Archive for the ‘Jurisprudence – Canada’ Category

CA: jurisprudence récente-brevetabilité de méthode de traitement médical

November 16, 2010

Janssen Inc. v. Mylan Pharmaceuticals ULC, 2010 FC 1123, (November 10, 2010)

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, 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, 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’ comprend de la matière brevetable

October 14, 2010

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. 



[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’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

September 28, 2010

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.

CA: jurisprudence récente: brevet invalidé pour manque de prédiction valable

September 17, 2010

Novopharm Limited v. Eli Lilly and Company, 2010 FC 915, (September 14, 2010)


[116]      It seems to me that it is beyond debate in Canada that where a patentee asserts that the utility of its invention has been demonstrated, it need not assert its supporting evidence in the patent.  In such a case ss. 27(3) of the Patent Act, R.S.C. 1985, c. P-4 requires only a full description of the invention and the means to work it:  see Consolboard v. MacMillam Bloedel, [1981] 1 S.C.R. 504 at 526, 56 C.P.R. (2d) 145, Pfizer Canada Inc. v. Canada (Minister of Health), 2008 FCA 108 at paras. 57 to 62, 67 C.P.R. (4th) 23 and Apotex Inc. v. Wellcome Foundation Ltd., 2002 SCC 77 at para. 70, 21 C.P.R. (4th) 499. 


[117]      In a case involving a claimed sound prediction of utility, it is equally beyond debate that an additional disclosure obligation arises.  According to Justice Binnie in AZT, above, this obligation is met by disclosing in the patent both the factual data on which the prediction is based and the line of reasoning followed to enable the prediction to be made.  This requirement to disclose the basis of the prediction in the patent specification was said to be “to some extent the quid pro quo” the patentee offers in exchange for the patent monopoly: see para. 70.  

CA: jurisprudence récente: attention aux attaques sous Art. 53 de la Loi sur les brevets

August 12, 2010
Novo Nordisk Canada Inc. v. Cobalt Pharmaceuticals Inc., 2010 FC 746, (August 3, 2010)


326]      Cobalt alleges that the inventors made material allegations about the utility of the patent which allegations were untrue.  Moreover, it says that the inventors had a large amount of information in their possession that they did not disclose to the public, which ought to have been disclosed. According to Cobalt, these errors and omissions were made willfully and for the purpose of misleading.


[373]      The question remains as to what, if any, reduction should be made to Cobalt’s costs award to take into account its unsuccessful allegations under section 53 of the Patent Act.

 [374]      As was noted earlier, allegations under section 53 of the Patent Act implicate the notion of fraud.  As such, they should not be advanced lightly, without a sufficient evidentiary foundation, in the hope that evidence may turn up along the way to support the allegations.

 [375]      As Justice Hughes observed in Apotex, above, “[t]o raise an issue of fraud or even a section 53 type of fraud and not follow through with the matter, or fail to prove it, will have serious consequences when it comes to the question of costs”: at para. 63.

 [376]      A review of the jurisprudence discloses that in some cases where allegations under section 53 are advanced in a Notice of Allegation or action, but are ultimately not pursued, the Court has reduced the fees and disbursements awarded to a successful generic by 25%: see Bristol-Myers Squibb, above, at para. 189; Shire Biochem Inc. v. Canada (Minister of Health), 2008 FC 538, 67 C.P.R. (4th) 94 at para. 110; Apotex, above, at para. 192.

 [377]      In another case, a successful innovator had its costs increased by 5% to take into account an abandoned allegation under section 53 of the Patent Act: see Janssen-Ortho Inc. v. Apotex Inc., 2008 FC 744, 332 F.T.R. 1  at para. 250, rev’d 2009 FCA 212, 75 C.P.R. (4th) 411.

 378]      Cobalt points out that in each of these cases, the section 53 allegation was abandoned prior to the hearing.  From this I understand Cobalt to be suggesting that the fact that it pursued the issue to the bitter end should somehow operate in its favour when it comes to the question of costs.  I do not agree.  In my view, Cobalt’s failure to cut its losses and abandon this issue earlier in the process is an aggravating rather than a mitigating factor – one which could have arguably favoured a greater cost penalty than that assessed in the cases cited above.

