Le juge Hughes donne un cours d’histoire CA/US/UK sur les revendications dans son dernier jugement

Et analyse la validité de revendications de type Suisse vs. des méthodes de traitement médical (et plusieurs autres sujets) dans l’affaire Merck & Co., Inc. v. Pharmascience Inc., 2010 FC 510, (May 11, 2010)

Voici la table des matières:

[24]            The main issue is whether Pharmascience’s allegations as to invalidity of claim 5 of the ’457 Patent are justified within the meaning of section 6(2) of the NOC Regulations. In determining that issue, I must determine the following matters, which I will do in the following order:

1.      Burden

2.      Evidence

3.      Person of Ordinary Skill in the Art

4.       Claim Construction

a)  History of a Claims Requirement in Canada

b)  History of a Claims Requirement in Great Britain

c)  Current State of the Law in Canada

d)  Tying it All Together

e)  The U.K. and European Decisions as to “Swiss” Claims

f)  “Swiss” Claims in Canada

g)  Claim Construction – Notice of Allegation

h)  Construing Claim 5

5.      Method of Medical Treatment

6.      Double Patenting

7.      Novelty and Obviousness

a)  General

b)  The ’457 Patent

c)  The Prior Art

d) Viewing the Prior Art Through the Eyes of a Person Skilled in the Art

e) Conclusions as to the Evidence Respecting Novelty and Obviousness

f)  Novelty

g) Obviousness

8.      Sound Prediction/Overbreadth

Et voici sa conclusion sur comment il faut lire des revendications aujourd’hui:

[68]           Having looked at the history of patent claims and claim construction in Canada as influenced by Great Britain, it can be seen that, originally, it was essential for a Court to construe the patent and its claims because the “invention” –  hence, the monopoly – was to be found in the specification. As the statutes became clearer in respect of claims, the specification became divided into two parts. The description served the purpose of “purchasing” the monopoly by describing the invention in sufficient detail so that a person skilled in that art could understand what the invention was and how to put it into practice. The other part of the specification was the claims, which served to define and set limits as to the monopoly that the patent was intended to secure.

 [69]           Construction of the claim no longer meant that the Court had to scour the description so as to arrive at what the monopoly was; rather, the Court now begins with the claim and determines what a person skilled in the art would understand it to mean. This is done using the description as a context and, if necessary, using expert evidence to assist in putting the Court in a position of understanding at the level of a person skilled in the art. The purpose of the exercise is to understand what the patentee is claiming as its monopoly.

 [70]           Thus, claims construction today in the Canadian Courts is an easier task than in earlier days, because the function of the claims has been made clearer by statute. That function is to define distinctly and in explicit terms what the claimed monopoly is. To the extent that the claim is now to be “construed”, that is the function of the Court alone. Experts may assist in two ways; first, they may inform the Court as to the knowledge that a person skilled in the art would have had at the relevant time, so as to bring that knowledge to bear reading both the description and the claims; second, an expert may assist in explaining any technical terms not within the experience expected of a Court. Thus, while construction is for a Court alone, the Court may have to make certain factual findings as to the knowledge of a person skilled in the art. The findings of the Court in this respect may best be considered as findings of mixed fact and law.




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