents are granted SUBJECT to the Patent Law. See s. 27 (1) of the Patent Act
Patent law places limitations on the patent grant. These include, duration of the patent, (s.
44); patentable subject matter, s. 22, 20 (17), 22; terms of use, s. 19 (2),
 compulsory licensing AND working of patents,
 Governmental use and takings, (S. 19 (1), etc a government privilege
Reward Theory is Based on the notion of Fairness
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An inventor has a natural right to be rewarded for adding value to society
the reward should be in the form of monopoly commensurate and with usefulness of
value added.
 Society is obligated under natural laws to grant the reward
 based on economic theory the value should be proportionate to the reward.
 It is a way of saying thank you
Limitation of Rewards Theory
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it presumes that property is a natural right rather that a creation of society.
this reward is given to intangible property in the form of exclusivity granted by a patent.
this exclusivity creates scarcity
the inventor owes debt to society such as schooling and the accumulation of ideas for
society.
reward for invention depends on commercial success eg, the fax machine was developed
in 1942 but it worked in 1980.
Economist are agnostic as to whether patent create constitute sufficient reward and the
proponent view is that patent are intended to reward and stimulate inventive activity.
The reward theory was developed in the case of:
Apotex v Wellcome
Facts: An action was brought the challenge the validity of the of a patent relating to a pharmaceutical
formula known as AZT
Patent-Induce/disclosure but-for theory
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Patent exist as an incentive for inventor[no patent would mean no invention]
derives a measure of validity from the specification requirement of patents, introduced by
the British Calico Printers Act of 1787.
Shortly after the enactment lord Mansfield in Liardet v. Johnson imported the
requirement of specificity.
Limits of inducement/disclosure theory:
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This theory fail to take into account invention driven by scientific curiosity or the market.
certain invention is a result to accident
it is not unusual for the same invention to occur to more than one person at the same
time.
Watt and Polzunov simultaneously invented the steam engine in England and Russia.
Most inventors apply for patent due to fear of other inventors would get to the patent
office before them and that someone else somewhere will create the same invention.
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 the limited monopoly granted will reduce the true worth of the invention.
The Contract theory
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A Patent is a contact between the inventor and the state
the most widely accepted theory in the patent system.
Section 27 of the patent Act
The specification is the consideration offered by the inventor in return for a limited
monopoly and the obligation of the state to use its power to protect the right of the
inventor.
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It supposes that there is bargaining power between the state and inventor and the state.
 A limited monopoly is given to the inventor for his secrete invention.
 the heart and soul of the contract is the disclosure
Flaws in the contract theory;
1. It is half-true that a person skilled in the art only need that disclosure to work the
invention. they often need the know-how to work the invention, there is no logical
obligation to include the know-how. the inventor discloses only enough to get the patentsome patent just teach enough to get the patent granted.
2. The alleged bargain between the inventor and society is often skewed in favour of
society. most disclosure disclosed as little as possible. each claim in a sentence sometime
the words are as difficult to understand. Teva Canada Limited v. Pfizer Canada Inc., et al
3. There is an increase in the number of corporate patent undercutting this argument that a
patent is between society and the inventor. patent are most time given to the employer on
the individual who invented it
The Prospect theory
Patent fall into 3 categories; Groundbreaking[work of a genius]; Add-on add to the work of a
genius; Sloppy inventions
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Edmund Kitch- a patent is the perform the function of a prospecting licence [what does
the patent actually do]
it understand the ground breaking invention
a patent is a licence to go hunt
the claim is open ended and perform the role of a prospective license
this theory justifies expansive claim and the 'spirit if invention', types of patent
Critic :
 The patent system does not require a finish invention
 can innovate with or without invention,
 it is based on economic assumption which are not verified
 empirical evidence does not support that theory
 reliance on the theory of commercial success for the invention for patentability is not
supported by patent law
 It is not predicative of whether a particular patent application will be approved or whether
that the patent will redeem its promise.
A general notion is that patent are necessary to encourage inventiveness,
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Free World v. Electro Sante.
What is an Invention?
Canadian law of patent seek to protect an invention. A patent is only available for an invention.
Invention captures the dual tension between the needs of society and the needs of the inventor.
Section 2 of the Canadian patent act defines and invention as any new and useful art, machine,
manufacture or composition matter, or any new and useful improvement in any art, process,
machine, manufacture of compositional or matter.
Section 2 of the patent Art provides that a person 'A commissioner of shall grant a patent to the
invention to the inventor or the inventor legal representative if an application or the patent of
Canada is filled in accordance with the act and all other requirements of insurance of a patent
under this act are is met.
PRF: There are gaps in the circle of an invention. section 2 is an attempt to define an invention.
not only the ground breaker is entitled to a patent , anyone who comes up with something new is
entitled. Use full is used to strike down inventions which would harm society and useful can be
based on moral implications or social disruptiveness of the invention.
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TRIPS, Article 27; “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.”
Based on section 2; A patent may only be granted for an invention should have the following 4
elements:
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the invention is new
the invention involved and inventive step
the invention is useful it works as predicted by the inventor
there is a debate as to there is a fourth criteria of whether the alleged invention is
excluded by the statutory exemption to grant.[ whether there should be a subject matter
test]
Subject matter test
Biogen v. Medeva; patentable subject matter claims
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Lord Hoffman question the issue of subject matter is a valid criterion for defining an invention
on the other hand Lord Mustill claims that there a cases where a valid question concerning the
patentability of a subject matter.
whether subject matter is statutory requires a 2 part step.
1) The invention falls within the statutory definition of invention by the Patent act and within
the class of subject matter identified by the class.
2) that the invention is not excluded but the operation of the common law interpretation and the
statutory principles
This broad definition of section 2 is left in the hand of the patent officer and the courts to work
out.
Section 20(7) of the patent Act impacts on the meaning of judicial intervention.
Section 20.7 says: Where any agreement for an assignment to the Minister of National Defence
under this Act has been made, the Minister of National Defence may submit an application for
patent for the invention to the Commissioner, with the request that it be examined for
patentability, and if the application is found allowable may, before the grant of any patent
thereon, certify to the Commissioner that, in the public interest, the particulars of the invention
and of the manner in which it is to be worked are to be kept secret.
Defining the 4 steps
1)The test of Novelty ( New)
The test of novelty is subject to section 2 of the patent act.
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the court must determine the states of the art as at the date of invention
the court must deter mine the date of invention, which is a question of fact established
verbally, in writing and by carrying out a process or by construction of the apparatus or
process.
after the date of invention is determined that court must place itself as far as possible
form a person skilled in the art.
This test is requires for patentability, utility is satisfied if the invention does what to the patent
promise to do.
If utility is cannot possible proved on the same day {eg a large class of chemical compound}
then the inventor can rely of sound prediction.
sound predication requires a factual basis for the prediction, based on information and science
available at the time of the prediction.
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2) The test of ingenuity: Inventive step
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the invention must possess sufficient skills and ingenuity
it is a subjective test the Germans call -wertuitel
the test of ingenuity is met when the skill and ingenuity could not have be obvious to the
person skilled in the art.
3) The test of utility- Usefulness
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The usefulness of a patent on contemporary patent law is restricted to whether the
invention perform as described or predicted by the inventor.
When it comes to the use it is irrelevant whether the invention is a nuisance, immoral or a
burden to society.