 [379]      That said, the applicants submit that a 25% reduction in Cobalt’s fees and disbursement would be appropriate in this case, and I so order.



CA: opinion de la Cour d’appel fédérale sur l’inventivité de combinaisons

July 19, 2010

Un extrait utile pour contester des objections de manque d’inventivité dans la combinaison d’enseignements de l’art antérieur:

Bridgeview Manufacturing Inc. v. 931409 Alberta Ltd., 2010 FCA 188, (July 14, 2010)

[51]           I agree with Bridgeview that the 334 patent discloses a combination invention. It is not fair to a person claiming to have invented a combination invention to break the combination down into its parts and find that, because each part is well known, the combination is necessarily obvious: see, for example, Stiga Aktiebolag v. S.L.M. Canada Inc. (1990), 34 C.P.R. (3d) 216 at page 245 (F.C.T.D.), which quotes this passage from Wood & Amcolite Ltd. v. Gowshall Ltd. (1936), 54 R.P.C. 37 at page 40 (per Greene L.J.):


The dissection of a combination into its constituent elements and the examination of each element in order to see whether its use is obvious or not is, in our view, a method which ought to be applied with great caution since it tends to obscure the fact that the invention claimed is the combination. Moreover, this method also tends to obscure the facts that the conception of the combination is what normally governs and precedes the selection of the elements of which it is composed and that the obviousness or otherwise of each act of selection must in general be examined in the light of this consideration. The real and ultimate question is “Is the combination obvious or not?”


See also Omark Industries (1960) Ltd. v. Gouger Saw Chain Co. et al (1964), 45 C.P.R. 169 (Ex. Ct.) and Canamould Extrusions Ltd. v. Driangle Inc., 2003 FCT 244 (affirmed 2004 FCA 63).


[52]           The invention claimed in the 334 patent is not simply the use of a gear box to change the direction of a tractor’s power take off. The claimed invention includes the use of a gear box for that purpose, but only in combination with the other essential elements, resulting in a bale processor that disintegrates the bale in a particular way and discharges the disintegrated material in a particular way to the right. The question the judge should have asked, but did not, is whether the common general knowledge that he identified would have led the skilled but uninventive person to come directly and without difficulty to the particular combination of elements of the invention disclosed in the 334 patent, as construed by the judge.


[53]           The evidence on this question that most favours the position of Duratech is found in the opinion of Dr. Parish. He opined that, given knowledge of the Hesston BP 20, it would have been obvious to a person skilled in the art who wished to design a right hand discharge bale processor to use a gear box or other reversing mechanism, combined with a right discharge opening, and that there was motivation to do so in light of the trend in the industry to right hand discharge for farm machinery pulled by tractors. This opinion, unlike Dr. Parish’s opinion on patent construction and infringement, is weakened by the absence of supporting analysis. Indeed, it is little more than a bare conclusion. For example, it does not explain why at the relevant time, no one except the inventor of the Bale King had managed to produce a commercially successful right hand discharge bale processor. As mentioned above, the Hesston BP 20 was not commercially successful. It is reasonable to infer that the successful development of a right hand discharge bale processor required more than simply adding a reversing gear box to an existing bale processor.


[54]           On the question of obviousness, Duratech cited in argument two additional items of prior art, namely U.S. patents 4,830,292 and 4,879, 810 (the “Frey patents”), which are patents for bale processors that pre-date the 334 patent. Indeed, U.S. patent 4,830,292 is disclosed in the 334 patent. I was able to find in the record no expert opinion construing these U.S. patents, but on a literal reading they appear to relate, in the one case, to a particular kind of cutting device in place of flails for disintegrating the bale, and in the other case, to an improvement in the means for manipulating the bale. I can find no mention in either U.S. patent of right hand discharge. Duratech says that these patents teach right hand discharge because they “implicitly” have a reversing gear. However, I am unable to discern from the patent alone whether that assertion is valid, and Duratech has not cited any evidence on the point.


