Fall
2010
Patents
Christopher Scott
Outline for LAW 366 A01, as taught by Professors Michael Manson and Steven Ferance
University of Victoria Faculty of Law
Patents
Table of Contents
POLICY, BACKGROUND AND OVERVIEW
1
VALIDITY
2
Statutory Subject Matter
2
Utility
3
Sufficiency of Specification
3
Novelty
4
Obviousness
5
Critical Dates for Validity
5
Other Concepts – Presumptions, Requirements, and Fraud
5
SPECIALIZED FIELDS OF PATENT PROTECTION
6
Biotech and Pharmaceutical Patents
6
Computer-Related Inventions and Business Methods
6
CLAIM CONSTRUCTION
7
INFRINGEMENT, REMEDIES AND DEFENCES
8
Infringement
8
Remedies
8
Defences
9
Critical Dates for Infringement
9
US PRACTICE
9
LICENSING OF PATENTS
10
i
Patents
Policy, Background and Overview
•
•
•
•
Policy: Social contract of the patent system: inventors get a monopoly (s. 42) for a period of time
(s. 44), and in turn give their knowledge to the public in a reproducible manner:
o Quote: The specification of an invention must
(PA s. 27(3))
 (a) correctly and fully describe the invention and its operation or use …
 (b) set out clearly the various steps … in such full, clear, concise and exact terms as to
enable any person skilled in the art … to make, construct, compound or use it;
 (c) in the case of a machine, explain the principle of the machine and the best mode in
which the inventor has contemplated the application of that principle; and
 (d) in the case of a process, explain the necessary sequence, if any, of the various steps, so
as to distinguish the invention from other inventions.
o Quote: The specification must end with … claims defining distinctly and in explicit terms the
subject-matter of the invention for which an exclusive privilege … is claimed.
(PA s. 27(4))
History: Patent law as we know it began in England, based on the existing European practice of
granting "letters patent" (monopoly rights over arbitrary, often old industries):
o 1601: Elizabeth I transfers jurisdiction on patents from Star Chamber to common law courts.
 Soon, in Darcy's Case, courts were complaining about letters patent being granted over old
industries (thus impeding innovation and progress)
o 1623: Statute of Monopolies rendered all existing letters patent void because of their anticompetitive nature, except for "any manner of new manufacture" (i.e. inventions)
 The term was 14 years, and vested in the inventor.
o 1700s: Introduced disclosure requirements
o 1869: Canada introduces a federal patent statute, but models it after the US Patent Act (1836)
 nb – Despite this, Canadian courts often apply UK case law to our patent law, sometimes
even when the statutory wording is not similar between the UK/Canada statutes.
Requirements and grounds for invalidity of a patent:
o Novel: The invention can’t be previously disclosed (unless by inventor – special rules) (PA s. 28.2)
o Non-obvious: An objective inquiry taking place on the claim date
(PA s. 28.3)
 Prof.: Takes place on the claim date to avoid hindsight analysis. Low standard to meet.
o Utility: The claims achieve the desired result (described in the patent spec.) (PA s. 2 “invention”)
 Reproducibility is a factor here. Perhaps why professional skills are not patentable? (Lawson)
o Sufficiency: Must disclose enough for those skilled in the art to reproduce it
(PA s. 27(3)(b))
o Best Mode: The inventor must disclose the preferred method of use of a machine (PA s. 27(3)(c))
o Ambiguity: This ground of attack almost never succeeds, but it is provided for
(PA s. 27(4))
o Material Allegation: This provision has never been successfully plead – Even where two
people stole an invention and patented it, the court refused to apply it, instead choosing to allow
the inventorship to be corrected (i.e. replace the applicants with the real inventors) (PA s. 53(1))
Term of Patent Protection: For patent applications filed after 1 Oct 1989 (which is all active
patents, now), the term of protection is 20 years
(PA s. 44)
o If maintenance fees are not paid, it may expire early.
(PA s. 46)
1
Patents
Validity
•
The first step of validity analysis is construing the claims. See Claim Construction, p. 7.
