Scintillae of inventiveness or imagination #2

• Articles repérés cette semaine:

 

• Article – entertainment de la semaine : Motley Crue, a Los Angeles-based heavy metal band, was sued for trade secret misappropriation by the inventor of a device that makes it possible for a drummer to perform while he’s up-side down. http://www.tradesecretslaw.com/files/2012/10/Motleycomplaint.pdf
• Des cours de formation des examinateurs du USPTO (brevets, marques)– disponible en ligne (certains cours comme « Introduction à la recherche de brevets » ou certaines classifications en marques sont gratuits)
  http://usptotraining.gov/index.html
• Article de brevet adressant les apps mais avec suggestions applicables à toute invention en général
  Can I – and Should I – Patent My Smartphone App?
• Litiges Brevets – Licensing US : Microsoft vs Google trial raises concerns over secrecy  http://www.cnbc.com/id/49663564
• FTC in Favor of Suing Google Over Patents: Source http://www.cnbc.com/id/49662873
• Contrefaçon : de Patently-O:  Statistics of Age of US Patents when Asserted in Litigation : http://www.patentlyo.com/patent/2012/10/age-of-patents-when-asserted.html

• New updated fact sheet: How to search for      trade marks
• EPO’s Patent Translate service: new      languages added

·         Direct Evidence of Lack of Utility Is Useful

AstraZeneca Canada Inc v Pharmascience Inc / alendronate (NOC) 2012 FC 1189 O’Keefe J

·         Canada: Using Wayback Machine Evidence

22 October 2012

A recent decision of the Trade-mark Opposition Board (“the Opposition Board”) has confirmed the admissibility of evidence obtained by using the Wayback Machine.

Analyse de l’expression “Object of the Invention” en brevets par la Cour d’appel fédérale

Voir dans Mylan Pharmaceuticals ULC v. AstraZeneca Canada Inc. , 2012 FCA 109 (April 11, 2012)

Extraits pertinents:

[22]           For convenience, I set out again the one sentence in the 55-page patent on which Mylan relies in order to show that anastrozole not only inhibits aromatase, but also produces fewer side effects than AG.

It is a particular object of the present invention to provide aromatase inhibitory compounds with fewer undesirable side effects than [AG].

 

 

[23]           It will be recalled that the question is whether the words “object of the present invention” mean that anastrozole produces fewer effects than AG, as Mylan argues, or whether, as AstraZeneca says, it means that this is what the invention aims to do, without promising that it has succeeded.

 

(i) undue reliance on dictionary definition

[24]           The Judge stated (at para. 132) that the plain meaning of the word “object” suggests that it means an aim to be fulfilled, and referred to the following part of the definition of “object” given in the The Oxford English Dictionary. 3^rd ed., on line version:

A goal, purpose, or aim; the end to which effort is directed; the thing sought, aimed at, or striven for.

 

 

[25]           Mylan makes two points. First, the Judge put undue weight on the dictionary definition of “object”, rather than considering its meaning in the context of patent law. Counsel referred us to cases, including Amfac Foods Inc. v. Irving Pulp & Paper, Ltd. (1986), 12 C.P.R. (3d) 193 (F.C.A.) at 199, where the Court relied on an “object clause” to define the scope of the invention. On the basis of these authorities, he argued that the “object of an invention” was virtually a legal term of art and formed part of the definition of the invention.

 

[26]           I do not agree. Patents are not required to contain a clause describing the object of the invention. When they do, the meaning of the object clause depends on the specific context, including the wording of the particular clause in question and its relationship to the rest of the patent. Indeed, in oral argument counsel conceded that object clauses should not necessarily always be construed as promises of the invention.

 

[27]           Second, counsel for Mylan said that the Judge referred to only some of the dictionary synonyms for, or definitions of, “object”; in particular, he omitted “purpose”, a word that connotes what the invention does. In my view, however, this kind of close semantic parsing of the Judge’s reasons in this case is not productive. Reading them in their entirety, I am satisfied that the Judge placed relatively little weight on the dictionary definitions in reaching his conclusion that the patent does not promise that anastrozole has fewer side effects than AG. For example, he said (at para. 139):

 

 

In sum, the plain language of the patent, when read in the context of the patent as a

whole, does not support a promise of fewer undesirable side effects. I accept AstraZeneca’s argument that not all statements of advantage in a patent rise to the level of a promise. A goal is not necessarily a promise. The third paragraph of the 420 Patent refers to a forward looking goal, a hoped-for advantage of the invention.

 

 

[28]           A better reading of the reasons, in my view, is that the Judge relied on the dictionary definitions and synonyms to confirm that, in its ordinary usage, the word “object” is capable of bearing the meaning that he had assigned to it on the basis of other considerations: the evidence of Dr Dowsett discussed at paragraphs 40-42 of these reasons, and his examination of the patent as a whole.