4) Patentability subject Matter.
Patentable Art
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Statue permissible category; Act, process, Machine, Manufacture, and composition of
matter.
"Art" should be used in connotation to 'the state of Art or 'the Prior Art'. it is; where a
desired result is having commercial value in a new and useful art.
Cases;
Lawson v Commissioner of Patents; [patentable art]
Fact: A patent application for a Champaign glass shape subdivision of land.
Decision; Application was denied the court stated that "
Reason; for an art or process to be patentable there must be some manual, chemical or physical
effect to transform or reduce the something to a different state or thing, court also stated that this
art belong to a professional field not a manual art or skill.
Re Dixon Application NO. 203
Facts; applicant sort patent for a test useful speech therapy, the method was used to improve the
voice of individuals
Decision: Appeal was dismissed
Reason; the text does not produce a functional effect in a mechanical device, nor does it serve a
mechanical purpose, and the apparatus of the human body is not a mechanical device in the
patent sense.
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Patentable Process
The Canadian common law link process to the vendible product and commercial or economic
value. The process must confer some advantage which is material in order to be patentable.
process is used interchangeable with Method in patent.
Tennessee Eastman Co. v Commissioner of Patent
Meaning of patent- use of a method the produces a useful result when applied to some physical
object or material and as " a particular method of operation in any manufacture.
Patentable Machine
A machine is an instrument or assemblage of parts for the transmission of force, energy or power
in a predictable manner, it can be very simple or very complex. Machines is a combination and
not an aggregate.
Patentable Manufacture
Manufacture denotes a mechanistic process or product. It is the making of something, living
mechanism may be a part of the manufacturing process.
President and fellows of Harvard college v Canada(commission of patent)
Defines a patent as the action or process of making by hand, making or article or material or by
the application or physical labour or mechanical power.
Patentable Composition of Matter
President and fellows of Harvard college v Canada(commission of patent)[ Harvard Oncomouse
case]:
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A composition of matter must be limited as not to include machine or manufacture, but
implies a combination or mixture of various ingredient and does not include a higher life
form whose genetic code had been altered by scientific manipulation.
 A patent can be granted to an old compound because there is inventive ingenuity in such
discovery, the claim must be direct to some new use and the new pattern does not grant
any rights over the claims of the old patent to the inventor.
Patentable Invention
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All new technological processes, machines, devices, articles, products and compositions
are, generally speaking, of inherently patentable nature.
 Section 27(1) of the Patent Act- A commissioner may 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 ACCORDANCE with this Act and ALL OTHER REQUIREMENTS
for the issuance of a patent under this Act are met.
Excepted Categories- Non-patentable Invention
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Section 27(8) of the patent act states: no patent shall be granted for any mere scientific
principle or abstract theorem.
 The patent office are ill-disposed patenting to business method, inventions.
 No patent should be granted to claims including medical treatment for social policy
reasons. Patent pay be granted for new improved apparatuses for surgical treatment.
 Natural phenomenon, laws of nature and scientific principles are not patentable.
 Also features of solely intellectual or aesthetic significance, fine art and games.
 Other eg are: printed matter for only artistic intellectual or literary result, mere human
conduct or mental steps or instruction and architectural plans
 Methods of treatment of the human or animal body by surgery or therapy or of diagnosis
practiced on the human or animal body;
 A discovery, scientific theory or mathematical method;
 A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
 The presentation of information;
 Any invention the exploitation of which would be generally expected to encourage
offensive, immoral, or anti-social behavior; eg, date rape drug
 Any variety of animal or plant or any essentially biological process for the production of
animal or plants, not being a microbiological process or the product of such a process.
 A scheme or method for performing a mental act
Harvard Omcomouse case;
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.”
Amazon case:
The federal court ruled that a computer system implement the amazon.com one-click ordering
method constitutes a patentable subject matter. According to the court stated that the one-click
ordering system is not merely a mathematical formula that could be carried out without a
machine or a simple computer program but rather it is an essential element in implementing an
online order process.
Summary:
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an invention is not necessarily a juridical fact or a legal fact unless it meets the
requirements of the Patent Act and falls within the scope of patentable subject matter.
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An innovation or technological improvisation may meet all the technical requirements for
patentability and yet fail the test of patentability on the ground that it is not a patentable
subject matter.
Refer to breast cancer case
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NOVELITY
For an invention to be patent it must teach something new.
The law presumes that every patent invention is new, the onus is on the person asserting other
wise to prove same.
prior to October 1985 the court must first determine the date of invention which is question of
fact.
Ernest Scaragg v Leesona - the court stated the date of invention must be established by proof
that the invention was sufficiently described in a manner that it could work on the date of
invention.
Patentability and Novelty
Novelty debar for patentability inventions that seek to do no more than rehash information or
knowledge that is part or prior act or public knowledge.
novelty raise question such as; what is the public domain, what is geographical scope, whose are
to knowledge is relevant
Nature of anticipation
Anticipation cannot be proved by an assemblage of elements gathered from different related
sources
Test for novelty
1. what does the allege invention teach?
2. is the invention new? [ newness does have to be ground breaking it is not a search for
absolute new, newness in that context is relative, most invention are new in relation to
other invention( preexisting knowledge]
The objective of the test of on novelty is to prevent the patenting of public knowledge
Anticipation - the invention is anticipated where the knowledge have already been an earlier
invention dealing the subject matter or knowledge have already been known about by person
skilled in the art. The test for an invention is an objective test since what is in the inventors mind
is not relevant[ it does not matter what the inventor mind]
the test of anticipation does not deny that here have been invention, it assert the idea in the
invention have already been disclosed to person skilled in the art.
Test for novelty
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1)Date of invention- may be established verbally or written, or by the evaluating of the time
when the subject matter was reduced to a workable model, the date of conception of the idea is
not the date of invention.
First to Invent system-was operated in Canada until November 1989- novelty is determined by
date of invention and by date or two years before the filing date.
Bayer v Apotex (first to invent)
Scott paper case( first to invent)
Canada currently has the first to file system- this is the relevant time to determine novelty, this
is the date the commissioner receives the documents, information, fees for the purpose of the
application section 28 of the patent act
Commissioner may ask applicant to full in incomplete application section 27 (6) of the patent
act
ANTICIPATION
2) Whether what the allege invention teaches had already been anticipated by some
information or previous invention already known to someone skilled in the art.
prior art and public domain are different in patent, Prior act refers to body of knowledge in the
specific field in issue ordinarily known and available to the average person working in the
relevant and specific field of knowledge relevant to the allege invention.
prior are is narrower that information on a public domain, once information
Where the “new” teachings offered by the “invention” has been already taught by prior art, the
alleged invention is said to have been ANTICIPATED
section 28(1) creates limitation which makes the filling date different form the claim date.
The filing date and the date of claim in an application is the same in Canada.
When the new teaching offered by the invention has become public knowledge the invention is
said to be anticipated.
Anticipation can happen when the co-pending application is filed by a person or whose agent
filed for an application in or for Canada application for a patent disclosing the subject matter
denied by claim
section 28. 2 of the patent act states that The subject-matter defined by a claim in an application for
a patent in Canada must not have been disclosed :
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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
before the claim by a person not mention in section in the above bulllet.
by someone other than the applicant who filed an application in Canada before the applicant claim date
that is filed before; on or after the claim date, (Exception to the Parity in date)
I.