Statutory Subject Matter
•
See Apotex, p. 3; distinguishing between
predictable and unpredictable arts
•
The PA allows patents to be granted for “inventions”, which is defined to mean “any new and
useful art, process, machine, manufacture or composition of matter” (exhaustive list)
(PA s. 2)
o This list is exhaustive, and isn’t so broad as to include everything created by man(Harvard Mouse)
o The Registrar has no public interest discretion to reject applications (Harvard Mouse, c.f. s. 40)
Art: This has multiple definitions.
o Narrow Definition: "An art or operation is an act or series of acts performed by some physical
agent upon some physical object and producing in such object some change either of
character or of condition."
(Lawson)
 This definition is inclusive, but not exhaustive. Satisfying this test makes it an art, but
failing this test does not preclude it from being an art. Move to the broader test. (Progressive)
o Broad Definition: Art must be given its general meaning of learning and knowledge. (Shell Oil)
 Thus, "Art" applies to new methods of applying skill or knowledge provided that they
produce results that are commercially useful to the public.
(Shell Oil)
 Example: Known substance has a new use as a plant growth regulator. Art.
(Shell Oil)
 Exception: A new surgical use of a known substance is not an “art”
(Eastman)
 Prof: This decision was complicated by PA s. 41 [now repealed], which prohibited
claims for medical compounds other than product-by-process claims. Court viewed
new-use claims as attempts to circumvent s. 41. Post-repeal, CIPO still won’t grant.
 Three-step test for determining whether it’s an “art”:
(Progressive, aff’d Amazon)
 Not a disembodied idea but has a method of practical application;
 Example: Manipulating physical cards satisfies this
(Progressive)
 A new and innovative method of applying skill or knowledge; and
 This is described as “a contribution … to the cumulative wisdom on the subject”
 Prof: This is mixing in novelty and non-obviousness requirements; blurring the lines
 Example: New rules for a variation of poker; not contributing to the cumulative
wisdom of games, and thus not an art.
(Progressive)
 Has a result or effect that is commercially useful.
 Example: Satisfied by evidence of licensing
(Progressive)
o Professional Skills: These are not useful arts, and so are not statutory subject matter. (Lawson)
 Unclear Law: Are they excluded because they are not arts, or because are not useful?
 UK: Professional skills aren't patentable because they aren't reproducible (rely on gut
feelings, etc.). This is a utility issue.
(Lawson? See next note)
 Prof: Lawson may have been applying UK law here (but it shouldn’t – UK statutes
are different, and should only be applied where the language is similar – Eastman)
 Example: New surgical use discovered for an old adhesive compound. Not an “art”(Eastman)
 This was later recharacterized as the court rejecting the claim as a professional skill
because it did not relate to “trade, industry or commerce” (i.e. wasn’t useful),
without deciding whether it was an art, so professional skills may be arts.
(Shell Oil)
 Prof: In light of Shell Oil, we could say that a reproducibly-claimed art is not a
professional skill, and thus can be claimed (even if a series of human actions)
Process: This really means “method”, which falls under “art” (nb: what about effectivity?) (Lawson)
Manufacture: "a non-living mechanistic product or process"
(Harvard Mouse)
o A higher life form is not a manufacture within the meaning of the PA
(Harvard Mouse)
Composition of Matter: "A substance or preparation formed by combination or mixture of various
•
•
•
2
Patents
ingredients" by the inventor.
(Harvard Mouse)
o A higher life form is not a composition of matter within the meaning of the PA (Harvard Mouse)
o Example: Genetically-manipulated oncomouse is not a composition of matter because,
although the modified gametes are compositions (obiter), the oncomouse matures through a
complex process that requires no human intervention.
(Harvard Mouse)
o Lower life forms (microorganisms, identical mass-produced life) may be patentable
(Abitibi)
o Microscopic vs. Macroscopic Claims: A microscopic claim (e.g. of a plant gene) can impose a
macroscopic restriction (e.g. on the plant). Macroscopic acts infringe microscopic claims.(Monsanto)
Utility
•
•
Required by PA s. 2, in defining “invention” (“useful”)
"Not useful" means that the invention will not work, in that it either doesn't do anything at all
(general utility), or fails to do what the specification says it does (promised utility) (Consolboard)
o "Usefulness" doesn't require that it be better than (or even as good as) the prior art (Consolboard)
o Every claim must meet every object of the invention.