 

(ii) context of the patent

[29]           In examining the patent in its entirety, the Judge noted that, apart from the “object of the invention” sentence in the specification, nowhere else in the patent is there any indication that anastrozole has fewer side effects than AG. In contrast to the statement of the invention’s object, the claims to the compound anastrozole and its inhibitory effects on aromatase are precise and specific. For example, Claim 13 covers “the compound [anastrozole]”, and Claim 15 relates to “The use of the compound [anastrozole] as an inhibitor of the enzyme aromatase.”

 

[30]           Moreover, it is agreed that the 420 patent would be valid if it only claimed the compound anastrozole and its inhibitory effects on aromatase. It was thus unnecessary for the patent also to promise fewer side effects than AG. Even though tests, which AstraZeneca did not disclose, had been conducted showing that anastrozole was selective, a promise in the patent to this effect would be entirely gratuitous, and could only provide competitors with another basis for attacking its validity.

 

[31]           Mylan counters these arguments by saying that the word “provide”, which appears in the object clause, is used elsewhere in the patent in connection with the claims of the patent. Thus, by stating that “it is a particular object of the invention to provide aromatase inhibitory compounds with fewer undesirable side effects than [AG]”, the object clause should, counsel argues, be interpreted as a promise. 

 

[32]           I do not agree. In my view, this microscopic approach to the construction of the provisions of a patent is misguided. The fact that such an ordinary word as “provide” is used in sentences containing the claims of the patent does not mean that when used in other sentences, it should be construed as connoting a promise of the patent.

 

[33]           I agree with the Judge that an examination of the patent as a whole supports the conclusion that, unlike the express claims of the patent, the object clause contains no more than a forward-looking aim of the invention. In my view, the fact that side effects are not mentioned elsewhere in the patent is telling.

Un nouveau test en 3 parties pour la nouveauté de brevets au Canada?

Wenzel Downhole Tools Ltd v National-Oilwell Canada Ltd 2011 FC 1323, 98 CPR(4th) 155, Snider J

L’extrait pertinent du test:

The first branch of the test is disclosure. The question of disclosure raises three distinct sub-issues:

1. Does the prior art contain the subject matter defined by the ‘630 claims?

2. Was the prior art disclosed before the ‘630 Patent claim date?

3. Was the disclosure of the subject matter of the ‘630 Patent available to the public?

[95] Only if the answer to all of these questions is affirmative, will the Defendants be able to establish the first branch of the test set out in Sanofi-Synthelabo, above.

CA Jurisprudence récente: brevets de sélection

Eli Lilly Canada Inc. v. Novopharm Limited , 2011 FC 1288 (November 10, 2011)

Les  principes analysés dans la présente décision:

The following summarizes my understanding of the proper approach to determining the issues of utility and sufficiency in respect of selection patents generally, and the ‘113 patent in particular:

            1.         Review the patent to determine whether it sets out a specific promise of a substantial advantage over the genus compounds and, if it does, identify it.

           2.         In construing the patent, refer explicitly to the expert evidence to determine whether a skilled person would interpret the stated advantage(s) as being truly advantageous; only those advantages regarded as truly advantageous can form part of the patent’s promise.

            3.         The‘113 patent contains a sufficient factual basis for a sound prediction of its promise – studies in rodents, an open-label clinical trial with 8 patients, and healthy volunteer studies involving 20 persons.

            4.         The real issue in respect of sound prediction is whether there is an articulable line of reasoning from the factual basis set out in the ‘113 patent to the patent’s promise; that is, whether there exists a prima facie reasonable inference linking the factual basis to the promise.

            5.         To decide whether a selection patent discloses the invention sufficiently, one must determine whether it identifies the compound, its advantages and how it works; this is distinct from determining whether the patent meets the disclosure requirements for sound prediction (which is not in issue here).

Cour d’appel fédérale commente sur les arguments d’avocats en litige de brevets

Voir:  Phostech Lithium Inc. v. Valence Technology Inc. 2011 FCA 237

Extraits pertinents:

27]           Phostech’s argument with respect to claim 3 of the ‘115 Patent is a classic lawyer’s argument, namely that where a draftsman (or patent agent) uses different words, different meanings are intended. Counsel for Phostech put before us a table showing the various expressions used in the patent such as “ source of [element]”, “[element]-containing compound”, “[element] compound”, the point of which was to underline that the drafters of the patent referred only to “carbon” and did not include the qualifying words used in relation to other substances. From this, Phostech argued that where the patent refers to carbon, it means carbon in a pure form as opposed to some other compound which may be a source of carbon.

[34]           The fact that a lawyer, using the usual rules of interpretation, might come to a different conclusion, is of no consequence. The patent is not directed to lawyers but to persons skilled in the art. This principle is anchored in the language of the Patent Act itself (R.S.C. 1985, c. P-4, s. 27(3)(b) [emphasis added])

Conférence le 20 avril à Montréal: jurisprudence récente en brevets

http://www.cba.org/pd/details.aspx?Lang=Fr&id=QC_TE110216

 20 AVRIL 2011

DÉJEUNER-CAUSERIE
Section : Information, télécommunications et propriété intellectuelle
Présidente : M^e Marjolaine Gagnon

Conférencier :
Me Bob Sotiriadis, Robic

Sujet :
Cette conférence se veut un tour de piste des développements récents en matière de brevet. Bob Sotiriadis, avocat spécialisé en propriété intellectuelle ayant développé une expertise en litige de brevet, présentera les décisions les plus marquantes de l’année 2010 en matière de brevet, et donnera son avis et quelques trucs pratiques relativement à l’impact que ces décisions pourraient avoir sur la pratique de litige de brevet. Il est à noter que le conférencier ne traitera pas des décisions impliquant spécifiquement les “NOC”.  

