B)External Grounds of Attack: Anticipation & Obviousness

1

METHODOLOGY:

1)Validity

a)Is it patentable subject matter?

b)External Grounds of Attack: Anticipation & Obviousness

*Broad claims can be invalid w/ more specific dependant claims still valid

i)Construe this patent’s claims: determine chars of person skilled in the art as of that patent’s claim date (filing date or convention priority date)

ii)Assess applicability of prior art: 1) are they of the of a sim nature, would person looking to solve this problem think to look at that device? 2) was prior art in existence at time of claim date?

iii)Construe prior art’s claims: determine chars of person skilled in the art as of prior art patents’ publication dates

iv)Determine if invention was anticipated (not novel)

v)Determine if invention was obvious

c)Internal Grounds of Attack: Utility & Sufficiency

2)Infringement

a)starting pt: presume validity

b)Determine which, if any, of defendant’s activities constitute infringement

c)Construe this patent’s claims: determine chars of person skilled in the art as of patent’s publication date

d)Construe infringer’s claims/elements: determine chars of person skilled in the art as of prior art patents’ publication dates

e)Determine infringement: whether all of essential elements are infringed

*dependant claim will not be infringed unless claim(s) from which it stems is/are (can stop analysis if know that 1st is not)

f)Determine whether there are any defences

g)Assess remedies

1. PATENTS OVERVIEW

1. General

- potentially the broadest form of IP protection, w/ shortest term = 20yrs

- relatively expensive (10-40K per country) and time consuming (1-5+yrs) to obtain

- expensive to enforce: litigation is time consuming (2-4yrs) and costly (300-1000K), [so most cases settle]

- “commissioner shall grant patents” (s. 27(1)): has no discretion to refuse on basis of anything but PA and case law (Harvard Mouse)

1. Purpose of a Patent

-Patent: bargain or K btwn inventor & the state: state grants inventor monopoly for limited term, in exchange for giving to public complete disclosure so as to make/use invention when term expires (balancing of inventor’s rights w/ public interest, competition, free-trade).

-Policy: research & development, effort/cost to create invention & bring to mkt is so large that wouldn’t bother unless were granted this monopoly.

-Protection s. 42: exclusive right to make, construct, use or sell the invention (do NOT provide any positive rights to do anything – shield not sword, and using a patented invention may infringe an earlier patent)

1. Canada’s Patent Act

-modelled after USA’s, not UK’s

-sig difference btwn Canada’s & UK’s (ex: defn of patentable subject matter), but often overlooked by crts & UK jurisprudence applied (incorrectly). Need to be aware whether partic provisions are sim or not.

1. Timeline

- s. 44: term is 20 yrs from filing date

-monopoly takes effect as of grant of the patent

-s. 28.2(1)(a): Canada & USA has grace period: have 12 mos from time of disclosure by inventor to file patent. Other jurisdictions have abs novelty (EPO, Japan).

1. Components of Patent Application
2. Disclosure: consideration from Inventor to the State

*See sufficiency below

1. Description Requirement
2. Enablement Requirement
3. Best Mode Requirement (only for machines in Canada)

1. Claims: consideration from State to Inventor

*See claim construction

- s. 27(4): define the scope of inventor’s monopoly

1. CLAIM CONSTRUCTION

- claim construction determines scope of monopoly granted (Whirlpool)

METHODOLOGY for Claim Construction:

2)Determine: a) relevant date; b) who is person skilled in the art

3)Determine that person’s level of common knowledge as of relevant date

4)In view of the disclosure, have this person purposively construe the claims to determine: a) what are essential/inessential elements; b) the meaning of terms

1. Relevant Date
2. Anticipation & Obviousness: Claim Date

s. 28.1: Earliest of 3 dates that may be applicable

1. filing date w/ Cdn patent office
2. date on which previous application was filed w/ Cdn patent office disclosing subject matter defined in this new claim
3. convention priority date

1. Infringement: Publication Date

- for infringement analysis, relevant date is at publication (Free World)

1. Person Skilled in the Art

-an ordinary skilled technician in the relevant art(s)

-a person who understands, as a practical matter, the problem to be overcome, how different remedial devices work, and the likely effect of using them.