(Amfac)
o Example: Specification states that it is a “primary objective” of the invention to produce
uniform fries from the center of the potato. Claim 16 doesn’t include the apparatus to strip off
the outside (but still makes fries). Invalid – lacks the promised (or “specific”) utility
(Amfac)
 Note: A specification can refer to a "preferred embodiment" of the invention without it
being considered an object of the invention. This is a good idea, to avoid invalidity. (Amfac)
Where a non-useful embodiment is encompassed by the claims, there is diverging case law:
o If the claim encompasses a non-useful embodiment, it is invalid – even if no person skilled in
the art would ever use that embodiment.
(Mineral Separation)
o A claim is not invalid merely because it encompasses a non-useful embodiment; there must be
something "positively pointing towards something useless"
(Proctor & Gamble)
o Prof: Proctor & Gamble is more recent and applied more commonly, but Mineral Separation
still “lurks in the background”. Apply both.
Sufficiency of Specification
•
•
•
•
•
Is this relevant to the
professional skills issue?
•
Distinct from Utility: Utility and sufficiency should not be blurred into each other.
(Consolboard)
Sufficiency of Disclosure: The specification to be sufficient in two ways:
(PA s. 27(3))
o Enablement: It must enable a person skilled in the art to make/use/etc. the invention(PA s. 27(3)(b))
 That person is permitted to conduct simple trials and experimentation in determining how
to make/use/etc. it, so long as they are empirical tests that any ordinarily skilled workman
in that field is capable of and they do not require any inventive ingenuity (Proctor & Gamble)
o "Best Mode": For machines only, the best mode of implementation (as known to the inventor
at the time) must be disclosed (and not just a mode of implementation)
(PA s. 27(3)(c))
In Canada, "specification" includes the claims. (In the US, the claims are excluded)
(PA s. 27(4))
Meaning of words: To restrict the meaning of a word, the spec. must be explicit (Mineral Separation)
The court will endeavour to give protection to whatever the patentee has in good faith invented;
they will apply a fair construction, balancing the interests of the public and inventor. (Consolboard)
There is no burden to show utility or novelty in the specification itself
(Consolboard)
o Exception: New Uses: There must also be demonstrated utility or a sound prediction of
utility. A sound prediction of utility requires the following:
(Apotex, aff’g Hewlett Packard)
 Factual basis for the prediction
 Articulable and sound line of reasoning
 Proper disclosure
o Example: Patent for HIV treatment; no in vivo clinical trials, just in vitro. Sound prediction of
utility made out (but it wouldn’t have been if only tested in mice).
(Apotex)
3
Patents
Novelty
•
•
Anticipation: The invention must not have been previously disclosed in the prior art.
(PA s. 28.2)
o Disclosure by Prior Use: Can be by the applicant or others; cannot have made the subjectmatter “available to the public”. See also Critical Dates for Validity, p. 5 (PA ss. 28.2(1)(a), (b))
 Disclosure to a single person who is free to deal with the information as he pleases
suffices as making available to the public.
(Bristol-Myers, aff’d Canwell)
 Sale to [or use by] the public isn’t anticipation unless it is “enabling disclosure”
(Canwell)
 Prior use of a chemical product enables disclosure if its composition can be discovered
through analysis
(Canwell)
 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.
(Canwell)
 It is not necessary for any person to have actually analyzed the product.
(Canwell)
 The amount of time and work involved in the analysis is not determinative
(Canwell)
 The product need not be capable of exact reproduction. The subject matter need only be
disclosed through the analysis, not the specific product being analyzed.
(Canwell)
o Disclosure by Patent Publication: Not harmful if by the applicant.
(PA ss. 28.2(1)(c), (d))
 The prior publication must satisfy one of the following in a single document, without
making a “mosaic” (by combining several documents):
(Canwell, aff’g Free World Trust)
 Give an exact prior description of the present invention
 Give directions that will inevitably result in something within the present claims
 Give clear and unmistakable directions
 Give information which, for the purpose of practical utility, is equal to that given by
the subject patent.