Date et heure :
Le 20 avril 2011 
12 h 00 à 12 h 30 – DÉJEUNER
12 h 30 à 14 h 00 – CONFÉRENCE

Jurisprudence récente canadienne “un peu légère”: limites d’une clause de confidentialité – lors de médiation

Décision: http://www.canlii.org/en/on/onlshp/doc/2011/2011onlshp24/2011onlshp24.html

Une clause de confidentialité ne peut pas protéger un avocat qui utilise un langage trop “coloré”  lors de procédures de négociation

Résumé: http://www.canadianlawyermag.com/legalfeeds/When-it-s-OK-to-drop-the-f-bomb.html

Mémoire d’appel déposé par le Commissaire aux brevets dans l’affaire Amazon.com

Voir une copie du document sur le site IPPractice.ca

Article-résumé sur les injonctions

Voir l’article de Gowlings sur le sujet

Jurisprudence récente CA: Est-ce OK de copier des extraits de revendications de d’autres brevets?

Une leçon: si vous copiez des extraits, les avocats vont s’en rendre compte…

Valence Technology, Inc. v. Phostech Lithium Inc., 2011 FC 174, (February 17, 2011) http://decisions.fct-cf.gc.ca/en/2011/2011fc174/2011fc174.html

Voici des extraits intéressants du jugement:

[45]           In relation to Phostech’s arguments with regards to misappropriation (ss. 53(1) of the Patent Act), Phostech’s position is based on its belief that Valence’s patent agent clearly incorporated the claims of Hydro-Québec’s application (‘129) into the claims of the ‘366 Patent, including the use of the term “C-LiFePO₄” in claim 73, which it alleges was taken from the ‘446 Application.

[...]

[208]      This is not a novel strategy for it is exactly what one would have had to do under section 43(2) before a conflict was declared. William Hayhurst’s chapter entitled “The Art of Claiming and Reading a Claim”[109] explains how it is the role of the patent agent to ensure, once he understands

the invention as explained by the inventor(s) including his or her preferred embodiments (often their product or processes), that the claims cover not only what the inventor(s) already contemplated, but also variances one could reasonably foresee in the future that could make use of the contribution of the inventor(s) to the art. This means that the patent agent will not only review the prior art, but will keep current of new publications and developments in the field throughout the patent’s prosecution. This also explains why one finds such a range of claims going from the widest claims that the agent can conceive of and that the Patent Office will allow, to the narrower claims that will cover, at the very least, the most likely competitive product or process.[110]

 

[209]      As mentioned by the distinguished authors, “[h]ence the old saw that ‘the inventor invents the product and the patent agent invents the invention’”.[111] This reflects the fact that, as mentioned by Mr. Hayhurst:

All too often the inventor does not understand the importance of claims or the niceties of claim drafting. All too often the inventor is content to ensure that the descriptive portion of the specification and any accompanying drawings are accurate, and that any prior art that may come to light can be distinguished, leaving the mysteries of claim drafting entirely to the agent. (p. 204)

 

[210]      Because patent agents are also required to be familiar with patent law and the requirements of the Patent Act, it is evident that they will prefer to draft claims at the same time as the disclosure

to avoid ambiguity and to ensure that the terms used in the claims are consistent with those used in  the disclosure. That said, however, claims are subject to negotiation with the Patent Examiner during prosecution for various reasons, substantive amendments are made such as those required in ss. 43(2) of the old Act. This often later created difficulties that Court’s will have to grapple with when construing the claims.  It will also raise the risk that the disclosure may be found inadequate (s. 27(3) / old s. 34). But this is what the patent agent must assess when claims from other applications or patents are included in one’s own application.

[211]      The Court agrees with Valence that there is no copyright on claim language.

[212]      What an inventor risks in borrowing language from others is to have his claims rejected by the Patent Office on the basis of 27(3) or because they become ambiguous or later voided by the Court on these bases. In this case, the Patent Examiner was satisfied that there was enough information to support these claims.

[213]      No precedent has been cited to support the position put forth by Phostech that such behaviour would constitute a misappropriation of another’s invention. I doubt very much that such situations were intended to be covered by ss. 53(1).

[214]      All these comments which may appear somewhat superfluous are made to address the frustration and almost outrage expressed by Dr. Gauthier when he saw that so many expressions used in his patent application had been included in the ‘366 Application, including the famous     “C-LiFePO₄”.