-being logical and reasonable, and having common general knowledge of such a person in the art, which may include certain widely known prior art references

1. Purposive Construction

-patent specification is given purposive, not literal, interpretation: may broadly interpret phrases if would have been obvious at the time that could not have intended strict (literal) interp (Catnic); capable of limiting or broadening literal meaning of claim (Whirlpool)

-If no ambiguity, stay w/in the claim. Give plain words plain meanings (Monsanto)

-If ambiguity in claim can look to the whole of specifications (other claims and disclosure), but not to reliance on extrinsic evidence (ie patent prosecution file history) (Whirlpool)

-purposive construction is read w/ a mind willing to understand, not looking to attack (Whirlpool; Consolboard); knowledgeable reading of the whole specification through the eyes of the skilled addressee (Whirlpool)

1. Essential & Inessential Elements

-purposive construction on basis of common knowledge of worker skilled in the art will ID elements as either essential or non-essential (Free World)

-starting pt: presume every element is essential unless stated otherwise (Free World)

-Element will be non-essential if it was obvious to skilled reader at relevant time that variant of particular element would not make a difference to how invention works

-Regardless of practical effect, if intent of inventor (express or implied from claims) is that particular element is essential – it will be considered essential.

1. VALIDITY

s. 43(2): After the patent is issued, it shall, in the absence of any evidence to the contrary, be valid and avail the patentee and the legal representatives of the patentee for the term mentioned in section 44 or 45, whichever is applicable

s. 58: validity of claims are independent of one another (strike down 1 & others still stand)

Patentability: claims must describe an invention that has 1) utility; 2) novelty; 3) ingenuity

METHODOLOGY for Validity Analysis

1)Rebuttable presumption of validity if granted (s. 43(2))

2)Is it patentable subject matter?

3)External grounds of attack: anticipation & obviousness

a)Purposively construe this patent’s claims: determine chars of person skilled in the art as of patent’s claim date (filing date or convention priority date)

b)Assess applicability of prior art: 1) are they of sim nature/related field such that person looking for soln to problem would have thought to look at them? 2) Was prior art in existence at claim date?

c)Purposively construe prior art’s claims

d)Determine if invention was anticipated (not novel): did a single prior disclosure enable the invention? (single prior art must have all elements of the claim)

e)Determine if invention was obvious: a mere obvious variant of something already available? (combination of prior art to have all elements of claim)

4)Inherent grounds of attack: utility & sufficiency

KEY GROUNDS OF INVALIDITY:

1)subject matter (s. 2)

2)novelty/anticipation (s. 2, 28.2)

3)obviousness (s. 28.3)

4)utility (s. 2)

5)sufficiency (s. 27(3))

Other Grounds (not covered in this class)…

6)ambiguity (s. 27(4))

- claims must be free from avoidable ambiguity or obscurity & must not be flexible; must be clear & precise for public certainty (Minerals Separation)

7)double patenting (extending term of patent w/ obvious variant)

8)claims broader than invention

9)material misrepresentation in petition

- s. 53(3): can invalidate entire patent

1. Subject Matter

s. 2: “invention” means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvements thereof

SUMMARY: “invention” includes…

-new uses for known substances (Shell Oil)

-method for producing vendible product/using an inventive thing or known thing for new use/diagnosing physical disease or medical condition in human being (MoPOP)

-lower life forms (implicit in Harvard Mouse, explicit in Monsanto)

- cells/eggs/genes can be patented, and patenting of these microscopic features can indirectly protect the whole (Monsanto)

But does NOT include

-professional skills (Lawson)

2 possible interpretations of exclusion:

- pro skills are not patentable

- pro skills are excluded not per se but when they are non-reproducible due to reliance on human factors such as intuition, judgement etc (Shell Oil)

-unapplied math formulae, mere scientific principle or abstract theorem (s. 27(8))

- so long as directed towards practical application of principle or theorem, will not be excluded by s. 27(8) (obiter in Tennessee Eastman)

-method of medical treatment (Tennessee Eastman)

- debatable on account of s. 41 being repealed, also see Apotex.

-higher life forms (Harvard Mouse)

-higher life forms transcend particular genetic material of which they are made (spirit, soul, mind); also mixing of ingreds has to have been by inventor.

-But can indirectly protect genetically modified material w/in higher life forms since use of macro infringes patentable micro (Monsanto)

-Printed matter having only a literary or artistic value

-Human conduct or mental steps

-Computer program having no patentable subject matter absent inclusion of a general purpose computer (Schlumberger)

1. Art

-analysis has blurred requirements of subject matter w/ novelty & non-obviousness

TEST: 2 Possible tests for “art”

1. Narrow (Lawson): act or series of acts on physical object producing in that object some change of character or condition.

