Patents Summary
Mgbeoji
W2003, Osgoode
General Patentability Criteria:
a) Patentable Subject Matter (note that this depends on the country)
b) Novel
c) Inventive (i.e. unobvious) – this requirement is inferred from the s.2 definition of
“invention”
d) Useful (utility)
a) Statutory Subject Matter (what is an invention?)
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The main issue is the juridical definition of “invention” since it is broadly defined in the
Patent Act and more importantly, which inventions are patentable
Under statutory subject matter an invention must be both an invention and patentable
The guidelines for determining whether an invention is patentable is found in the s.2
definition of “invention” and the s.27(8) limitation on patentable inventions
S.2 – an “invention means any:
o new and useful art, process, machine, manufacturer or composition of matter,
or
o any new and useful improvement in any art, process, machine, manufacture or
composition of matter”
s.27(8) – “patents are not available for mere scientific principles or abstract theorem”
o this provision is hard to apply b/c it is difficult to delineate theorems from the
products that exploit them but courts have rewarded applied science (a product,
process) rather than theoretical ideas
o furthermore, discoveries of the “laws of nature” are not patentable
although both the US and Canada have similar definitions for patentable inventions they
interpret the definition differently
the US provision includes anyone who “discovers” and therefore more patents are given in
the US than in Canada
there is also a global standard for inventions and patentability that is stated in article 27 of
the TRIPs agreement:
o article 27:
 “patents shall be available for any inventions, whether products or processes,
in all fields of technology, provided that they are new, involve an inventive
step, and are capable of industrial application”
 “industrial application” is synonymous with the reproducibility of the process
(therefore the invention must not be a fluke)
o also in article 27 are exceptions to patentability:
 plants, animals, inventions that would endanger public order or morality
 diagnostic, therapeutic and surgical methods for the treatment of
humans/animals
 inventions that are prejudicial to the environment, plant life or health, or
human and animal life
Thus from a combined reading of s.2, s.27(8) and article 27 there are two types of inventions,
those that are patentable under s.2 and those that are not (s.27(8) and TRIPs article 27)
Non-patentable inventions:
o Discoveries of the “laws of nature”
 These claims are struck down on the argument that the discoverers of the
laws of nature are not the inventors of the laws
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EST and cDNA are from nature but are patentable under physical matter
since they are composed of pure chemicals (Rothstein in Harvard Mouse)
One anomaly is that Tungsten does not naturally occur in nature and yet the
court refused to grant a patent for the product while granting a patent for the
process to purify it (the court refused to grant a monopoly for policy reasons)
Patents are granted for applied science, but not for science per se.
 E.g. Drug to treat diabetes – Can patent the actual drug w/o knowing
how it works exactly. Then, find out how it works – That is just a
discovery, not patentable. Can only file a new patent if drug has a
separate use (i.e. based on applicability).
o
professional skills – Lawson v. Commissioner of Patents (subdivision of land into
champagne glass shaped lots)
 Cattanach – professional skills are not patentable since they are not a
manual art or skill and instead belong to the professional field. The
subdivision of the land through an ingenious method is not a manufacture
since it does not change the character of the land. Therefore in this case
professional skills where not an art or manufacture that would be the subject
matter of a patent.
 If this ratio is applied to other skills, methods of doing something that does
not result in a vendible product, i.e. a scheme or plan, result by means of
person’s interpretive or judgmental reasoning, i.e. own skill (Surgical
methods – Different in the US) would be unpatentable
o
aggregations and combinations
 combinations (have a synergistic effect) may be patentable
 aggregations (maintain their separate effects) are unpatentable
 the distinction between aggregations and combinations is the important issue
 A combination (patentable) must compose of elements cooperating
and interacting to give a novel, unified (Domtar), and non-obvious
result (was it obvious to a person skilled in the art).
o Domtar:
 The combination of integers or common and known
elements must function cooperatively to achieve a
new unitary result
 The unified result must be greater than the sum of the parts or the
elements put together
 Lord Tomlin in British Celanese:
o The mere placing of old integers so that each performs its
own function independently of any others is not patentable
(eg. Williams v. Nye - Sausage machine where two
machines were just placed in tandem)
o Where the old integers when placed together have some
working interrelation producing a new or improved result
(must be unobvious to someone skilled in the art), this
combination is patentable subject mater
o
computer-related subject matter
 generally computer programs involving calculations are unpatentable
 Schlumberger
Patents Summary
Mgbeoji
W2003, Osgoode
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The court equated the computer program to newly discovered
mathematical formulae which cannot be patented b/c if done by
humans they would purely mental and not the proper subject matter
of a patent. (but there is a loop-hole - if the calculations could not be
done by humans, would the program be patentable?)