 Convey information so that a person grappling with the same problem must be able to
say "that gives me what I want"
 Give information to a person of ordinary knowledge so that he must at once perceive
the invention
 If no explicit directions are given, it must teach an "inevitable result" which "can only
be proved by experiments"
Test for anticipation by previous publication (nb: This case dealt with a selection patent):
(Sanofi)
o Disclosure: Whether disclosure has occurred is an objective test: the person skilled in the art
reads the entire prior patent (without consulting other references) to determine whether, if
performed, the result would necessarily infringe on the present patent.
(Sanofi)
 They read it together with their own knowledge (and nothing else)
(Sanofi)
 There is no room for trials or experimentation at this stage.
(Sanofi)
 They must be able to produce the claimed invention in every case without error – if there is
a possibility that they would not produce it, no disclosure.
(Sanofi)
o Enablement: A "skilled person must still be able to perform or make the invention of the
second patent without undue burden" (this varies depending on the nature of the patent) (Sanofi)
 Some degree of trial and error is permitted, but it must be short of “inventiveness”
(Sanofi)
4
Patents
Obviousness
•
•
Subject-matter must not have been obvious on the claim date to a person skilled in the art (PA s. 28.3)
o Prior Art: Includes all information disclosed more than one year before the filing date by the
applicant (or a proxy), and all information disclosed before the claim date by anyone else such
that the information had become “available to the public” in Canada/elsewhere
(PA 28.3)
Test for obviousness:
(Sanofi)
o Describe the person skilled in the art:
 Identify the notional person skilled in the art (what do they do?)
 Identify the relevant common general knowledge of that person (what do they know?)
o Identify the inventive concept of the claim in question (or construe it, if necessary)
o Identify the differences between the "state of the art" and the inventive concept of the claim.
o Do these differences constitute steps that would have been obvious to the person skilled in the
art (without any knowledge of claimed invention), or do they require any degree of invention?
 Obvious to try: Was it self-evident to try a certain line of inquiry that would inevitably
lead to the invention?
Critical Dates for Validity
•
s. 28.2 = novelty
s. 28.3 = obviousness
•
•
Claim date: The earliest of the following three dates:
(PA s. 28.1)
o Regular: The date that the application was filed with CIPO
o Convention Priority: The date that the application was filed in a Convention country
 Usually this must be no more than 12 months before Canadian filing
o The date on which a previous application was filed that disclosed these claims (ignore this one)
Filing date: The date that the application was filed with CIPO
Critical Dates for each Type of Prior Art: To be included in the prior art, require the following:
o Public disclosures by the applicant: The publication date of the disclosure must be more than
one year before the filing date of the application.
(PA ss. 28.2(1)(a), 28.3(a))
o Public disclosures by others: The publication date of the disclosure must be prior to the claim
date of the application.
(PA ss. 28.2(1)(b), 28.3(b))
o Copending Canadian patent applications of others:
 The filing date of the copending application must be prior to your claim date(PA s. 28.2(1)(c))
 The claim date of the copending application must be prior to your claim date(PA s. 28.3(1)(d))
 nb – as a practical matter, this is only relevant if the publication date is be after your claim
date (otherwise they would fall under “Public disclosures by others”)
Other Concepts – Presumptions, Requirements, and Fraud
•
•
•
Presumption of Validity: The onus is on the party alleging invalidity to show invalidity (PA s. 43(2))
Need to Address Each and Every Claim: The invalidity of one claim does not affect another(PA s. 58)
Fraud or Material Misrepresentation: Fraud is a basis for invalidity, but…
(PA s. 53)
o Historically, Canada has not had a doctrine of fraud in the patent office.
o Recently, some jurisprudence (from Hughes J!) has found instances of fraud.
5
Patents
Specialized Fields of Patent Protection
Biotech and Pharmaceutical Patents
•
•
•
A higher life form is not a manufacture or a composition of matter, but lower life forms
(microorganisms, identical mass-produced life) may be patentable
(Harvard Mouse)
o Monsanto essentially confirms this (see following point).
Microscopic vs. Macroscopic Claims: A chimeric [non-natural] cell produced through direct
manipulation of genes may be patentable, even if the resulting organism is not.
(Monsanto)
Example: Genetically-manipulated oncomouse is not a composition of matter because, although
the modified gametes are compositions, the oncomouse matures through a complex process that
requires no human intervention. Gametes are patentable, mouse is not.