II.
III.
IV.
that the co-pending application is filed by;
A. a person who has, or whose agent, legal representative or predecessor in title
has, previously regularly filed in or for Canada an application for a patent
disclosing the subject-matter defined by the claim,
B. a person who is entitled to protection under the terms of any treaty or
convention relating to patents to which Canada is a party disclosing the
subject matter defined by the claim.
the filing date of the previously filed application is before the claim date of the
pending application
the filing date of the co-pending application is within twelve months after the
filing date of the previously regularly filed application
the applicant has, in respect of the co-pending application, made a request for
priority on the basis of the previously regularly filed application.
Absolute novelty
If the invention was disclosed prior to the claim date in such a way that invention becomes
known to the public then the invention is anticipated
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.
Section 34(1)
see section 34(2)
No patent will be granted if prior to the application date:
a) A prior application pending describes the invention
b) previous convention filling date describing the same invention
c) third party discloses invention which becomes available to the public.
If two or more applicant filled on the same day they all will get a patent grant if the application succeed.
Patent corporate treaty-PCT- Pertaining to international treaties
Article 50-102 pertain to mortalities
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Article 53(1) and 56 give commissioner right to act like an international search engine.
Article 11, states that the international filling date is the date that the international
application was received.
Anticipation 2 step test
1. Disclosure - whether the publication or earlier patent discloses the special advantage
allegedly conferred by the “invention.”[what was taught and the date of the teaching]
2. Enablement- whether a person skilled in the art could have been presented with the
opportunity to work the invention without undue burden, trial and error or
experimentation; the disclosure in that case have to be enabling
Disclosure
Apotex v Sanofi-Synthelabo (2008)- anticipation case
Issue: whether a particular invention is new; has the knowledge been taught before, whether
there is disclosure.
Pifzer v Apotex
Fact; pifzer Apply for patent on second compound same compound to treat OCD and panic
disorder. there was already writing on the particular use published in a news article.
Issue: Whether a particular kind of disclosure is sufficient?
decision; the judge held that the writing constitute disclosure; PRF state that the first use was
close enough to constitute disclosure
Fact; Apotex obtained an NOC to be allows to sell sertraline in the generic form on the expiring
or Pifzer patent
Reason; the FC court held that an article reporting that sertraline was undergoing phase II
clinical trials for the treatment of OCD anticipated claims of the Pfizer patent.
Summary an Invention is - 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 inventionecessary for the article to say that sertraline was effective for OCD.
Reeves Bros- elements of a valid enticipation
1. Give an exact description;
2. Give directions which will inevitably result in something within the claims
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Five clear and unmistakable direction
Give equal information for the purpose of practical utility and information given
by the subject patent
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give information to one grappling with same problem- Ah ! that gives me what I
wish
 The information given by PRIOR ART, “must for the purpose of practical utility,
be EQUAL to that given in the patent in suit.” See Dickson, J. in Consolboard
case.
Methods of anticipation
 verbal description and disclosure
 public show or exhibition
 a prior patent or publication
 Section 28(2)(1)- No patent may be issue for an invention that was in public use or on sale in
Canada for more than 1 year before the filing of the application in Canada
 there is an exception for invention where public display is unavoidable
Gibney v Ford MotorsFacts; 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 the use
Decision- court held that patent was invalid- as soon as the unidentified customer drove out
without any injunction or restriction placed upon him, the invention then became available to
anyone who wanted to lift up the hood of the car and look at it.
In Birtwhistle v. Sumner Engineering Co. Ltdreason- one unit only of a timing device for book-makers was not even sold but merely carried
around by a book-maker when he went on his rounds for the purpose of trying it out and yet this
was held to be prior public use.
Decision- court held that this constitute disclosure by public display
Re Stahlwerk Becker Aktiengesellschaft,reason- the House of Lords decided that if an invention were available to even one member of
the public, that was sufficient for the purposes of defeating the patent on the basis of public
display
decision-it was anticipated if one person had seen it
There has to be a voluntary giving up of the invention, if the invention was sold then it does not
invalidated the patent.
Re Stahlwerk Becker Aktiengesellschaft Patent When an article is manufactured and sold, and from an inspection of it is possible for the vendee
to ascertain its component elements, or the main principles of its construction, there has been
publication by prior user.
Croysdale v. Fisher.
When it is said that a process has been disclosed or an invention has been disclosed by means of
a “use”, it is not necessary that such “use’ should be a use by the public proper, provided only
there is a use in public, that is to say, in such a way as contra-distinguished from a mere
experimental user with a view of patenting a thing which may or may not be existing
If the publication is hidden then it is not disclosure, where it is obvious that the invention is not
for the public then it is not disclosure.
Disclosure by publication
In order for a document to qualify as a printed publication, it must:
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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
Bayer v. Apotex
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.”
Free world v Electro Sante- Mosiacing “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.
suggest that prescriptions must be exact and lead to the same invention in question. you cannot
make refers to various literature.
The law does not allowing mosaicing, you cannot refer to one a mileage of publication you must
refer to one piece of document for disclosure. For anticipation the law requires that there be A
SINGLE DOCUMENT or INVENTION anticipating the alleged invention you cna rfer to
another document only when there is clear instruction in the document at hand to refer to another
document. Mosiacing is relevant to obviousness
Difference between novelty and obviousness
• novelty says that the invention does not teach anything new.
• Obvious deals with an alleged lack of “inventiveness”.
Step 2 Enabling Disclosure
For an invention to be invalidated on the grounds of open use, display or sale prior to filing for
patent protection, the disclosure must be an “enabling” one
Risi StoneMere sale or public use of the device or method is enough to invalidate the patent.
Baker v. Canwell PetroliteFACT; The appellants alleged that the patent was invalid pursuant to s. 28.(2) (1)(a)on the basis
that the invention had been disclosed in a manner that it became available to the public more
than one year prior to the filing date
Reason: “The principles in Beloit v. Valmet and Free World v. Electro Sante relating to
anticipation by prior publication are also applicable to anticipation by prior use or sale, but may
need to be tailored to fit the particular circumstances of prior use or sale.”
1. Sale to the public or use by the public may suffice to prove anticipation
2. For a prior sale or use to anticipate an invention, it must amount to "enabling disclosure".
3. 3. The prior sale or use of a chemical product will constitute enabling disclosure to the
public if its composition can be discovered through analysis of the product.
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4. 4. The analysis must be able to be performed by a person skilled in the art in accordance
with known analytical techniques available at the relevant time and without the exercise
of inventive skill.
5. 5. When reverse engineering is capable of discovering the invention, it becomes available
to the public if a product containing the invention is sold to any one member of the public
who is free to use it as she or he pleases.
6. It is not necessary to demonstrate that a member of the public actually analyzed the
product sold.
Conway v. Ottawa Electric.is not such a public use as under the statute defeats his right to a patent. But there must be
experiment, and what is done in that way in public must be reasonable and necessary, and be
done in good faith for the purpose of perfecting the device or testing the merits of the invention.
 Where public experimentation is the ONLY means by which an inventor could test the
device, a court may hold that such use was not “public
 Paraphrasing is not anticipation it has to be verbatim
OBVIOUSNESS
Patent law requires that for an invention to be patentable, it must embody ingenuity, that is, the
subject-matter of the invention should not have been obvious to a person having ordinary skill in
the art (PHOSITA) as of the claim date.