b/c of this restrictive approach and the loop-hole the Patent board has issued
guidelines on computer-related subject matter:
 unapplied mathematical formulae are equivalent to mere scientific
principles or abstract theorems and are unpatentable due to s.27(8)
 the use of a computer or computer program does not effect the
patentability of the claim
 new and useful processes incorporating a computer program or an
apparatus incorporating a computer program is only patentable if the
computer-related subject matter falls within an area which is
traditionally patentable
medical procedures or methods of medical treatment (controversial)
 the problem is determining the boundary between medical products
(patentable) and medical methods (unpatentable)
 Tennessee Eastman, Application for Patent of Wayne State University
 Tennessee Eastman (1970) Exchequer Ct of Can
o Methods of medical treatment are not manual or productive
arts nor, when applied to the human body, does it produce a
result in relation to trade, commerce or industry or a result
that is essentially economic (no economic utility). In this
case the method (new use for surgical purposes of a known
substance) lied in the professional field of surgery and
medical treatment of the human body even though the
method may be applied at times by persons not in that field.
 Tennessee Eastman (1974) SCC
o Claim in Q was a surgical method using a particular (old)
compound for bonding tissue. No limitation in method
claim on the process by which compound was made.
o Professional skill does not come under the PA
o The court stated under s.41 that “the therapeutic use cannot
be claimed by a process claim apart from the substance itself
(if it was intended for food or medicine). S.41 is no longer
part of the PA. As well, both methods of medical treatment
and surgical treatment are not patentable “processes” and
“inventions” under the Patent Act.
 Re Application for Patent of Wayne State University (1988) Patent
Appeal Board and Commissioner of Patents
o Here the court reversed the decision in Tennessee and said
that the new use of a known medical compound may be
entitled to patent protection and are separate from method of
medical treatment claims which require professional skill
and judgement and are thus unpatentable. The court further
stated that the patent deals with an economic area related to
trade (the sale of drugs) and thus has utility, which can be
Patents Summary
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distinguished from surgery which is non-economic and nontrade related.
In the US patents are denied for the performance of a medical or surgical
procedure on the body (s.287 and Pallin v. Singer)
Diagnostic kits have been patentable (Re Goldenberg)
Method of administering a vaccine was unpatentable (Re Ackerman)
In Australia the courts have validated patents on medical procedures and said
that processes for the cosmetic appearance of the body are patentable while
processes for the treatment of disease are unpatentable (Joos v.
Commissioner of Patents). The problem then becomes determining
cosmetic appearance from disease (Bristol-Myers Squibb [2000] AIPC 91.
In determining if a medical method is patentable:
 Think of the Claims
o A method of treating diabetes comprising of administering
and effective amount of insulin to a patient in need thereof.
(NOT PATENTABLE).
o A use of insulin in the treatment of diabetes.
(PATENTABLE)
 Think of the Jurisdiction
 In the US, not caught up in semantics. Methods of medical
treatment are patentable in the U.S.
 However, during Clinton era, the US has passed a law that
inhibits the enforcement of method of medical treatment
claims against physicians per se (obvious public concerns)
Are Life Forms patentable?
 Until 1980 transgenic life forms were not juridical inventions
 Diamond v. Chakrabarty (US )
 First product patent for a life form as all patents prior were given to
processes utilizing life forms
 The man made life forms consisted of genetically modified bacteria (a
new life form that was not naturally occuring) that could degrade oil
 The court stated that “manufacture” and “composition of matter” should
be given a broad scope and the application for a non-naturally occurring
manufacture of composition of matter that was a product of human
ingenuity having a distinctive name, character and use
 Congress must determine the limits of patentability and not the courts
 Re Application of Abitibi Co. (1982) Can. – Chakrabarty comes to Canada
 The application in this case was for a product patent for a mixture of
previously known strains of yeast that were acclimatized to digest sulfite
from pulp plants
 The court stated that higher life forms such as yeasts will be patentable
and other life forms that are produced en masse as chemical compounds
in large quantities and that possess uniform properties and characteristics
will be patentable
 The organisms created must not occur naturally and it must be
sufficiently different from known species and thus possess inventive
ingenuity, as well, it must also be useful
 In order to fulfil the “disclosure” requirement in the specification (s.36
now s.27) for life forms they must be deposited in a registry
Patents Summary
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S.36 (now s.27) requires that someone skilled in the art but be able to
reproduce it
Pioneer Hi-Bred v. Commissioner of Patents (1987) FCA
 The applicant created a new variety of soybean derived from artificial
cross-breeding but cultivated naturally.