- should be viewed as inclusive rather than exhaustive: if doesn’t fit w/in here then still might be “art” under Progressive Games defn

1. Broad (Progressive Games): “art” includes a process that

i)has practical application, not a disembodied idea.

- physical manipulation of cards sufficed (contrast w/ change of above)

ii)is a new & innovative application of skill & judgement

- bringing in novelty considerations

iii)has commercially useful result/effect

- bringing in utility considerations

Lawson v. Commissioner of Patents, 1970 Ex Ct – Narrow “Art” Defn

Patent application for method of subdividing land (staggered champagne glass shapes), asserted certain advantages. Rejected by Commis as not stat subject matter.

Issue: does the claim fall w/in s. 2 as either “art” or “manufacture”? No.

• Well-settled that not all new & useful arts are included, there is a requirement for ingenuity (blurring concepts)
• DEFN of Art: act or series of acts on physical object producing in object some change of character or condition.
• Process wrt art must be in reln to a useful art as opposed to a fine art, professional skills are not proper subject matter of patents (surgeon w/ method of operation & lawyer w/ method of x-exam as exs), therefore this method of subdividing land is not an “art” b/c involves professional skills.
• DEFN of manufacture: manu must accomplish some change in char or condition of material objects (focussing on process of man – basically same defn as gives art).
• Here there is no change to the land, therefore doesn’t fit w/in defns.

Comments & Critique:

• Equating art to manu was error, contravening rule of effectivity (why would parl say same thing 2x?)
• Discussion of methods & process was obiter: claim was not before the crt.
• Judge is borrowing from UK & Aust defns: in UK defn includes “utility”, which requires reproducibility - professional skills are excluded b/c of lack of reproducibility & reliance on intuition, judgement & human skills.
• Here judge is tying professional skills to subject matter as opposed to reproducibility – 2 possible interps of pro skills exclusion: excluded per se, excluded if not reproducible.

Tennessee Eastman Co v. Commissioner of Patents, 1972 SCC – No to Surgical

Glue (compound already known) was discovered as able to use to bond human skin as alternative to stitches.

Issue: new surgical use for existing compound patentable as “art” or “process”? No.

• Defn of “invention” & “art” is circumscribed by s. 27(8) [exclusion of mere abstract theorem and scientific principle] & other stat provisions outside of PA.
• TEST: will not be a mere abstract theorem and scientific principle if claim is directed to practical application of the principle or theorem.
• Equates “process” w/ method.
• S. 41 (repealed since) circumscribes defn of art by not allowing food/medicine to be patented, held that necessarily implies that method of medical treatment using such a substance couldn’t be claimed as process w/in s. 2.
• Medical/surgical methods are not patentable, do not fall w/in meaning of invention.
• Discourages use of UK & Aust jurisprudence wrt patentable subject matter b/c of substantial differences btwn Canada & UK for “invention” defn.

Comments:

• Now that s. 41 has been repealed, debatable that medical/surgical methods should be patentable – but patent office still rejects these, though are able to patent food/medicine per se.

Shell Oil Co v. Commissioner of Patents, 1982 SCC – New Use for Old Substance

Existing compound found useful for plant growth. Unable to claim compound itself (already exists), so wish to claim new use.

Issue: is a new use for an existing compound patentable? Yes.

• Novelty is in applying old compound to new use, invention is the application of this new knowledge to effect a desired result w/ undisputed commercial value – “invention” b/c new & useful art w/ commercial value.
• Discovery has added to the cumulative wisdom on the subject of these compounds
• Distinguishes Tennessee Eastman: not patentable b/c non-economic, not related to trade, industry or commerce – related rather to pro skills.
• Interprets Lawson: was rejected not b/c was not an art, but b/c related to pro skills rather than to trade, industry or commerce.

Comments:

• Blurring of non-obviousness “inventive ingenuity” and stat subject matter (“art, process”…)
• Blurring utility requirement into stat subject matter: reference to undisputed commercial value.
• Pro skills: reinterp of Lawson supports view that pro skills are excluded not per se but when they are non-reproducible due to reliance on intuition, judgement etc.