(Harvard Mouse)
Computer-Related Inventions and Business Methods
•
•
•
•
•
•
•
Form: The form of the claim is decisive; if the form of the claim is a machine claim, but the
essence of it is a method claim, only apply the requirements for a machine claim
(Amazon)
No Distillation: Even if the component of the invention that makes it new and non-obvious is nonstatutory subject-matter, the patent itself isn’t necessarily non-statutory subject matter
(Amazon)
Business methods are patentable.
(Amazon)
Example: Invention is a business method (Amazon's "one-click" purchasing). Patentable
(Amazon)
Example: Invention is software that analyzes data from oil/gas boreholes. Take measurements,
stores them on magnetic tape and applies mathematical formulae which transforms them into userfriendly representations. Not patentable – just an application of formulae.
(Schlumberger)
o Prof: This is a 30-year-old, bad decision. Almost no statutory cites, unclear ratio. Essentially, it
has been confined to its facts – it is often-cited, but never applied. Do not rely on this case.
Comments: What about Lawson and Progressive Games (which say that methods of dividing land
or playing poker are not “arts”)? Are these denying business patents?
Tips on protecting computerized inventions:
o If your invention involves multiple parties (e.g. server-side and end-user), try splitting those
aspects of the invention up into separate claims.
 This is good for cases where you can only show infringement by one party.
o Consider also a "computer-readable medium" claim, which typically corresponds to a method
claim alongside but claims the storage medium itself.
 This is good for cases where a foreign party is importing infringing software on physical
media. Importer, vendor, and user will all be infringing in their sale and use of the medium.
 This does not cover signals; there must be a physical data-storage device representing
 However, once your computer has stored the information, you might be able to sue the
party transmitting the signal for creating an infringing device – your computer!
o A "computer-data signal" is the incorporeal version of computer-readable media
 US and Canadian patent offices used to allow these, but now they reject them. CIPO argues
that these are forms of energy, and not physical, statutory subject matter under s. 2.
 This is an unresolved, cutting-edge issue at the moment.
6
Patents
Claim Construction
•
•
•
•
•
Purposive construction is used for validity and infringement analysis. This is an objective
determination of the inventor's intended meaning, using a “person skilled in the art”
(Whirlpool)
The Process: First, read the claims and give them their plain meaning as much as possible. Then,
where clarification is necessary, read the claims in light of the description.
(Free World Trust)
The basic principles governing construction are:
(Free World Trust, aff’d Whirlpool)
o The PA promotes adherence to the language of the claims (which promotes fairness/certainty)
o The claim language must be read in an informed and purposive manner
o The language of the claims defines the monopoly (no "spirit of the invention" to be found)
o Some elements are essential and others are not. Consider the following when determining:
 The common knowledge of the worker skilled in the art
 That knowledge as of the date the patent is published
 It would have been obvious to such a skilled reader that substituting variants for the
specified feature would perform substantially the same function in substantially the
same way to produce substantially the same result.
 The intent of the inventor, expressed or inferred from the claims, that a particular element is
essential irrespective of its practical effect.
 Only look at the patent itself, do not look at evidence extrinsic to the invention
 This is very different from the US practice (extrinsic evidence is very important there)
 If more than one construction can reasonably be reached, favour upholding the patent
Central Question: Whether or not the essential features of the invention claimed are found in the
prior art (validity) or have been taken by the alleged infringer (infringement).
(Whirlpool)
o Where an element of the claim would have been understood by a person skilled in the art as
being non-essential, in that it could be omitted or substituted without affecting the way the
invention works, such omission or substitution will not avoid a reference being relevant for
purposes of attacking validity, or for finding infringement.
Comments:
o If one claim differs from another in only a single feature, that feature is essential.
(Whirlpool)
o The test for whether a feature is essential or non-essential can be boiled down to the following
two questions:
(Whirlpool, aff’g Free World Trust)
 Would a person of ordinary skill in the art know, as of the publication date, that varying or
eliminating the element would have no material effect on the way that the invention
worked? or
 Would a person of ordinary skill not understand the patentee to have intended, based upon
the specification, the element to be essential?
o As a consequence, the “take-away point” here is that the allegedly infringing invention must
perform substantially the same function in substantially the same way to obtain substantially the
same result to be infringing.