 The court stated that new plant varieties do not come within the meaning
of s.2 under “manufacture” and “composition of matter” and cannot
comply with s.27(3) regarding disclosure b/c too much luck was
involved in it’s creation
 The court stated that the legislature left out plants from the Patent Act b/c
they didn’t intend the PA to cover plant strains, varieties or hybrids
Pioneer Hi-Bred v. Commissioner of Patents (1989) SCC
 The court distinguished hybridization in this case from transgenic
intervention but rejected patentability on the failure of adequate
disclosure under s.27(3)
 The cross-breeding was the only inventive work and since this procedure
was not disclosed adequately (due to the element of luck involved in
successful cross-breeding) the application is rejected
 The court cannot “stretch the scope of patent protection beyond the limits
of existing legislation” on disclosures
Harvard College v. Commissioner of Patents (2000) FCA
 Rothstein, Linden said that an oncomouse is unobvious, a new and useful
composition of matter and thus an invention and the they did not go into
the analysis of whether the oncomouse was a manufacture
 Ikechi says that Rothstein was wrong to equate the ingenuity of a product
to its ingenious process of manufacture
 The commissioner rejected the patent by saying there where different
criteria to apply to claims of higher life forms compared to lower life
forms
 The commissioner said that in making the mouse there is no human
interaction in it’s development and that “composition” and
“manufacture” means that the mode is under the control of the inventor
and is consistently reproducible
 The court said that transgenic unicellular material such as a fertilized
mouse egg injected with an oncogene is a composition of matter since
both the DNA and the fertilized egg are forms of matter
 The use of the laws of nature (breeding mice) do not invalidate a patent
when it includes both the laws of nature and human ingenuity
 The fact that the mouse could occur naturally in nature does not negate
the patentability of the oncomouse
 Usefullness includes control and reproducibility of the art/process
(Organon) and the product (Oncomouse Fed).
 Usefulness requires control over the final product regarding the useful
trait
Commissioner of Patents v. Harvard College (2002) SCC
 Majority:
 The Patent Commissioner cannot refuse patents based on policy
reasons (s.40)
Patents Summary
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The majority said that higher life forms are not a manufacture
or composition of matter
 Lower life forms are compositions of matter and a
manufacture b/c they can be produced in large numbers with
uniform properties and characteristics
 The Patent Act does not include without limit “anything new
and useful that is made by man”
 The definition of “invention” under s.2 of the Patent Act is
exhaustive and is commonly understood to denote a nonliving mechanistic product or process
 Both cross-breeding and genetic manipulation result
 Patenting life forms would involve a radical departure from
the traditional patent regime and clearer legislation is required
on the matter
 The enactment of the Plant Breeder’s Right Act implies that a
similar scheme should be in place for higher life forms to be
patentable
 The court should not delineate the line of patentability between
higher and lower life forms
 The fact that the Patent Act in its current state is ill-equipped to
deal appropriately with higher life forms as patentable subject
matter is an indication that Parliament never intended the
definition of invention to extend to this type of subject matter
 CBAC – Canadian Biotech Advisory Committee
 Parliament and not the courts should determine
whether and to what degree patent rights ought to
extend to plants and animals
 This could lead to the commodification of human being which
could not prevented by s.7 of the Charter since foetuses are not
legal person
Minority:
 The oncomouse should be patentable since the egg is patentable
(the final product of the egg should be patentable)
 Human modification of the genetic material of the mouse is an
inventive composition of matter under s.2
 The Patent Commissioner cannot deny a patent b/c of public
interest and s.40 of the Patent Act prevents these activities
 Canada should harmonize its IP laws with other countries which
have granted patent to the oncomouse
 Patents should not be denied due to public policy b/c parliament
did not include a clause in the Act stating that patents could be
denied due to public policy
 The Patent Act is intended to promote R&D such as the
oncomouse
 Patents help drive inventions in the Biotech sector
 The oncomouse creators did not merely “uncover” a naturally
occurring oncomouse and the complexity of the genetic splicing
did not “follow” the laws of nature
 Connaught – cell lines are patentable
Patents Summary
Mgbeoji
W2003, Osgoode
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Burger from Chakrabartty:
 The proper distinction is not between the living and
inanimate but between the discovery of a product of nature
and human-made invention
 Both higher and lower life forms are compositions of matter (genetic
material is chemical matter and mouse eggs are biological matter)
 If the mouse is not matter than what is it made of?