Progressive Games v. Commissioner of Patents, 2000 FCA

New method of playing poker: each is against the house & has bonus scheme, still has conventional hands & conventional deck. Had already been licensed to casinos (proven $ value). Patent office rejected b/c related to playing games (no real basis for this exclusion). Note: method solely consists of steps performed by humans – didn’t include any automated aspects or manipulation of anything but cards.

Issue: is new method of playing poker an “art” or “process”?

FCTD: Not an art or process – no innovation.

• No exclusion on games per se.
• TEST: Reads Shell Oil as defining “art” as: includes process that 1) has practical application, not a mere idea/abstract theorem; 2) is a new & innovative application of skill & knowledge; 3) has commercially useful result/effect.
• Here poker game meets #1 (physically moving cards) and #3 (has already made $), but is not new & innovative – no real sig changes to game of poker, changes were not a contribution or addition to the cumulative wisdom on the subject of games.

FCA: upholds FCTD – changes do not amount to new & innovative method of applying skill & judgement.

Comments:

• “process” previously defined as = method, here if “art” includes process w/ further requirement crt is contradicting express language of s. 2.
• High water mark of blurred concepts: bringing in considerations of s. 27(8) [not mere abstract theorem], novelty & utility. Conflation of Shell Oil stmts.
• Reads Shell Oil as defining art when it seemed like was trying to avoid this.

1. Process

- ie a method, sometimes interp synonymous w/ art b/c of art’s broad defn (Lawson; Tennessee Eastman)

1. Machine

-mechanical embodiment of any fcn or mode of operation designed to accomplish partic effect

1. Manufacture

-article of manufacture or process of manufacture

-connotes a product made manually or by an industrial process, by changing the character or condition of material objects (usually “apparatus”)

-excludes higher life forms: limited to non-living mechanistic product or process (Harvard Mouse)

-does not include communication signals b/c of their transitory nature (MoPOP)

-includes computer-readable medium storing instruction codes (medium only, does not include software & not if stores non-fcnal descriptive material)

1. Composition of Matter

-chemical compounds, compositions, substances.

-“Composition”: substance formed by mixing various ingredients, must be inventor who has combined these ingreds

-does not include higher life forms b/c these transcend the genetic material of which they are composed (not just “matter”), and inventor is not one to do the mixing of ingreds (Harvard Mouse)

-but patents on microscopic can indirectly protect the whole (and unpatentable), since infringement by “use” of the whole requires use of patented micro parts (Monsanto) – even w/out macro claims can use micro claims to stop macro act.

Harvard College v. Canada (Commissioner of Patents), 2002 SCC

Method of making cancer-prone mouse, which would then contain special gene making it susceptible to cancer. Once genetically modified mouse then 50% of offspring will possess same gene. Wanted patent over method to make mouse, & over altered mouse itself. Examiner allowed method claim, rejected claim over mouse b/c related to higher life forms.

Issue: was altered mouse a “manufacture” or “composition of matter”? No.

• commissioner has no discretion to refuse patent on basis of public policy, can only refuse on basis of PA & jurisprudence (“shall grant”)
• sole question at issue is whether mouse falls w/in defn of invention, defn in PA is exhaustive (“invention means”) but is also broad & able to evolve to encompass new technologies.
• “manufacture”: means non-living mechanistic product or process.
• “composition”: substance formed by mixing various ingredients, must be inventor who has combined these ingreds
• mouse’s ability to procreate & the mouse itself (as opposed to the gene) do not fall w/in requirement that inventor has mixed ingreds
• “matter”: captures but one aspect of higher life forms, is strictly physical/corporeal as distinguished from incorporeal (spirit, soul, mind) – higher life forms transcend the partic genetic material of which they are composed.
• Lower life forms are not at issue (implicitly allowing patents of these)

NB: religion influencing interpretation of PA?

Monsanto Canada Inc v. Schmeiser, 2004 SCC

Canola plants resistant to Round-Up: special manmade gene. M claimed patent on gene and modified cell w/ gene, not on genetically altered plant or seeds themselves (could not get patent). Farmer never had been licensed, discovered to have Round-Up Ready canola growing on his fields. Farmer claimed not deliberate, had migrated on his land. Had noticed that some plants were resistant to pesticides – deliberately replanted all fields w/ seeds from these plants (not a poor innocent bystander).