(Free World Trust)
7
Patents
Infringement, Remedies and Defences
Infringement
•
•
•
•
•
•
•
•
•
The relevant sections of the PA are ss. 54-58 (define jurisdiction, liability, etc.)
(PA ss. 54-58)
The first step of infringement analysis is construing the claims. See Claim Construction, p. 7.
Once the claims are construed, it becomes a factual inquiry: Was there infringement?
(Whirlpool)
Infringing activity is not defined by the PA, but exclusive rights are given. The PA grants
patentees “the exclusive right, privilege and liberty of making, constructing and using the
invention and selling it to others to be used”
(PA s. 42)
o General Principles: Use these to guide your analysis of the allegedly-infringing activity:
 "it is the taking of the essence of the invention ... that constitutes infringement"
(Monsanto)
 "The guiding principle is that patent law ought to provide the inventor with "protection for
that which he has actually in good faith invented":
(Free World Trust)
 "the proper comparison is between the claims set out in [the plaintiff's] patents and the
devices marketed by the [defendant]."
(Free World Trust)
o Essential Elements: "If the accused device takes all of the essential elements of the invention,
there is infringement." (nb – if ∆ didn’t make it, need to show “use” as well) (Free World Trust)
 There is no infringement if an essential element is different or omitted. (Free World Trust)
 There may still be infringement if non-essential elements are substituted or omitted.
o Use: Has the inventor has been deprived, in whole or in part, directly or indirectly, of the full
enjoyment of the monopoly conferred by the patent? Consider these principles:
(Monsanto)
 "Use" or "exploiter", in their ordinary dictionary meaning, denote utilization with a view to
production or advantage.
 All commercial benefits to be derived from the invention belong to the patent holder.
 Possession of a patented object or an object incorporating a patented feature may constitute
"use" of the object's stand-by or insurance utility and thus constitute infringement.
 Possession, in commercial circumstances, raises a rebuttable presumption of use
 Intention is generally irrelevant to determining whether there has been "use", but the
absence of intention to employ or gain any advantage from the invention may be
relevant to rebutting this presumption of use.
Components: Where a defendant's commercial or business activity involves a thing of which a
patented part is a significant or important component, infringement is established.
(Monsanto)
o This is an "expansive doctrine" – it doesn’t matter if the thing itself was patented or not.
Inducing Infringement: Inducing another to infringe is itself infringement
(Windsurfer)
o Example: π’s patent only claims a completed board; ∆ sells it unassembled and leaves
assembly to purchases. Infringement found; ∆ induced consumers’ infringement
(Windsurfer)
o Just having a potential of infringement is not enough – it must be the product’s only purpose
Repair vs. Manufacture: Repair is not infringement unless it amounts to reconstituting the
patented device – then it is manufacture, which is infringement.
(Rucker)
Improvements: Creating an improvement doesn’t grant rights to the underlying invention (and so
use/etc. of the improved invention may be infringement)
(PA s. 32)
Right to Sue: The owner of a patent has the right to sue; licensees can't sue unless the owner is a
co-plaintiff or confers the right to sue in the licence.
Remedies
•
•
This wasn’t discussed in detail. Available remedies are: Damages or accounting of profits; Punitive,
exemplary or aggravated damages; Permanent injunction; Delivery up or destruction of infringing
goods; Pre- or post-judgment interest [i.e. $] on the award; Costs.
Reasonable Compensation: If someone undertakes activity post-publication but pre-grant that
8
Patents
would have been infringing had the patent already been granted, they must pay “reasonable
compensation” to the patentee
(PA s. 55(2))
Defences
•
•
•
•
Previous Purchaser: If you acquire a copy of an invention before its claim date, using that copy
and selling it are not infringements
(PA s. 56(1))
o If the patent’s filing date is in [1 Oct 1989, 1 Jan 1994), the critical date is publication(PA s. 56(3))
o If the patent’s filing date is prior to 1 Oct 1989, the critical date is the date of grant (PA s. 56(4))
Licence: Your licence may grant you the right to do what you're doing (read carefully!)
o Competition Act: If you're excluding others such that the market isn't being satisfied, others
may get compulsory licences.
Limitation Period: 6-year limitation period for liability for infringement.