 How do you define higher life form?
 Animal rights can be protected by other acts
 Laws of nature of are a part of most inventions and shouldn’t deny
patentability (eg. Drugs use natural processes yet are patentable)
 There should be a TRIPs balancing act (the benefit of mankind
should outweigh the harm to animals and the uncontrolled
dissemination of unwanted genes)
Summary of the patentability of life forms in Canada
 Unicellular transgenic organisms are patentable
 Multi-cellular animal organisms are not
 Cell lines, and other genetic materials are patentable
 Transgenic algae and fungi are patentable
From s.2 – inventiveness is determined by two concepts, novelty and inventive ingenuity
b) Novelty
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“Absolute novelty” in most countries – i.e. not publicly disclosed (e.g. a casual
conversation), not already in the public domain, thus novelty requires that the subject of a
patent application to be new in relation to similar products (this can be on a global, or
national scale, in Canada the claimed invention must be novel on a global scale, in the US
it must be novel in the US and not described in any written form outside the US)
Test for absolute novelty s.28.2(1):
 No prior application pending describing the same invention
 No prior application of the same invention due to a convention filing date
 A 3rd party does not disclose to the public
 The applicant has up to one year after disclosure to the public (available to the
public) to file the patent
 Available to the public
 The disclosure of the invention to one person nonconfidentially puts the
invention in the public domain and unpatentable (Gibson)
 Anticipation becomes an issue when the invention is available to the public
The principle of anticipation is related to novelty and will deny patentability of an invention
on the basis that info/knowledge is part of the “prior art” or is available to the public
 Anticipation test (defence to infringement of the patent by claiming the patent is
invalid due to anticipation or that the infringing patent is in the prior art and
does not infringe – both arguments are the Gilette defence):
 Invalidating of patents through anticipation is done under s.34.1(1) after
publication of the pending application
 “Prior art” consists of the body of knowledge in the specific field in
issue ordinarily known and available to the average person working in
Patents Summary
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that relevant and specific field of knowledge and is thus narrower than
the “public domain”
An invention is anticipated if prior to the filing of the application,
another patent, document and/or reliable information had previously
described, embodied or put in public use that alleged invention
Thus the idea expressed in the invention was already disclosed to
persons skilled in that art (Beloit) and it is immaterial that the inventor
is unaware of the prior description
The claimed invention is an ingenious combination and not a mere
aggregation of previously known components (Electro Sante)
Does this include oral disclosure of the invention?
 The law is unsettled in this matter
 Tenneco Chemicals – oral disclosure will invalidate a patent
on the grounds of anticipation
 Electro Sante – oral disclosure might not invalidate a patent
on the grounds of anticipation
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Limits on anticipation:
 Mosaicism:
 Mosaicism, or the gathering of various references in order to
compose a composite case of anticipation is not permitted
to prove anticipation although it may be permitted in
proving obviousness
 There must be a single document or invention that anticipates
the invention
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Overall anticipation test from Baker Petrolite:
 The prior art or info disclosed to the public must:
 Give an exact description
 Give directions which will inevitably result in something
within the claims
 Give clear and unmistakable directions
 Be contained in a single doc
 Give info equivalent to the subject patent
 Gives the reader of the doc what they wish
 Product containing invention is sold to any member of
the public who is free to use it as they please
 An exact copy does not have to be disclosed to the public
but the disclosed item must fall within the claim of the
patent
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The Anticipation requirement to invalidate a patent is hard to fulfill
Invalidating a patent under novelty due to “prior use”
 Prior use by public experimentation does not invalidate a patent (Gibney Motor)
 Mere sale or public use of black-box inventions will invalidate the patent (Risi Stone)
 The prior sale must also be an “enabling disclosure” for example, the purchaser must
be able to discover the invention through analysis of the product although actual
evidence of this is not necessary (Canwell v. Baker Electrolite)
Patents Summary
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But - one-year grace period in the Canada and US for disclosures by the inventor (w.r. to
filing)
“On sale” bar in the US – more complicated than case in Canada. Simply offering to sell the
invention (but not discussing it) can start the clock ticking. BL: Beware of timing.