[215]      That said, to use the words of Justice Walsh in Beloit Canada Ltd. v Valmet Oy (1984),   78 CPR (2d) 1 (TD) at p. 30,[112] it “take[s] very strong evidence indeed and not merely deduction from the documentary evidence and suggestions of motives” to establish that the named inventor is not the inventor of the invention described in the said patent.

[216]      This is especially so when it is not disputed that the inventors named in the ‘366 Patent were the authors of the disclosure of the ‘115 Patent Application filed before the ‘129 Application. It is on the basis of wording included in the said original disclosure that the Court was able to construe claim 26 of the ‘366 Patent.  Moreover, it is on the basis of this disclosure that experts testified that the posita would be able to practice the invention described in claim 26.

[217]      As mentioned earlier, there is little evidence from the inventors before the Court. Phostech filed by consent some extracts from the discovery of Dr. Barker, one of the three inventors named in the ‘366 Patent. There is little evidence as to the exact role played by Dr. Barker compared to that of the other two inventors in the development of the invention. Certainly, it appears from the correspondence before the Court that Dr. Barker felt that Yazid Saidi, one of the other inventors, could be of help in respect of some of the matters raised. Although no correspondence from Mr. Saidi was found, there is no evidence that he did not speak with the patent agent. Dr. Barker also directed some inquiries in relation to the making of the Valence product to Valence’s quality control department. It is evident from the few extracts produced that Dr. Barker does not have a good memory of details. It is most likely that he was indeed personally involved in drafting the disclosure of the ‘115 Patent.  He also probably chose the experiments reported therein. It is unlikely that he was involved at all in the drafting of the claims per se.

[218]      Phostech’s counsel focused on an answer to one of the questions put to him by the patent agent as to whether a particular wording used in the ‘129 Application (or the ‘466 equivalent) applied to the Valence product – did the Valence product have a core? His answer was “very difficult to tell”. Dr. Barker was never asked what he understood this question to mean exactly or whether he had with him a copy of the Armand application and, in any event, the reference to “core” was never used in the ‘366.

[219]      None of this evidence establishes to my satisfaction that the named inventors did not invent what is claimed in the ‘366 Patent.  No misrepresentation has been established in that respect.

[220]      I should also say that Phostech has not satisfied me either that I should infer an intention to mislead. The Court does not accept the leap proposed by Phostech’s counsel that Valence must have filed for a divisional to avoid having to deal with the patent examiner working on the ‘115 Application to by-pass some of the objections he had raised.  There are many other explanations for requesting a divisional, especially when one knows that a competitor is or will soon be on the market with a product that may infringe. One could want to get a first patent issued quickly with claims language that one knows is acceptable to the examiner.

 [221]      Phostech’s attack on the basis of ss.53(1) fails.  

Cour d’appel fédérale: confirme qu’OPIC ne peut pas accepter taxe de maintien d’une demande de brevet sans la bonne révocation/désignation d’agent

Unicrop Ltd. v. Canada (Attorney General), 2011 FCA 55, (February 11, 2011)
http://decisions.fca-caf.gc.ca/en/2011/2011fca55/2011fca55.html

Selon la Cour, la loi est trop claire et, comme on dit en anglais, “leaves no wiggle room”

Développements en brevets au Canada 2010

Voirl’article de Gowlings

Canada: Article sur obligation de bonne foi en brevets

Voir l’article publié par Bennett Jones sur le sujet

CA: jurisprudence récente: la Cour fédérale accepte un argument pour rétablir une demande abandonnée pour faute de paiement de taxe de maintien

Repligen Corporation v. Canada (Attorney General), 2010 FC 1288, (December 15, 2010)

Faits:

-Taxe de maintien payée pour la demande 1, 314, 486 au lieu de 1, 341, 486;

-Demande 1, 341, 486 abandonnée pour faute de paiement de taxe de maintien

-Après la date limite pour rétablir la demande, les nouveaux agents tentent de rétablir la demande en invoquant l’article 8 de la Loi sur les brevets pour les erreurs d’écriture.

-Le Bureau des brevets refuse, ainsi que la Commission d’appel, mais la Cour fédérale renverse la décision

-Raisonnement de la Cour fédérale (intéressant potentiellement pour d’autres dossiers car on tente de se distinguer de Dutch Industries)

[57]           The purpose of section 8 of the Act is clear. It is a remedial section which enables the Commissioner in limited cases of clerical errors in any instrument of record to be corrected under the authority of the Commissioner taking into account all relevant considerations which, as the jurisprudence established, includes delay in seeking correction and the impact on third parties.

 

[58]           Based on the record before me, I find that the Commissioner failed to properly exercise her discretion in this particular case.

 

[59]           As I see it, the Commissioner took into account only two relevant factors: delay in seeking correction and possible third party prejudice. These two factors were in the Commissioner’s view determinative in refusing to correct what she found to be a clerical error. Her refusal to correct a clerical error had a catastrophic impact on Repligen – it lost its patent rights to its invention.