The for novelty of invention;
1. what does the invention teaches
2. is the invention new (what is the preexisting knowledge)
address the criterion of non-obviousness; s. 28 (3) of the Patent Actthe subject-matter defined by a claim in an application for a patent in Canada must be a subjectmatter that would not have been obvious on the claim date to a person skilled in the art or
science to which it pertains having regard to (a)information disclosed 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 as a manner that
The elements of non-obviousness
1. the critical quality is that the “ingenuity” embodied in the invention as CLAIMED must
not be OBVIOUS to a person skilled in the relevant art or science
2. what is the legal definition or test for identifying this unspecified quality of “ingenuity”?
Claims in Patent filing date and ingenuity In determining the existenceof inventiveness or ingenuity the CLAIM in the application and
FILING DATE are both crucial
 obviousness must be accessed in tern of both claim and filing date if they are different.
 public refer to people skilled in the art or science not the general public.
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Definition of Obviousness-Farbewerke Hoescht, is defined as “finding out something which has
not been found out by other people
Beloit v. Valmet Oy describes it as “substantial exercise of inventive power or inventive genius,
which could be slight if important results are achieved.”
Invention must embody elements of - “inventiveness” or “inventive genius.”
The onus on the person asserting a lack of invention to prove the lack.
Cripps test or OBVIOUS-TO-TRY approach.- was it obvious to any skilled chemist in the
state of chemical knowledge existing at the date of the patent that he could manufacture valuable
therapeutic agents by making the higher resorcinols by the use of the condensation and reduction
processes described? If the answer is NO the patent is valid, if YES the patent is invalid, this test
speak of a person having skills in the art , you must have some form of imagination this test raise
the bar.
Section 28(3)(a)(b)- a person skilled in the art.
Bayer v. Apotex
Beloit v. Valmet Oy case- the test for obviousness most widely adopted by Canadian:
whether at the date of the invention…an unimaginative skilled technician, in the light of his
general knowledge and the literature and information on the subject available to him on that date,
would have been led directly and without difficulty to the invention.”
if there is a slight display of intelligence then there is ingenuity.
There are 3 approaches for testing obviousness in Canada:
1. No testing approach- then there is
2. Some degree testing obviousness is permissible-there is ingenuity if testing is required
3. the NO TESTING approach in fact, apply the ROUTINE TEST doctrine-then there is no
ingenuity if a routine test is perform, a slight application test may raise the level
To determine the presence of inventive genius in an invention- a distinction must be drawn between (a)
mere workshop improvements such as could be made by the exercise of a constructional ability or the
expected knowledge of the hypothetical person skilled in the art and science and (b) changes which rise
“to the dignity of invention”.
Johnson v. Pennsylvania- line to be marked is that which separates mere constructive ability
from inventive capacity and as the lowest order of invention is something more than mechanical
skill, so the highest degree of mechanical skill is something less than invention.”
it must rise above mechanical skill to be ingenious
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Indicators for ingenuity in inventions may include:
•
Does the invention introduce a new “technical effect”?
•
Does the result of the invention “surprise” the skilled but unimaginative technician?
•
Is the alleged invention NOVEL and SUPERIOR to what was available until then?
•
Has it been widely used in preference to alternative devices?
•
Have competitors or experts in the field ever thought of anything like it?
•
Did amazement follow its public disclosure?
•
Is the invention a commercial success
Test for obviousness/ ingenuity
whether a skilled but unimaginative technician would “have come WITHOUT DIFFICULTY to
the solution taught by the patent.
Farbwerke Hoescht v. Halocarbon
Fact; The inventive step over the prior art was that the process was carried out at about 50
degree(s)C.
Supreme court held that trial court test was too ridged and caused unfairness to the holder. a
substitute is not a new invention if some higher engineering is required it is not direct it will not
fall into the lines of obviousness. something that does not exist in its pure state in nature is
eligible for patent protection. making an old invention better or simplifying an invention can rise
to the level of ingenuity.
There are 3 levels of inventors: the genuis, the middle and the those that should not invent
Examples of obviousness
 An inventor of a new chemical is entitled to a patent on that chemical as well as its
specific uses. However, if the chemical is prepared by a chemical process only the
chemical when produced by that process as disclosed is eligible for a patent. See
Marzone Chemicals, [1978], 37 C.P.R. 37.
 When a compound is mixed with a carrier, there is no inventive ingenuity involved.
 The isolation of a virus that does not exist in nature may be patentable.
 The discovery of a new use of old compounds would meet the criterion of nonobviousness.
 However, where a combination of old compounds is indicated in the literature as being
potentially useful for a stated purpose,
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 There is no invention in experimenting with the combination and demonstrating a
commercial utility for that purpose.
 If a new use is discovered, the patent does not give a complete monopoly to the old
compound.
 Invention may arise where one material is substituted for another in such a manner that a
better product is created.
 Similarly, the simplification of an apparatus such as the elimination of some parts which
results in greater economy or efficiency may possess the requisite degree of inventive
genius
KRS v Telefax -ingenuity
Facts; Use of a sensor to control a gas pedal of a car
issue; Whether a sensor to control a gas pedal is ingenuity?
Decision supreme court ruled that; there was no ingenuity. the person of ordinary skills should be
given some credit. The teaching-suggestion- motivation test it too rigid and the supreme court
moved to a more narrow approach. In that case the supreme court moved from a PHOSITA to a
more general approach.
Non-obviousness
when determining obviousness, the motivation nor the purpose of the patentee is relevant. What
is important is the objective of the claim. One of the ways in which a patent's subject matter can
be proved obvious is by noting that there existed at the time of invention a known problem for
which there was an obvious solution encompassed by the patent's claims.
The "person having ordinary skill in the art" standard
Justice Kennedy's opinion stated, "A person of ordinary skill is also a person of ordinary
creativity, not an automaton." He acknowledged that his description of a (PHOSITA)
does not necessarily conflict with other Federal Circuit cases that described a PHOSITA
as having "common sense" and who could find motivation "implicitly in the prior art."
Apotex v Synthelabo settle the case of obviousness in Canada
Four step test to ingenuity
1. the notional “person skilled in the art” and that person’s relevant common general
knowledge must be identified.[what do they know, what is the general knowledge
the person posses
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2. What is the inventive concept of the claim in question must be determined or
construed[ what is the allege invention]
3. What is the differences, if any, that exist between the matters cited as forming part
of the “state of the art” and the inventive concept of the claim or the claim as
construed must be identified[ is the general body of knowledge different form the
inventor]
4. a court must consider whether, those differences constitute steps which would
have been obvious to the person skilled in the art or whether they require any
degree of inventiveness.[obvious to try]
This a subjective test
Utility
For a an invention to be patentable it must be (Socially) useful
Early patent Law
 took utility” to mean socially beneficial and useful inventions.eg if an invention create
mass unemployment it was considered useless
 immoral invention or invention the created immorality was devalued eg sex toys and
birth control pills , they were not worthy of patent protection. even if they had other use
the fact that they had an immoral use make then incapable of patenting
 Venetian Patent Act of 1474 and the Statute of Monopolies of 1624 allow patent to be
beneficial and useful.
Judicial construction of Utility
 the test of utility has not been a stagnant, fixed concept;
 three stage development of utility;
1. 1st Era- utility of inventions was construed literally, with a substantial dose of puritanical
bias.