Most countries are on a “first-to-file” system – Canada is, but US is not.
Baker Petrolite v. Canwell Enviro-Industries Ltd. (2002) FCA
c) Inventive ingenuity (Inventiveness, test for unobviousness)
The invention cannot be “obvious” – would a “person of ordinary skill in the art” be able to come
up with the invention without “undue experimentation”? (also called wertuitel in Germany) – if
yes – then there is no inventive ingenuity. Thus a patent must be both novel and unobvious
Inventiveness is based on the obviousness test
The obviousness test is in s.28.3 of Patent Act (added in 1993)
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This test is very subjective and judge-based
S.28.3
o The subject matter defined by a claim in an application must not have been
obvious on the claim date to person skilled in the art or science to which it
pertains, having regard to:
 Info disclosed >1 yr before the filing date or by a person who obtained
knowledge, directly/indirectly, from the applicant in such a manner so
that it is available to the public in Canada or elsewhere and
 Info disclosed before the claim date by a person not mentioned above so
that the info is available to the public in Canada or elsewhere
 Public in the above means, “a specialized group of persons skilled in the
relevant art or science and not the ordinary public”
Factors the court consider in determining non-obviousness:
o Is the alleged invention novel and superior to what was available until then
o Has it been widely used in preference to alternate devices
o Have competitors or experts in the field ever thought of anything like it
o Did amazement follow its public disclosure
o Was it a commercial success
Irrelevant factors in determining non-obviousness:
o The amount of effort the invention took
o The invention was due to luck
Overall test for obviousness (Beloit):
o Whether a skilled but unimaginative technician would have come directly
and w/o difficulty to the solution taught by the patent
The difficulty is determining “mere improvements” on one end of the scale over
“inventive spark or genius”
After a patent is granted the onus is the person invalidating the patent to prove that the
patent is obvious or lacks inventiveness
The prior art is reviewed and its cumulative effect weighed
Obviousness is not anticipation!!!
Pioneering inventions are of the “inventive spark” kind and are easy to distinguish
The judge must compare the patent application with the current state of the art and thus
must make a judgment on the quantum of the inventiveness
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There can be inventive ingenuity in the discovery of a new use for an old compound
Note the patent system must be liberal to encourage improvement
e) Utility
Test for utility (this test must be passed during the application process):
 The invention, at the date of the application, must perform or produce whatever
is claimed as described in its specification. Furthermore, an invention has utility
if someone skilled in the art could take the specification and construct the
apparatus that would answer some beneficial purpose (X v. Commissioner of
Patents). Limitations on operability must be disclosed in the claims (Monsanto)
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The applicant must disclose all info that will enable the invention to be put into
effect. If this is in doubt the examiner can request that a model be submitted. The
invention must solve the problem as stated in the specification. Inutility for the
purpose of the patent will invalidate the patent.
Utility means industrial value, “the invention gives either a new article, a or a better
article, or a cheaper article, or affords the public a useful choice” (Consolboard).
The patent cannot be for worthless art.
The invention must be reducible to a workable artifice, or product, process or
composition of matter (X v. Commissioner of Patents).
The specification must enable a person skilled in the art to “make, construct,
compound, or use the invention (X. v. Commissioner of Patents).
In determining utility the entire specification must be read and construed with a view
to determining what the whole of the patent would have meant to a skilled
workperson as of the date the claims were filed (Hughes & Woodley).
Commercial success will not automatically validate the utility of an invention.
Conversely, future required modifications of the invention to ensure operability will
not invalidate a patent if the invention worked on the claim date. Manufacturer
preference as the sole reason for the patent will not satisfy the utility requirement
(Mailman v. Gillette). Potential harmful devices will not necessarily be lacking in
utility. A backward step in development may also pass the utility test.
Specifications
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Section 27(3) Patent Act contains two parts the, description and the claims
S.27(3) the description/disclosure (enables construction and use of the patented device
after the patent expires):
 The specification of an invention must:
 a) Correctly and fully describe the invention and its operation or use as
contemplated by the inventor;
 b) Set out clearly the various steps in a process, or the method of
constructing, making, compounding or using a machine, manufacture or
composition of matter, in such full, clear, concise and exact terms as to
enable any person skilled in the art or science to which it pertains, or
with which it is most closely connected to make, construct, compound or
use it;
Patents Summary
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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
s.27(4) the claims (the legal boundary of the monopoly):
 the specification must end with a claim or claims defining distinctly and in
explicit terms the subject-matter of the invention from other inventions
Although the patentee must disclose a description of the invention they don’t have to disclose
the inventive genius (Consolboard)
The origin of the specification can be traced back to Lord Mansfield comments in Liardet v.