 

[60]           In my view, the Commissioner failed to take into account the following relevant factors before deciding in her discretion whether to correct the clerical error:

a)      The impact on Repligen – the loss of its patent;

b)      The fact Repligen’s payment was received by the Commissioner and appropriated to another patent in circumstances which are unknown to Repligen and which were not considered by the Commissioner and, in that context, whether there was a slip at CIPO;

c)      The fact that Repligen’s payments were made on the due date;

d)      Her failure to appreciate, that if she properly exercised her discretion to correct the error, the remedial scope of section 8 would have the effect that the ‘486 patent never lapsed for non-payment under paragraph 46(2) of the Act because those fees were paid in the appropriate amount and on time, a result which was achieved in Dutch Industries, above, without the recourse to section 8. In other words, she erred in her appreciation of the remedial powers available to her under section 8 of the Act;

e)      The Commissioner did not take into account the purpose and object of the maintenance fee provision in the Act. Repligen paid on time and CIPO accepted those payment; Repligen contributed to defraying the costs of the Patent office. The fact that Repligen made those payments and the Commissioner recognized that paying it to the wrong account was an indicator Repligen did not consider its ‘486 issued patent as deadwood;

f)        Simply invoking possible third party rights without more would, in my view, fundamentally impair the remedial power Parliament conferred upon the Commissioner to remedy clerical errors. The reason is obvious: in the case of every issued patent the disclosure will have been made; in the case of a patent application, it is open to the public inspection after a certain date. Justice Desjardins in Bristol-Myers did not endorse a speculative determination of third party rights. She had hard facts before her which pointed to the likehood third parties would be affected – the nature of the remedy sought which was the addition of a new priority date had the effect in a document, that had been opened in 1994, of permitting the entry in 1997 of a priority date of July 1992. Justice Desjardins said that “the retroactive effect of the correction if admitted, clearly preoccupied the Commissioner. She also had evidence that, before the correction was sought, two other companies filed priority claims for similar drugs under foreign patents predating the U.S. patents relied on by Bristol-Myers. Here, as I see it the Commissioner’s assessment of third parties rights being affected was based on pure speculation, without more, such as determination whether patent applications had been filed in Canada by third parties for patents similar to Repligen’s Modified Protein A. The view I take is consistent with what is written in CIPO’s Manual of Patent Office Practice at item 23.04.02 when giving examples of cases where third parties are likely to be affected. See also section 23.04 of that same Manual where the Commissioner indicates she will decide whether or not to correct based on the nature of the error made; and

g)      Finally, the Commissioner failed to weight and balance all relevant factors before exercising her discretion.

CA: jurisprudence récente: test d’anticipation et un conflit sous la loi avant 1989

Merck & Co Inc. v. Apotex Inc., 2010 FC 1265, (December 22, 2010)

Une décision qui discute de plusieurs sujets différents, incluant

 -”circumstantial vs DNA evidence” de contrefaçon

-Une situation de conflit sous l’ancienne loi (pre-1989):

D.        First Inventorship/Missed Conflict

 [533]      Apotex submits that the Merck inventors were not the first inventors of the compound lovastatin as claimed in the ’380 Patent and that, therefore, the ’380 Patent should be invalidated on the basis that the “invention” of the ’380 Patent was known or used as of the date of filing the patent application. In so arguing, Apotex recognizes that it must overcome the requirements of the Patent Act.

 

[534]      The patent application that resulted in the issuance of the ’380 Patent was patent application No. 353, 777 filed with the Patent Office on June 11, 1980 (the Monaghan Application). Apotex submits that the Monaghan Application disclosed the invention of lovastatin and ought to have been placed into conflict with patent application No. 345, 983 (the Endo Application), which was filed with the Patent Office on February 19, 1980. The Endo Application ultimately resulted in the issuance of the ‘794 Patent.

-Test de nouveauté (bon résumé fourni par la Cour):

 [565]      The guiding jurisprudence on the legal test of anticipation is found in the Supreme Court of Canada decision in Apotex v. Sanofi-Synthelabo, 2008 SCC 61, [2008] 3 S.C.R. 265 [Sanofi-Synthelabo]. At paragraphs 23-27, the Supreme Court teaches that the issue of whether an invention is anticipated by the prior art requires that the Court have regard to two questions:

 1.                  Was the subject matter of the invention disclosed to the public by a single disclosure?

2.                  If there has been such a clear disclosure, is the working of the invention enabled by that disclosure?

[566]      At the first step of the analysis, the Supreme Court provided the following guidance (Sanofi‑Synthelabo, above, at para. 25):

When considering the role of the person skilled in the art in respect of disclosure, the skilled person is “taken to be trying to understand what the author of the description [in the prior patent] meant” (para.32). At this stage, there is no room for trial and error or experimentation by the skilled person. He is simply reading the prior patent for the purposes of understanding it.