2. 2nd era- utility was construed pragmatically with little regard for “moral” or “ethical” aspects
of the invention
3. 3rd Era- utility was understood to deal with whether an invention could perform or be
worked as predicted by an inventor as per the disclosure. Ethical or moral concerns were
rarely invoked.
Utility in the 1st Era
 for inventions that “performed some function of positive benefit to society”, provided
such inventions scaled the “ethical” hurdle. In Morgan v. Seaward, (1837) the court
invalidated an invention said to be a device for “immoral” and “mischievous
 Immoral inventions”, no matter how ingenious, were held to lack utility, and thus not
patentable
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 inventions which served the purpose of impeding subsequent improvements or to prevent
the introduction of other inventions particular subject to which it was applicable, were
invalidated for lack of utility
Lowell v. Lewis
Justice story states- the law requires is, that the invention should not be frivolous or injurious to
the well-being, good policy, or sound morals.”
public policy and morality were not constant factors they changed with time
distancing from religious morals gave rise to era 2
The 2nd era
Secularism and science came in, invention assessed based on science rather than morality, if the
invention work as predicted then there was some utility.
Tripodal test adopted by judges in the second era
1. Does the invention work?
2. Does the invention serve human needs?
3. Even if the invention was immoral, was there a redeeming quality?
To pass the test the invention must not be used only for immoral” or “anti-social.”dual uses
produces utility in that case
One-Armed Bandit case
Decision; we cannot find any basis in our patent law which justify a conclusion that inventions which are
useful only for gambling ipso facto are void of patentable utility.”
Every invention solves a problem
claim is important, utility cannot be judged without a claim; there is no bases in patent that claim that
an invention should be a working model exception when there is doubt the commission may ask for a
working model. If there is a claim for x and x fail the invention must fail, and id there is claim for a b c
and a b fails then the claim passes
Utility in the Third Era
The test of utility in contemporary patent law demands that an invention perform whatever it claims as
per its specification, regardless of its overall impact on society; Section 27(2) of trips had reserved
morals and policy consideration for exceptional cases.
TRIPS section 27(2) “Members may exclude from patentability inventions, the prevention within their
territory of the commercial exploitation of which is necessary to protect ordre public or morality,
including to protect human, animal or plant life or health or to avoid serious prejudice to the
environment, provided that such exclusion is not made merely because the exploitation is prohibited by
their law.
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Utility of Predicative Compliance
whether the invention would perform what the claims in the disclosure predict it would.
If the invention does not solve the claim then the invention fail.
Where there is doubt about the working capability of the invention the Comm’r of
Patents may call for a working model of the invention.
the claim should not exceed the invention
In Canada Utility is a question of fact.
Consolboard Inc. v. MacMillan Bloedel- Utility Case
Supreme Court held; the requirement of utility does not impose a duty on the applicant to extol the
virtues of the invention or dwell on what makes the invention superior to prior
the invention gives either a new article, or a better article, or a cheaper article, or affords the public a
useful choice”
As long as a person skilled in the art can, work, operate or create the invention, the test of utility is met
Claim and Utility
The test for utility focus on having regards for the specification of the claim, whether the
invention is operational and full its promises.
the test of utility is tied to what the applicant claim in the specification and it not relevant
whether the invention work for a different unclaimed purpose.
Inutility for a sole claims invalidate the entire invention, also a missing feature which
result in complete failure invalidates the invention.
utility deal with the conformity to claim it is irrelevant whether it offers a service to the
public.
Death Ray Case
Fact; an application the specification of which covered 43 pages and contained 10 claims. there was no
certainty that the device would work if constructed.
Decision: In the opinion of the Board, “the test of utility of an alleged invention depends on whether
by following the directions of the specification, the effects which the patentee professed to produce can
be, IN FACT, produced. In this application, we are satisfied that which is described lacks utility because it
is inoperable for the purpose for which it is designed
Utility and working models
An applicant for patent protection must have a working model
Owens-Illinois v. Keohring Waterous-a person skilled in the art seeks to produce or re-produce the
alleged invention from the specification, s/he must attain the results predicted by the inventor.
Novopharm v. Pfizer
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Fact; the erection dysfunction case. the 446 patent
Decision: The CA held that utility need not be demonstrated in the patent disclosure. There is
nothing in the Act which leads one to conclude that such a demonstration is necessary.
Second, there is no a priori reason to think that the patent disclosure should contain proof of all the
elements required to obtain the patent.
Hughes and Woodley- “an invention will have utility if it worked as of the date of the invention even
when, subsequently, improvements were made to make it work better.”A n invention my need to be
repaired, modified, or replaced does not make the invention to lack utility
( Doctrine of Sound prediction)- [exception to the doctrine of utility]
there can be an educated guess of utility for the doctrine of sound predication
where actual proof of workability would be dispensed with.
it is possible to make a sound prediction about a certain area, it would be reasonable for
the patentee to claim those uses despite the absence of evidence of proven or
demonstrated utility.
Monsanto case 1979Fact-o a patent that included claims to numerous chemical compounds to inhibit premature
vulcanization of rubber, but only three of the 126 claimed compounds had actually been prepared and
tested before the date of the application
Decision; architecture of chemical compounds was no longer a mystery but, within limits, soundly
predictable
PRF- there must be reasonable grounds to believe what happen to A must happen to B. the problem
with that approach especially to compound is that an inventor may be able to patent a compound which
no use.
Apotex v Welcome - Doctrine of sound prediction case
Fact: HIV treatment test was done in a laboratory and not oh humans
Once it is accepted that in appropriate circumstances utility can be predicted in advance of complete
testing (whether of untested chemical compounds or otherwise), there seems no reason in principle
why the doctrine should not be applied more generally, depending, of course, on the expert evidence.
There is no doubt that care must be taken that the doctrine is not abused, and that sound prediction is
not diluted to include a lucky guess or mere speculation.
Three elements of sound prediction
1. There must be a factual basis for the prediction
2. at the date of patent application inventor must have an articulate and sound reason why
the desired result can be inferred
3. there must be proper disclosure on how the result works
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Sound prediction balances the public interest in early disclosures of new and useful invention (particular
pharmaceutical which take a year to verify) and the public interest of avoiding the granting of useless
patent and misinformation.
The doctrine of sound prediction for pharmaceutical drugs is problematic.
Farbwerke Hoescht v. Comm -pharmacological effects of new and untried substances are not generally
predictable or, if predictable at all, are not predictable to any great extent”.
Selection patent -
allow for a double application. apply for a new patent on a previously patent compound
for a different use
not restricted to compound but generally use in that context
Sonofi case
Issue; whether the fact that a patent had been issued for a genus of compounds necessarily means that
a patent could not be issued for any compound falling within the genus
Decision; in support of the conclusion that a system of genus and selection patents is acceptable in
principle.
A valid selection patent must :
There must be a substantial advantage to be secured or disadvantage to be avoided by the use
of the selected members;
The whole of the selected members (subject to “a few exceptions here and there”) possess the
advantage in question;
The selection must be in respect of a quality of a special character peculiar to the selected
group.
Excerption of selection patent:
•
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 it is invalidated , a small number will not invalidate it.
Sound predication and selection Patent;
Apotex v. Synthelabo (2008),
Fact: whether, on the facts of this case, the particular selection patent has been anticipated.”