Johnson (1778) where he said that the, “specifications 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”
The description (general comments):
 Must describe the invention and its operation or use as contemplated by the inventor
 Must be clear and accurate, and should be as simple, direct, and free from obscurity and
ambiguity as possible
 Is addressed to persons skilled in the art or science to which the invention pertains, and
must be so written that those persons would be able to put the invention to the same
successful use as had the inventor (i.e. must be complete enough) – Does not mean that
invention has to be used b/f you file for a patent
The court’s construction of the Description/disclosure
 The court views the disclosures from the intellectual perspective of the person skilled in the
relevant art (Electro Sante)
 Outside or extrinsic evidence is not consulted during the process although technical
vocabulary and expert evidence may be used to explain the terms of the disclosure
 Disclosures that inadequately describe the invention by requiring the person skilled in the art
to unduly experiment with the invention to achieve the described result will invalidate a
patent due to Insufficiency
 An honest put potentially misleading statement may not invalidate a patent if it would not
have misled a person skilled in the art
 The court must be fair to both the inventor and the public (Consolboard v. Macmillan)
Disclosure and biotechnology (s.38(1))
 “when the invention is a composition of matter, the applicant, if required by the
Commissioner, shal furnish specimens of the ingredients, and of the composition, sufficient
in quantity for the purpose of experiment
“Best Mode” disclosure:
 “best mode” is referenced to the claims and the state of the art at the claimed date
The “Bargain” justification for disclosure through the specification – Disclosure of
invention to public for monopoly type right to the inventor
Often referred to as the quid pro quo of patents
 In exchange for the inventor’s full disclosure of the invention, the inventor is given an
exclusive right to prevent others from making, selling, or using the invention for a fixed term
(i.e. a monopoly)
Lamer J., Pioneer Hi-Bred (1989), SCC
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Patents Summary
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“The inventor must, in return for the grant of a patent, give to the public an adequate description
of the invention with sufficiently complete and accurate details as will enable a workman, skilled
in the art to which the invention relates, to construct or use that invention when the period of the
monopoly has expired.”
Infringement of Patents
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After a patent is issued there is a presumption that the patent is valid (s.43(2))
A patent is infringed when anyone, w/o the permission of the patentee, “makes”, or
“constructs” or “uses” or “sells” the patented invention (s.42)
Patent infringement suits can be brought in the jurisdiction in which the infringement is said
to have occurred (s.54)
The patent infringer is liable to the patentee for “all damages sustained by the patentee, by
reason of the infringement” (s.55)
There is a 6 yr limitation, from the time of the infringing act, to bring an action of
infringement (s.55.01)
The court can issue equitable injunctions restraining the infringer from further use,
manufacture or sale s.57(1)
Infringement does not require intention
Other remedies include “inspection” and “accounting” of the proceeds of infringement
The Claims are the basis of determining infringement
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Since the claims define the legal monopoly they are usually drafted in broad terms to catch all
potential infringers (eg. In Harvard mouse the claim covers all non-human animals but the
actual product is a mouse)
Claim construction (question of law) and whether the infringer’s actions (question of fact) fall
under the scope of the claims are the major factors in determining patent infringement
US approach to claim construction and infringement:
o The claim construction method is called the “doctrine of equivalents” and
infringement involves “taking the pith and marrow” and leaving aside “useless
embodiments” of the invention
o This method hinges on determining the essential elements of the invention and
whether the potential infringer has appropriated these elements regardless of the
description and claims of the infringing invention (thus the substance of the claim
is infringed where the offending article is the equivalent of the original)
o Equivalence is determined at the time of infringment
o This method has been adopted previously in Canada in McPhar:
 Here the defendant achieved the same result in the infringing invention
by changing a non-essential element of the original invention and thus
took the “substance” of the invention
 The infringing patentee can only rely on the doctrine of equivalence
defence if the equivalent elements are non-essential to their invention
Canadian purposive approach
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The Canadian purposive approach to claim construction and infringement (the same test is
used in validity – Whirlpool)
Patents Summary
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Mgbeoji
W2003, Osgoode
In Canada, the claims define the legal boundary of the state-conferred monopoly
rather than the substance