 [567]      Once disclosure has been made, the question of enablement was described by the Supreme Court (Sanofi-Synthelabo, above, at para 27):

Once the subject matter of the invention is disclosed by the prior patent, the person skilled in the art is assumed to be willing to make trial and error experiments to get it to work. While trial and error experimentation is permitted at the enablement stage, it is not at the disclosure stage. For purposes of enablement, the question is no longer what the skilled person would think the disclosure of the prior patent meant, but whether he or she would be able to work the invention.

 [568]      In Abbott Laboratories v. Canada (Minister of Health), 2008 FC 1359, 337 F.T.R. 17 [Abbott Clarithromycin (FC)], aff’d 2009 FCA 94, 387 N.R. 347, Justice Hughes undertook a helpful survey of the law of anticipation as it exists after Sanofi-Synthelabo, above. He summarized the legal requirements for anticipation as follows (Abbott Clarithromycin (FC), above, at para. 75):

For there to be anticipation there must be both disclosure and enablement of the claimed invention.

 1.                  The disclosure does not have to be an “exact description” of the claimed invention. The disclosure must be sufficient so that when read by a person skilled in the art willing to understand what is being said, it can be understood without trial and error.

 2.                  If there is sufficient disclosure, what is disclosed must enable a person skilled in the art to carry out what is disclosed. A certain amount of trial and error experimentation of a kind normally expected may be carried out.

 3.                  The disclosure when carried out may be done without a person necessarily recognizing what is present or what is happening.

 4.                  If the claimed invention is directed to a use different from that previously disclosed and enabled then such claimed use is not anticipated. However if the claimed use is the same as the previously disclosed and enabled use, then there is anticipation.

 5.                  The Court is required to make its determinations as to disclosure and enablement on the usual civil burden of balance and probabilities, and not to any more exacting standard such as quasi-criminal.

 6.                  If a person carrying out the prior disclosure would infringe the claim then the claim is anticipated.

CA: jurisprudence récente en brevets: exemple d’un recours contre une compagnie chinoise

Glaston Services Ltd. Oy v. Horizon Glass & Mirror Ltd., 2010 FC 1191, (November 26, 2010) http://decisions.fct-cf.gc.ca/en/2010/2010fc1191/2010fc1191.html

Un jugement par défaut contre la compagnie locale et son fabriquant chinois.

+ un bon exemple pour les examens d’agents sur les principes de contrefaçon: est-ce qu’un test au Canada pour prouver le fonctionnement une machine  fabriquée en Chine et pour faire accepter la machine par l’acheteur (“acceptance test”) est un acte de contrefaçon de la part de la compagnie chinoise? Voici la réponse de la Cour fédérale:

[82]            Glaston submits that it was an infringement for Shanghai Northglass to install and commission the North Glass Machinery at Horizon’s premises in Canada. Under the Contract, Shanghai Northglass was required to have two to three technicians attend at Horizon for 60 workdays in order to install and commission the equipment.  By installing and commissioning the North Glass Machinery in Canada, Shanghai Northglass made and constructed an apparatus covered by the claims of the Glaston ‘257 and ‘628 Patents.

[83]           Glaston further submits that Shanghai Northglass is liable for infringement for using the North Glass Machinery at Horizon’s premises.  The “Acceptance Test” required under the Contract required Shanghai Northglass’s technicians to continuously produce three (3) different glass products for two to eight hours each.  It is admitted that Shanghai Northglass performed acceptance tests of the North Glass Machinery at the Horizon premises in Canada.  The logical inference from this admitted fact is that Shanghai Northglass itself operated the bending and tempering station of the North Glass Machinery to produce bent and tempered glass in Canada and, thereby, used an apparatus covered by the claims of both patents, and practicing the methods covered by the claims of the ‘257 Patent. With respect to use for the purpose of furthering a business interest, in Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34, [2004] 1 S.C.R. 902 (Monsanto Canada Inc) at para. 37, the Supreme Court of Canada stated:

As a practical matter, inventors are normally deprived of the fruits of their invention and the full enjoyment of their monopoly when another person, without licence or permission, uses the invention to further a business interest.  Where the defendant’s impugned activities furthered its own commercial interests, we should therefore be particularly alert to the possibility that the defendant has committed an infringing use.

 [84]            The “use” of the North Glass Machinery by Shanghai Northglass in the Acceptance Tests occurred in a commercial context.  Shanghai Northglass ran the Acceptance Test for the purpose of concluding the sale of the North Glass Machinery to Horizon.  Shanghai Northglass has therefore committed an infringing use of the North Glass Machinery in Canada, therefore infringing the Glaston Canadian ‘257 and ‘628 Patents.