Decision; “in order to be valid, the selected compound must be novel and possess a substantial
advantage to be secured or disadvantage to be avoided. A system of genus and selection patents is
acceptable in principle and does not necessarily involve anticipation and therefore invalidity.
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Homology [ the compound all look alike]when applied to sound prediction is dangerous,
Genetic Inventions and Sound Prediction
•
Genes or genetic sequences as they exist naturally are not patentable. However, to the extent
that gene fragments are chemicals, patent protection is available if the utility is known and
specifically identified by whoever isolates and purifies them.
Whether a drug is test on mice or rats raise the problem of utility.
Patentable Subject-matter
Section 28 (3 ) of the patent Act, Section 27(8) of the patent Act, List of None- Patentable subject matter
Historically there was a patent ban on product found in nature.
Leroy v. Tatham- the general principle that a natural substance such as lead could not be the subject of
patent protection.
American Fruit Growers v. Brogdex, held “orange carrying borax in an amount that is very small but
sufficient to render the fruit resistant to decay, yet still the orange was non-patentable
The theoretical justification for bar on products of nature was that they were mere discoveries of the
manufacture of nature.
Morton v New York Eye- ‘
Fact ; An application on the use of eter as an anesthetic during surgery
Decision; a discovery of a new principle, force, or law operating, or operating on matter, will not entitle
the discoverer to a patent. It is only where the explorer has gone beyond the mere domain of discovery,
and has applied new principle, and connected it with some mechanical contrivance by which it acts on
the material world, that he can secure the under the patent laws
Insulin case;
Dr Banting; discovery if insulin to subdue diabetic was granted a patent although insulin was found in
nature
Problems with products on Nature
RULE- Purified forms of nature are patentable but the raw from is not . if one can purify a compound
found in nature it is patentable. the login is in the difference in the compound and not in the degree.
The issue of product patent and process patent,
product of nature are discoveries that exist in the in nature form.
There is a degree of inconsistency with the new rule
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GE v. De Forest
Fact; Coolidge of GE developed a process of purifying tungsten to high levels of purity
Decision; The claim in relation to the product was rejected; the court granted the claims relating to the
new process of purifying tungsten, Manifestly he did not create pure tungsten, nor did he create its
characteristics they were created by nature.
there is a difference in the way in which the court deals with elements and metals in comparison to
other compounds
Patenting of Aspirin
The court has completely rejected claims nature in metallic element but have accepted claims of
chemical compound in nature.
Kuehmsted v. Farbenfabriken-( Aspirin case)
Issue: whether purified acetyl salicylic acid (aspirin) could be patented?
The plurality of the court held that a compound purified from a mixture was patentable, even if that
compound was previously known to exist as part of a mixture, as long as the purified compound was
useful in a manner that the original mixture was not.
Parke-Davis v. Mulford.- the reasoning in Kuehmsted was miss applies in this case. the difference in the
2 case is that in Parke there was a product of nature in Kuehmsted it was an artificial compound at
issue.
Olin Mathieson-vitamin B12 case
Decision; patents on purified vitamin b12 were upheld
Reason: the courts granted a patent, there had to be difference in the kind found in nature and
the once produced. the difference in the kinds make the compound patentable. The invention lay
in the high state of purity of Olin Mathieson’s vitamin b12. Nature does not have vitamin b12 of
such purity.
There could be social policy reason for the patenting of vitamin B12- COURTS WAS
influenced by the fact that scientists had for decades searched for the elusive factor used to treat
pernicious anemia
In re Bergstrom- where the ptf contested the Patent Board of Appeals’ rejection of patents for two
purified prostaglandins.
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Decision- The court reasoned that pure materials necessarily differ from less pure or impure materials
and as such, are patentable
Purified Natural Substances
The product of nature exclusion is dead in Patent law; two theories:
1. first theory that a purified product differs in form from that in the natural state, Michael
Davis argues that this theory is based on the test of novelty, which makes no distinction
between artificial and natural products .
i) originated in Par-Davis case
ii) purports that chemicals become new substances if isolated, broken down, or purified
from their natural state
iii) the problem with this theory- is “there is nothing in the patent statute that says old
substances become “new” when first offered in purified and isolated form
iv) the distinction foisted on purified natural products is one of convenience, not on the
intellectual merits of the argument since biochemical in the natural and purified states
behaves the same.
2) Second theory- that all inventions are products of nature.
i.
Problematic because: A clear line can be drawn between products of
nature and artificial inventions
Labcorp v. Metabolite
Decision- laws of nature, natural phenomena, and abstract ideas” are not patentable.
Summary;
With the exception of metals and minerals, it seems that products derived from nature are
patentable if they are useful, novel, and non-obvious.
Hence, purified proteins, purified DNA transcripts, etc, are patentable if they are newly
discovered, useful, and non-obvious.
principles of nature per se, are not patentable
read justice Kennedy in this case
Shell Oil v Comm of Patent- Mathematical equation:
is fit to patent if the idea become embodied as part of the product
the product or the process is fit not the formulation
the equation is not fir for patent, the equation is a law of nature
in that case the product is created not the process
Policy reason;
Laws of nature belong to everyone
you cannot hold the entire society at ransom by patenting an equation
Professions skills are non-patentable :
especially when it relates to medicine
medical device are patentable but there is grey area due to policy reasons
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Tennesse Eastman Case:
At the time of this case the law was you cannot apply for a new use on an old compound.
the court felt that the method to apply the compound was the issue not the compound
the issue in this case was suppose to be ; Whether the new use was a patent invasion?
the court misconstrue the issue as to whether professional skills were patentable
Pallin v Singer
methods of treating people or animal are not patentable
Australia allows for the patenting of methods of treatment.
Books of methods of working effective are not patentable because it is considered a
professional skill.
Purely professional skills are non-patentable
methods of diagnostic or treatment are non-patentable
a tool or a device is patentable
a chemical agent is fit for patenting
Aggregate v combination
there is a shape distinction between aggregate and combination
combination are patentable and aggregates are non- patentable
if the machines work independently they are aggregates
when one machine cannot work without the other they are combination
combination-integration ____ Aggregate- independent
William v Nye- court rules it is not a combination but an aggregate- the test of obviousness always come
in issues of aggregate and combination
Metal and element are completely bared for patenting
Chemical that derives from nature and are new, useful and non-obvious are patentable.
Computer related subject Matter
Not all subject matter are patentable, to be patentable a subject matter have to be recognized by
section 2 of the patent act. Patentable subject matter are described not defined by the act.
Motorola Case- aggregate case - became part of a machine the law will inch toward giving a patent
if the aggregate becomes part of the machine it is patentable
Shell Oil v. Commr of Patents- A scientific idea which has not yet been embodied is not per patentable.
However, a scientific idea with a method for its practical application is patentable.
A mathematical formula or equation is not patentable- whether it is done by human or computer
No patent may issue for abstract theorems.
32
mathematical calculations are part of a system which does not relate solely to such calculations but has
a larger purpose, or is part of a metaframe, for eg, computer programmes used in a machined
operation, it may be patentable.
A claim directed to an algorithm that contains at least one piece of hardware is patentable.
Computer hardware are patentable since they are considered machine but software program and
process are less clear.