The starting point of this approach is to determine the words/phrases in the claim
that describe what the inventor considers to be essential elements of the invention
(Whirlpool v. Canco)
These words/phrases are then construed to determine their intended meanings by
the inventor which can lead to either a pro-patentee or pro-infringer construction
(Whirlpool)
This can also lead to either an expansion or constriction of the literal text in the
claim (Whirlpool)
Unlike the US however outside or extrinsic evidence is not allowed in
determining the meaning of the claims or the intent of the patentee
This leads to a determination of the essential and non-essential elements of the
claim which the court then uses to determine infringement (Free World)
The essentiality (substitutability) of elements can also be determined by reference
to a person skilled in the art after reading the application (Free World)
Non-essential elements are substitutable leading to possible infringement by the
defendant patentee while substitution of an essential element will the take the
offending patent outside of the scope of the patent and thus there is no
infringement
The purposive approach to claim construction however, is also tempered by the
predictability requirement which ties the patentee to their claims and, by
fairness, by interpreting the claims in an informed and purposive way (Free
World)
Innocent infringement and intent of the infringer
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Genetic patents challenge the traditional notion of infringement since infringement can be
due to the forces of nature
Monsanto v. Schmeiser (2001) FCC
o A person may be liable for patent infringement even where genetic pollution or
promiscuity lead to the infringement and was beyond the control of the alleged
infringer
Inducing infringement
This occurs when a person does something that leads another person to directly infringe a patent.
In Windsurfing the court stated that a party (non-patent holder) is guilty of procurement to
infringe when they sell a patented invention that can be assembled by the purchaser to create the
patented invention.—see also Beloit
Defences to Infringement
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Bona fide experimental use (see Gibney above)
S.56 defense
o An invention acquired prior to the Canadian or other previously filed application
for the same invention does not infringe
o Merck v. Apotex (1995) FCA
 The court in this case looked at the definition of “specific article” in s.56
Patents Summary
Mgbeoji
W2003, Osgoode
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“Specific article: has broad meaning and the court must look to the
purpose and utility of the patent in granting immunity. A patent in a
different form but with the same original purpose will still be granted
immunity under s.56 if acquired prior to the application date. A change
in the form of the patented product after granting its immunity under s.56
will not invalidate immunity if the purpose of the product is not changed.
The original patent is invalid due to:
o Known in the prior art by being anticipated or obvious
o Non-patentable subject matter (see above)
o Non-utility (see above)
o Novelty (see above)
Remedies for Infringement
Accounting for Profit
Beloit v. Valmet
 court always has jurisdiction to award the equitable remedy of accounting of profits.
Section 57.1 B of the Patent Act and the Federal Court Act explicitly grant this authority.
 The accounting of profits is a discretionary remedy--delay, misconduct, etc. may prevent
accounting from being awarded.
 In this case, patent validity was litigated, patent held invalid at trial, defendant entered into
profitable contracts after trial, plaintiff appealed successfully--defendant must
compensate plaintiff for infringement, but accounting for profits not granted.
Accounting Discretionary, but Only Witheld for Good Reason
Merck v. Apotex
 granting of remedy of accounting of profits is not automatic, but there's no reason to
deny the request of successful plaintiff ( where the plaintiff has elected for profits
rather than damages-- a bifurcation order)
 While accounting of profits is discretionary, if it is sought as is a remedy for patent
infringement is ordinarily awarded unless there be circumstances that would
warrant withholding it from a successful plaintiff.
 Note defendants argued that profits from their efficiency not infringement--This was held
irrelevant. Also long length of prosecution of the patent-- 11 years--was not sufficient to
warrant refusing election for profits rather than damages
Interlocutory Injunctions for Patent Infringement
Proctor and Gamble v. Nabisco
 -interlocutory injunction available when damages at the common law would not be an
adequate remedy--for example, irreparable harm to the plaintiff, defendant would be
unable to pay damages after trial
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-historically, interlocutory injunction to restrain infringement would not be granted if the
defendant also was attacking the validity of the patent. --But now, the granting of a patent
provides good reason for supposing the patent to be valid, rendering obsolete the former
Patents Summary
Mgbeoji
W2003, Osgoode
regarding interlocutory injunctions in actions for infringements--no special rules
anymore for injunctions regarding patent infringement, now it’s the same as other
interlocutory injunctions
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