(PA s. 55.01)
Invalidity: Any of the headings under Validity, p. 2, can be attacked.
(PA s. 59)
Critical Dates for Infringement
•
•
•
•
Infringement Generally: Must be between date of grant and date of expiry or lapse
(PA s. 55(1))
o See Policy, Background and Overview, p. 1, for provisions on term, expiry and lapse
Limitation Period: 6-year limitation period for liability for infringement.
(PA s. 55.01)
Post-Publication but Pre-Grant Activities: Between publication date and issue date
(PA s. 55(2))
Prior acquisition defence (if patent issued on or after Oct. 1, 1996 on the basis of an application
filed on or after Oct. 1, 1989): Acquisition must be prior to the claim date.
(PA s. 56(1))
US Practice
•
•
•
•
Preliminary Hearings: There is a pre-trial Markman hearing where a judge alone construes the
claims (patent trials usually have juries). We rejected this in Canada.
Infringement: The US has a two-step test (we rejected this in Canada – Whirlpool):
(Phillips)
o Literal infringement: Does it fall literally under the claims?
o Doctrine of Equivalence: Does it perform substantially the same function in substantially the
same way for substantially the same result?
Claim construction:
(Phillips)
o The claims of the patent define the scope of exclusivity (same as in Canada)
 The words of a claim are generally given their ordinary and customary meaning (as
interpreted by a person of ordinary skill in the art as of the filing date)
 nb – In Canada, the relevant date is the publication date.
o Consider both extrinsic and intrinsic evidence in claim construction (intrinsic is more reliable)
 Prosecution history is considered intrinsic evidence, so if you make an admission against
interest in communication with the PTO, then you're stuck with that limitation.
o Read each claim in the context of other claims
o Claim Differentiation: Claims are presumed to have different meanings, and differences in the
text should give rise to differences in construction. (this is just the rule of effectivity)
 e.g. if claim A has a dependent claim B that consists of adding a component C, then claim A
should not be interpreted as requiring component C.
o Read claims in the context of the specification; don’t import limitations from the specification
 Unless, of course, the statute requires it, such as in 35 USC §112(6).
 Lexicography: The patentee may override the usual meaning of any term by applying a
special definition in the specification.
o Claims should be construed to preserve their validity (no such preference in Canada)
Prosecution History Estoppel: Where a patentee amends an application to narrow the claims in
9
Patents
•
•
•
•
response to a substantive Examiner objection, then they may not rely on the doctrine of equivalence
to include the surrendered equivalents (this is a rebuttable presumption of loss of equivalents)(Festo)
o Exception: If the amendment cannot be reasonably viewed as surrendering the equivalent in
question, then equivalence may still apply. This may be shown by demonstrating that:
 The equivalent was unforeseeable at the time of the application
 Rationale for the amendment bears only a tangential relation to the equivalent in question
 There is some other reason that the patentee could not be reasonably expected to explicitly
claim the equivalent in question.
o The patentee bears the burden to show that equivalence may still apply.
Inequitable Conduct: If a patent applicant intentionally omits or misrepresents a material fact to
the PTO, the patent is void; applicants have a duty of "candor and good faith"
(Purdue)
o Two distinct components: materiality and intent:
 Materiality: If a reasonable examiner would want to consider the information in question,
then it is material.
 PTO definition of materiality: Material if it opposes the patentee's arguments for
patentability (or provides a prima facie case of unpatentability, distinct from those
arguments). Note that this isn’t law, but it is persuasive.
(37 CFR 1.56 ("Rule 56"))
 Intent to deceive the PTO.
o Evidence:
 To be shown by the alleging party on "clear and convincing evidence" (between BoP/BRD)
 Balancing: The higher the materiality, the less evidence of intent that's required
 Evidence of intent to deceive is hard to come by, so circumstantial evidence is the norm.
o Example: The patentee believed, on the basis of scientifically untested "insight", that their drug
was effective in reduced dosages; they repeatedly referred to their "surprising discovery" and its
"clinical significance", but did not claim to have performed clinical trials. Court inferred the
implication and found the patent void for inequitable conduct
(Purdue)
o Canada: This doctrine has been rejected to date here. This may be changing with the
appointment of Hughes J (who is in favour of the doctrine) to the bench. He cites:
 PA s. 53: A patent is void if a material allegation in the application is untrue. This has never
been successfully invoked to invalidate a patent [even where there was fraud!]