The general rule - the definition of invention does not extend to make patentable “an invention which
constitutes merely the use of a computer for making certain calculations according to a formulae so as
to extract useful information”. See, Hughes & Woodley, ay 352-2
The general rule is that the definition of invention does not extend to make patentable “an invention
which constitutes merely the use of a computer for making certain calculations according to a formulae
so as to extract useful information”. See, Hughes & Woodley, ay 352-2
Amazon
Schlumberger
Fact; the applicant sought a patent for a ‘method’ for obtaining useful information about geological
formation
Decision: application was rejected- was not an invention as contemplated by part 2 of the patent act.
Reason; various calculations to be made and of the mathematical formulae to be used in making those
calculations is new. If those calculations were not to be effected by computers but by men, the subjectmatter of the application would clearly be mathematical formulae and a series of purely mental
operations, as such, …not patentable.
This is a guideline case but Amazon added more clarification. the court felt that it was process that could
be applied mentally although it was done by human
the court in that case took a 2 step approach for determining computer related subject- matter
patentablility:
I.
II.
what is it that was discovered?
whether what was discovered in patentable regardless of whether a computer is or should
be used to implement the discovery?
The calculations and formulae were equated with “mere scientific principles or abstract theorems” for
which s. 27 (8) prescribed that no patent shall issue.
The Canadian patent board give literal meaning to process which are not patentable.
The board has rules the claims for systems to provide a useful end result are patentable
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Aftermath of Schlumbeger
Guideline by the patent office on computer related subject matter:
I.
II.
III.
Unapplied mathematical formulae are considered mere scientific principles or abstract
theorems which are not patentable under s. 27 (8) of the Patent Act
The presence of a programmed general purpose computer or a program for such
computer does not lend patentability to, nor subtract patentability from, an apparatus or
process
that new and useful processes incorporating a computer program, and apparatus
incorporating a programmed computer, are directed to patentable subject matter if the
computer related subject matter has been integrated with another practical system that
falls within an area which is traditionally patentable
CIPO guidelines section 16;
1. Patents are not to be granted to mere algorithms or source codes, it should be integrated into
a useful device or process with a patentable subject matter
2. Patent applications for claims to programming languages, compilers, databases, software
engineering, etc, are vulnerable to objections on patentability, unless the software is
associated with some hardware element or process element involving something more than a
mere algorithm
16.02:of the CIPO: The specification must describe the invention in normal language as in other
technical fields and not solely as source code. Computer program listings alone do not fully describe the
invention, but may be useful in illustrating specific embodiments
Three stage test on hardware is question"
1. Are the important elements of the computer system, e.g. processors, memories, buses,
interfaces, displays, peripherals described to the point that a person skilled in the art can
make or use the invention? Has the interrelationship between the computer elements and
network been described to provide the desired functionality of the invention?
2. Is the functional representation of the computer program described?
3. “Do segments of the program in particular components function separately from the
remainder of the computer program?”
The interaction between the hardware, data and computer program which determined whether the
computer related invention is patentable?[ They need to have a technical effects]
A description is not sufficient if it only teaches that useful information could be extracted by making
certain calculations according to certain formulae
The new approach focuses on whether a “technical effect” is the end result of the invention.
The technical effect test-[ machine-or-transformation test] is an imaginative reading of s.2 and s.
27(8) of the act- IS A TEST FOR WHEN AN AGREGATE BECOMES A MACHINE.
IBM Case- Technical effects is a transformation test- the court was looking for something internal
between hardware and soft ware.
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Bilski v. Kappos - If an invention solves a technical problem or exhibits a technical character, it would be
deemed to be patentable.
VICOM case- chemical effect and transformation test
Issue- whether an application for a method of digitally filtering images using a device called an operator
matrix which aimed at producing enhanced images was patentable.
Decision: yes- if the idea underlying an invention was a mathematical method, it could still be
patentable if the invention as a whole made a technical contribution to the known art
The technical effect test has an element of physical change which is problematic- in terms of
Amazon v. Comm’r for PatentsFact; A system that when the customer goes online they do not have to key in their information all the
time.
Decision- The application was denied based on obviousness by the commissioner - an appeal it was
found that there was strong nexus between the aggregate and the machine - the patent was resent to
be granted - once the part is integrated as a part of the machine it is patentableThere must be a machine to apply for protection on a software
it seems settled law in Canada that computer programs that constitute part and parcel of a vendible
product or new service products are patentable
Bilski- the court look at the nature of the claim similar to amazon case, the court held that the claim was
directed to an aggregate and that there was no invention for patent protection.
Summary
Software expressed as lines of code or listings is considered literary work protected under
copyright law, not patent law.
Software in the form of a data model or an algorithm is excluded by virtue of s. 27 (8)
Software that is integrated with a traditional subject matter (art, process--excluding
calculations, machine) is patentable
Specification
is not a requirement for patent protection but is a one of what a patent protection must show.
section 27(3) of the patent act
An application for a patent must contain the following:
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A formal request; signed by her or her agent
A specification ENDING WITH claims;
An abstract- what the allege patent is about
Section 24(2)
Disclosure and claims are the most compelling sections of a patent.
While the DISCLOSURE is the detailed scientific, and technical explanation of the invention;
The CLAIMS constitute the legal monopoly sought by the inventor over the subjectmatter of the invention
The disclosure of a specification must:
correctly and fully describe the invention and its operation or use as contemplated
by the inventor;
Set out clearly the various steps in a process or
For a process the discourse should , explain the necessary sequence, of the various steps, so as to
distinguish the invention from other inventions
For machine the disclosure must explain the best mode requirement
For an art the disclosure the person skilled in the art should be able to use it.
Best Mode requirement [section 27(3) (c)
the disclosure in respect of machines must contain the inventor's “best mode” of making
or practicing the invention
“best mode requirement” only applies to what the inventor knows or could have known at
the time the application was filed
Apotex v. Sanofi Synthelabo- does best mode requirement apply only the machine
s. 27 (4) of the Act provides that:
The specification must end with a claim or claims defining distinctly and in explicit terms the subjectmatter of the invention for which an exclusive privilege of property is claimed
Liardet v. Johnson- gave requirement for specification in patent law
Rule: it must be detailed, specific, and technical in such a manner as would enable a person skilled in
the art to replicate, make, or create the invention
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The bargain of patent will be unfair in the inventor does not explain his inventing in the
manner that a person skilled in the art can make sense out of it.
the disclosure is not relevant to the world at large but t person skilled in the relevant act.
The disclosure is the how of producing a patent
legal function of specification
2 functions of specification:
1) disclosure/description enables the construction and use of the devices therein after the
expiration of the monopoly.[the function of the disclosure answer what he invention is about]
the disclosure is some sort of consideration- it allows the patent to be used
2) the claims, enable others to ascertain with some exactness the boundaries of the exclusive
privilege upon which the public will not trespass during the duration of the patent grant. the
claim answers what the application seeks legal rights under. the function of the claim
answer what he invention is about
Consolboard/Ranbaxy test:
The disclosure serves the purpose of asking the inventor, what is your invention? How does it
work? How may someone else skilled in the relevant technology repeat or create what you
have invented? my be achieved by drawings, pictograms the disclosure is the know, how
part to create the invention this is what the lawyers are concern with.
Novopharm v. Pfizer Canada (CA). -sufficiency of disclosure- there was some degree of
bad faith,
The description in the patent must be “free from avoidable obscurity or ambiguity and
be as simple and distinct as the difficulty of the description permits.”
