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.  

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