CA: jurisprudence récente: une demande de brevet divisionnaire déposée par un autre demandeur distinct du demandeur original, est-ce possible? Oui selon la Cour fédérale

Vita-Herb Nutriceuticals, Inc. v. Canada (Attorney General), 2010 FC 1203, (November 30, 2010) http://decisions.fct-cf.gc.ca/en/2010/2010fc1203/2010fc1203.html

Possible lorsque l’inventeur des revendications supprimées de la demande principale et formant la demande divisionnaire  a assigné ses droits à une autre compagnie, selon la Cour fédérale…

CA: jurisprudence récente-brevetabilité de méthode de traitement médical

Janssen Inc. v. Mylan Pharmaceuticals ULC, 2010 FC 1123, (November 10, 2010) http://decisions.fct-cf.gc.ca/en/2010/2010fc1123/2010fc1123.html

Extraits pertinents:

[26]           What I take from the above authorities is that a patent claim over a method of medical treatment that, by its nature, covers an area for which a physician’s skill or judgment is expected to be exercised is not patentable in Canada.  This would include the administration of a drug whereby the physician, while relying upon the dosage advice of the patentee, would still be expected to be alert and responsive to a patient’s profile and to the patient’s reaction to the compound.

[...]

Should the Ratio in Tennessee Eastman Be Reconsidered in Light of The Repeal of S. 41 of the Act and Having Regard to the Decision in Amazon.com, Inc. v. Canada and the Commissioner of Patents, 2010 FC 1011?

 [53]           Janssen argues that the ratio of Tennessee Eastman, above, should be revisited in light of the subsequent repeal of s. 41 of the Act – a provision which Janssen says was the foundation for the decision.  As noted above, this is an argument that has been raised before and consistently rejected in this Court.  Notwithstanding the intervening repeal of s. 41, Tennessee Eastman, above, remains good law in Canada because the policy concerns it recognized continue to be valid.  Quite apart from the problem of “evergreening”, the rationale for excluding such patents is that, for ethical and public health reasons, physicians should not be prevented or restricted from applying their best skill and judgment for fear of infringing a patent covering a pure form of medical treatment (as distinct from a vendible medical or pharmaceutical product).  This is a particularly obvious concern in a case like this where the ’950 Patent effectively blocks the use of a known compound (galantamine) for an established purpose (treating Alzheimer’s disease) using a well-known treatment methodology (titration).  Indeed, the ’950 Patent claims a monopoly over a method of treatment that, in the United States patent proceeding, Dr. Raskind and Janssen maintained was available and workable by any practicing physician who wanted use galantamine to treat Alzheimer’s disease. 

 

[54]           This situation is closely analogous to the circumstances addressed by the United States Court of Appeals for the Federal Circuit in King Pharmaceuticals, Inc. v. Eon Labs, Inc., 09-1437 (Fed. Cir. 2010).  That case involved a patent claim over the administration of a known drug (metaxalone) for a known use (muscle relaxant) and the “unexpected” finding that its bioavailability was enhanced when taken with food.  The prior art had recommended that the drug be taken with food but only as a means of reducing nausea.  The Court held that a patent was not available for the discovery of a previously unknown benefit that was inherent in the already known and practised use of the drug.  The Court stated that “[t]o hold otherwise would remove from the public a method of treating muscle pain that has been performed for decades”.  I appreciate that the principles of patent law in the United States are different from those applicable here, but that does not make the Court’s policy concern any less compelling.

 

[55]           Janssen maintains that the recent decision by my colleague Justice Michael Phelan in Amazon.com, Inc., above, concerning the patentability of business methods ought to inform my approach to the ’950 Patent.  While I have no difficulty with Justice Phelan’s analysis in that case, it does not present a helpful legal analogy.  Indeed, Justice Phelan recognized that there are areas of discovery that, on grounds of public policy, cannot be monopolized.  The extension of patent protection over some business methodologies involves issues largely of a commercial nature and does not raise the kinds of public policy concerns that apply to the provision of medical care to patients whose lives or wellbeing may be dependent upon it. 

CA: Cour fédérale détermine que la demande de brevet One-Click d’Amazon.com comprend de la matière brevetable

AMAZON.COM, INC. v. THE ATTORNEY GENERAL OF CANADA et al décidée le 14 octobre 2010

Extraits pertinents:

[3] At its core, the question is whether a “business method” is patentable under Canadian law. For the reasons which follow, the Court concludes that a “business method” can be patented in appropriate circumstances.

 

[...]

A. Adoption of International Principles 

 

 

[37] The Commissioner is thus bound by Canadian patent regime and its interpretation by the Courts. On this she has no discretion. International jurisprudence, and certainly the policies advocated therein, is not determinative, but at most a potential guide when applied correctly and mindfully. As becomes evident, many of the Commissioner’s errors stem from her adoption of a policy role and the importation of policies not concordant with Canadian law.

 

 

B. Form and Substance Approach

 

 

[...]

 

[47] The Commissioner has simply adopted a novel legal test by which to assess patentable subject-matter. It is not supported by recent Canadian jurisprudence or the Patent Act. This is an error of law and far outside the  Commissioner’s jurisdiction.

 

 

C. Definition of Art/Change of Character or Condition

 

 

[...]

[60] The Commissioner’s articulation of the test for art is too restrictive in requiring, as discussed in greater detail below, that the knowledge in question be scientific or technological in nature. Further, her application of the test suggests that the goods themselves must be changed in some way. Her interpretation of practical application does not take into account a wider definition of physical, “change in character or condition” or the concrete embodiment of an idea.