The description must not be misleading or calculated to deceive or render it difficult
for the skilled reader, without trial and experimentation, to comprehend what the
invention is.
The description must give all the information necessary for the successful use of the
invention without leaving such result to the chance of successful experiment.
The inventor must provide all of the information in good faith.
In new invention fuller detail is necessary
the court view disclosure form the perspective of the : person skilled in the art
Free World v. Electro Sante:
•
a patent disclosure is not addressed to the court or to the public but to the person skilled in the
art who has special knowledge. See Binnie, J, in Free World v. Electro Sante.
•
A court may call in an expert to decide what a word in a disclosure my mean- expert witness are
tricky in that sense since they are not explaining the invention by the word.
Burton-Parsons v. HP; the cream case
whether paragraph 2 of the disclosure was sufficient and precise enough to satisfactorily direct a person
skilled in the art to make or work the invention
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Decision; The SC held that although the disclosure was wide, read in conjunction with the claims, it gave
a person skilled in the art enough information to work the invention
Burton’s case establishes the principle that the claims are part of the specification and that in
interpreting or construing the disclosure, it is legitimate to read the claims too because the Patent Act
provides that a specification “ends” with the claims[Section 27 (4)]
Insufficiency of disclosure
Where the disclosure is INSUFFICIENT to enable a person skilled in the art to work or use the invention,
the patent would be invalidated, It is only where experimentation itself rises to the level of another
invention or is simply too burdensome that the patent would be invalidated for INSUFFICIENCY of
disclosure
Jansen-Ortho v. Novopharm (2006) -insufficiency in disclosure
Fact; The case dealt with an allegation that the patent was invalid for insufficiency on the basis that the
toxicity and solubility data in the patent failed to provide a correct, full and clear description as required
by s. 34 (1) of the old patent act
Decision; The court held that although the data presented was scant, the patent should not be
invalidated on that basis
Where a claim is ambiguous or broader than the actual substance of the invention, the court may
invalidate the patent, it would not be invalidate if a perosn skilled in the art can understand the
ambiguity
Pfizer v. Ratiopharm- the court held that sufficiency of disclosure should be adjudged from the
perspective of a person skilled in the relevant art
Best mode requirement
In determining whether the disclosure meets the test, reference must be had to the claims asserted by
the inventor vis-à-vis the state of the art at the claimed date
Consolboard v. Macmillan
The appellant alleged that the respondent infringed their patent on a process for the manufacture of
molded products, particularly fibre board. The issue turned on whether the appellant’s invention met
the tests of sufficient disclosure. In interpreting s. 36 (now s. 27 (3), the court laid down the rule that in
interpreting specifications, courts must be fair to both the inventor and the public.
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Scope of rights of a Patentee
Infringement of Patent
Is based mostly on case law
s. 42 of the Canadian Patent Act provides for the scope and incidents of patent ownership
s. 42. “Every patent granted under this Act…shall subject to this Act, grant to the patentee and the
patentee’s legal representatives for the term of the patent, from the granting of the patent, the
exclusive right, privilege and liberty of making, constructing and using the invention and selling it to
others to be used, subject to adjudication in respect thereof before any court of competent jurisdiction
In effect, any person who without the consent and permission of the patentee, makes, sells, uses,
constructs or otherwise exercises proprietary control over the subject-matter of a valid patent has
infringed the patent and is potentially liable to the patentee
Whirlpool v. Camco (1999), Apotex (2002)- it seems clear that a patent seeks to protect the subjectmatter of the invention from unauthorised acts that interfere with the rights of the patent holder.
Infringement coverts - it covers acts relating to a product such as making it, dealing with it, keeping it or
by such other acts that interfere with the rights of the patent holder
The nature of a patent is the right rights conferred by the grant is that the patentee has the right to
EXCLUDE others from using, making, or selling the patented invention unless such persons have the
authorization of the patentee.
Patent pending- that an inventor have taken steps to protect the patent it does not grant permission
The claim/s delimit(s) the scope and nature of the exclusive property rights granted to the patent
holder. (Freeworld v. Electro Sante)
Therefore, in determining whether a claim has been infringed, it is to the claim(s) that counsel or the
court must turn to.
The claim determines the property right of the subject matter, not the subject matter itself
the words used in the claims and the approach adopted by court in the construction or interpretation of
the words are essential to determining an infringement
Broad claims have a greater tendency to infringe than narrow ones
1)whether a particular patent has been infringed or not is one that must first be answered in direct
reference to the scope of the claims.
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Infringement is a question of law and fact- the CONSTRUCTION of the claim is a QUESTION OF LAW but
the issue of whether the defendant’s actions fall within the scope of rights covered by the CLAIMS and
conferred on the patentee is a QUESTION OF FACT[freeworld]
2) to determining the legal rights- the word use in the drafting of a claim is very important
In Canada we are not bound by the word use- we take the purposive approach dealing with the purpose
of the invention.
The pith and marrow approach - an infringement occurs when a defendant unlawfully
takes, makes, and uses the pith and marrow of an invention.
By this approach, courts in the United States purport to distinguish between the pith of an
invention from the “bells and whistles
this is also known as the doctrine of evaluation
the court should determine the essential component of the device
any change on the essential part in infringement
the doctrine of equivalents is founded on the theory that, if two devices do the same work in
substantially the same way and accomplish substantially the same result, they are the same, even if
though they differ in name, form or shape.
In making a factual determination on infringement, the test would have to determine whether the
alleged infringer’s device interfered with the monopoly enjoyed by the original patented mechanical
device
Warner-Jenkinson case- the dye case
Decision; the US Supreme court affirm infringement, the SC affirmed the judgment of the lower court
based upon the doctrine of equivalents.
Doctrine of infringement -the triple identity test:
1) whether the alleged infringing article performs the same function,
2) in the same way,
3) and produces the same result as the patented subject matter
McPhar Case- the triple identity test made its way into Canada in this case
Purposive Approach- the key to purposive construction is identification by the court of
the PARTICULAR WORDS or PHRASES in the claim that describe what the inventor
considered to be ESSENTIAL ELEMENTS of the invention
By such an approach, the inventor is not necessarily tied to the letters of the claims but to
the INTENDED MEANINGS” of the words and phrases used in the claims
the court will look for words that stand out that characterize the invention
you are looking for word used to describe the invention
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Whirpool v. Camco,-
Fact: the work flexibility was used
Issue; whether an infringement had occur when the word flexiblity was used?
Reason; The purposive approach seeks to understand what the purpose of the original invention
is, having regard to the claims in the patent
Free World v. Electro Sante- it is settled law that courts in Canada construe the claims in a purposive
manner to determine whether the defendant’s conduct infringed on the rights of the patent holder
Freeworld v. Electro Sante- Predictability is achieved by tying the patentee to its claims; fairness is
achieved by interpreting those claims in an informed and purposive way'
Literalism- Canadian law eschews a literal construction of claims- The purposive approach construes
claims in a mindset that seeks to understand the essence of the invention
Predictability and fairness:
Predictability is achieved by tying the patentee to its claims; fairness is achieved by interpreting those
claims in an informed and purposive way
CRITIC OF PURPOSIVE APPROACH
not every word in a claim carries the same meaning
sometimes the word could be meaningful to understand the invention purpose
the court have to make sense of the word in the p-approach
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42
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