 PA s. 73: A patent application is abandoned if an Examiner's requisition is not responded to
in good faith. (This is usually only used to require a response, not good faith)
Obviousness: Where all the components of an invention are in the prior art, the question is whether
there is an "apparent reason" for a person of ordinary skill in the art to combine them this way. (KSR)
o The court rejects the rigid "teaching, suggestion or motivation" test, but this is similar.
o Ordinary creativity: The court can take account of the inferences and creative steps that a
person of ordinary skill would employ. (In Canada, any degree of inventiveness is too much)
o Teaching Away: Where the prior art indicates that the present invention's use of components is
unlikely to succeed (e.g. a battery that uses water instead of acid), it is likely to be non-obvious.
Statutory Subject Matter:
(Bilski)
o The "machine-or-transformation" test is not the sole test for patentability.
o Court rejects a categorical exclusion of business methods.
Best Mode: All claims must have a “best mode” described in the US.
Licensing of Patents
•
See the Patent Licensing Checklist for a comprehensive list of issues to consider.
10
Patents
While patent infringement is not defined in the Patent Act, anyone who interferes with the exclusive
right to make, use, construct or sell an invention as covered by any claim in a valid patent is held to
infringe. The burden of proof falls upon the plaintiff to show infringement on a balance of
probabilities. The first step in assessing whether a Canadian patent has been infringed is to construe
the claims. Canada has adopted the purposive instruction approach, as set out in Freeworld Trust v.
Électro Santé Inc. and the Camco Inc. v. Whirlpool Corporation cases in the Supreme Court of Canada.
The basic principles governing the issue of infringement with respect to construction are as follows:
(a) The Patent Act promotes adherence to the language of the claims.
(b) Adherence to the language of the claims in turn promotes both fairness and predictability.
(c) The claim language must, however, be read in an informed and purposive way.
(d) The language of the claims thus construed defines the monopoly. There is no recourse to such
vague notions as the “spirit of the invention” to expand it further.
(e) The claim language will, on a purposive construction, show that some elements of the claimed
invention are essential while others are non-essential. The identification of elements as essential or
non-essential is made:
(i) on the basis of the common knowledge of the worker skilled in the art the patent relates to;
(ii) as of the date the patent is published;
(iii) having regard to whether or not it was obvious to the skilled reader at the time the patent
was published that a variant of a particular element would not make a difference to the way in
which the invention works; or
(iv) according to the intent of the inventor, expressed or inferred from the claims, that a
particular element is essential irrespective of its practical effect;
(v) without resort to extrinsic evidence of the inventor’s intention.
(f) There is no infringement if an essential element is different or omitted. There may still be
infringement, however, if non-essential elements are substituted or omitted.
In order to purposively construe a claim, the wording of the other claims and disclosure (i.e. the
specification as a whole) may be referred to in assisting the court to interpret the claims, if necessary.
It is important in this context that the specification as read is directed to a person skilled in the art of the
invention and having the common general knowledge in the art. Further, the specification is read with
a mind willing to understand.
Once the claims have been construed, infringement of a claim may be assessed. The ultimate question
then becomes whether or not the essential features claimed in the invention have been taken by the
alleged infringer. Where an element of the claim would have been understood by a person skilled in
the art as being non-essential, in that it could be omitted or substituted without affecting the way the
invention works, such omission or substitution will not avoid infringement. A party will still infringe a
claim where a variant to one element is use which performs substantially the same function in
substantially the same way to obtain substantially the same result, and that such a variant would have
been known to a person skilled in the art. However, courts are unlikely to extend the scope of the
claims if the patent give some indication that element or feature is considered by the patentee to be
essential.
Patents typically include both “independent” and “dependent” claims. Independent claims stand by
themselves, without referring to any other claim. Dependent claims refer, directly or indirectly, to an
independent claim. A dependent claim is not infringed unless the independent claim from which is
depends, and any intervening dependent claim(s), are also infringed.
The terms that should be considered by candidates for construction are “elongated walls”, “flexible
hinge means”, “integrally” and “substantially the full length”
11