 

 

D. “Business Method Exclusion”

 

 

[...]

[68] The approach in the USA, Australia, and as it ought to be in Canada, makes an eminent amount of sense given the nature of our legislation. It allows business methods to be assessed pursuant to the general categories in s. 2 of the Patent Act, preserving the rarity of exceptions. It also avoids the difficulties encountered in the UK and Europe in attempting to define a “business method”. There is no need to resort to such attempts at categorization here. Contrary to what the Commissioner suggests, to implement a business method exception would be a “radical departure” from the current regime requiring parliamentary intervention.

 

E. “Technological” Requirement

 [...]  

[71] Even if patents generally concern the protection of advances in technology broadly defined, it is difficult to see how introducing this sort of technological test into the Canadian patent system would do anything but render it overly restrictive and confusing. It would be highly subjective and provide little predictability. Technology is in such a state of flux that to attempt to define it wouldserve to defeat the flexibility which is so crucial to the Act. This view is supported by authorities in both the USA and Australia: see Bilski/USCA, above at 1395 and Grant, above at paragraph 38. The current assessment of subject matter, without reference to such concepts, is preferable. 

 

 

VI. APPLICATION TO THE PATENT AT ISSUE

 

 

  

[72] Having determined that the Commissioner fundamentally erred in the legal principles used to determine patentability this Court will now examine the claims de novo in order to determine whether they are patentable subject matter. 

 

[73] The Court finds that a purposive construction of the “system claims” (e.g. claim 44 and its associated dependant claims) clearly discloses a machine which is used to implement Amazon.com’s one-click ordering system. The described components (e.g. a computer) are essential elements in implementing an online ordering process. This is not merely “a mathematical formula” which could be carried on without a machine or simply a computer program. A machine is patentable under s. 2 of the Patent Act. The Commissioner herself found that “in form” the claims disclosed such an invention; it was only when she took a second step to subjectively consider the “substance” that she found otherwise. As discussed, this is unsupported in law. The Court therefore finds the machine claims to be patentable subject matter. 

[74] Turning to the process claims, the Commissioner clearly erred by “parsing” the claims into their novel and obvious elements in order to assess patentability. When viewed as a whole it is clear that the claimed invention is a process which uses stored information and ‘cookies’ to enable customers to order items over the internet simply by ‘clicking on them’. It is accepted that the “oneclick” method is novel; the Court finds that an online ordering system which facilitates this adds to the state of knowledge in this area.

[75] The new learning or knowledge is not simply a scheme, plan or disembodied idea; it is a practical application of the one-click concept, put into action through the use of cookies, computers, the internet and the customer’s own action. Tangibility is not an issue. The “physical effect”, transformation or change of character resides in the customer manipulating their computer and creating an order. It matters not that the “goods” ordered are not physically changed.

[76] It is undisputed that this invention has a commercially applicable result and is concerned with trade, industry and commerce. Indeed, its utilization in this very realm seems to be at the root of the Commissioner’s concern.

[77] In light of the above, the Court finds the process claims to be a patentable as an art and process. As discussed at length earlier in this decision, there is no need to continue the analysis once this has been determined. There is no exclusion for “business methods” which are otherwise patentable, nor is there a “technological” test in Canadian jurisprudence. Even if there was some technological requirement, in this case the claims, when viewed as a whole, certainly disclose a technological invention.

 

CA: CAF confirme la validité de la doctrine “Saccharine” en brevets

Décision Eli Lilly Canada Inc. v. Apotex Inc. 2010 FCA 240

Extrait pertinent:

[17]           Apotex cross-appeals the Judge’s finding that it infringed Lilly’s patents when, prior to June 3, 1998, it imported bulk cefaclor from overseas suppliers who had produced it from an intermediate compound made by processes covered by Lilly patents. Apotex says that, by finding that the importation of cefaclor breached Lilly’s rights under the Patent Act, the Judge extended the scope of protection beyond the use of the claimed invention (here, the processes for making the intermediate product), and gave an extraterritorial reach to the Act that Parliament should not be taken to have intended.

 [18]           After thoroughly canvassing the relevant jurisprudence, the Judge rejected Apotex’ argument, holding that it has been settled law in Canada for over a hundred years that a process patent can be infringed by the importation, and use and sale in Canada, of a product manufactured abroad by another person using the patented process. She pointed out that the Supreme Court of Canada had recently endorsed the rule, known as the “Saccharin doctrine” (Saccharin Corporation v. Reitmeyer & Co., [1902] 2 Ch. 659 (Eng. CA.)): see Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34, [2004] 1 S.C.R. 902 especially at para. 44.

 [19]           The Judge also rejected Apotex’ alternative argument that, if relevant at all, the Saccharin doctrine should not apply if “material changes” are made to the article produced by the patented process prior to the importation of the ultimate product. She applied (at paras. 326-329) the present law, which requires only that the patented process played an “important part” in the manufacture of the imported product, and concluded that it did.  

 [20]           We se no legal error in the Judge’s analysis of the state of the law in Canada on either of these issues.