[55]           I conclude that the judge erred in law when he held that, given the state of the art at the relevant time, the skilled but uninventive person would have been led directly and without difficulty to the solution taught by the 334 patent. For that reason, the judge’s conclusion as stated in paragraph 68 of his reasons cannot stand. I would allow the appeal on that issue.

CA: les plans de maison = oeuvre originale protégeable par le droit d’auteur

July 16, 2010

C’est la conclusion dans:

Construction Denis Desjardins inc. c. Jeanson, 2010 QCCA 1287

15]           Compte tenu du cadre juridique ainsi défini, on doit conclure ici que les plans de design et de conception[16] du bâtiment modèle « Château », plans qui ont été confectionnés par Denis Desjardins, employé de l’appelante[17], constituent une œuvre artistique originale au sens des articles 2 et 5 de la Loi sur le droit d’auteur, méritant donc la protection offerte par cette loi. Il en va de même du bâtiment lui-même, comme œuvre architecturale (encore que, dans la présente affaire, l’action soit fondée sur la violation du droit d’auteur de l’appelante sur les plans litigieux).

[16]           Ces plans, en effet, constituent une œuvre qui n’a pas été copiée sur une autre. Cette oeuvre, tant dans sa version « plan » que sa version « bâti », est le fruit du travail personnel de son concepteur, Denis Desjardins. Elle agence divers éléments architecturaux (volume, forme, espace et ouvertures — entrées, sorties, fenestration —, disposition, angles, ornements, style, etc.) repérés et assemblés grâce au talent (skill) du concepteur, mais aussi à son jugement. L’apport intellectuel à cette production n’est pas purement mécanique[18], au contraire : un choix a été fait, le concepteur a évalué et soupesé les différents éléments pouvant potentiellement être intégrés à ses plans, il les a amalgamés dans une perspective qui se veut ici esthétique, et il y a en tout cela la manifestation à la fois d’une habileté et d’un discernement. L’exercice de ce jugement n’exclut pas que le concepteur se soit inspiré d’idées préexistantes, lesquelles, rappelons-le, ne sont pas protégées comme telles. Il appert en outre que le design de M. Desjardins comporte au moins deux éléments que l’expert Michel Bastien, architecte dont le témoignage n’a pas été contredit, qualifie de peu communs et même de novateurs, à savoir la forme et l’emplacement de l’escalier intérieur ainsi que le positionnement de la tourelle en façade, qui donnent un style particulier à la maison[19].

[17]           Certainement, si l’agencement des arrêts dans un recueil (compilation) passe le test de l’originalité aux fins de la Loi sur le droit d’auteur, on voit mal comment ce pourrait ne pas être le cas des plans dont il est question ici, et ce, même si les éléments retenus et agencés n’ont par hypothèse pas de valeur artistique particulière, sont banals ou donnent un résultat qu’on pourrait juger sans grande valeur esthétique ou conforme simplement au goût du jour. Comme le rappelle la juge en chef McLachlin dans l’arrêt CCH, aucun « degré minimal de créativité »[20] n’est requis pour qu’une œuvre soit jugée originale et une telle œuvre n’a pas à avoir de qualités artistiques particulières. Il suffit qu’elle résulte du talent et du jugement de l’auteur, ce qui est le cas ici.

[18]           Bref, considérant la présomption établie par l’article 34.1, alinéa (1)a)[21], de la Loi sur le droit d’auteur, considérant qu’il incombait aux intimés d’établir que les plans litigieux n’étaient pas protégés car n’ayant pas le caractère d’originalité prévu par cette loi, considérant qu’ils ne se sont pas déchargés de cette preuve, considérant que la preuve prépondérante démontre au contraire cette originalité, il faut conclure que les plans bénéficient de la protection accordée par la loi.

CA: Jurisprudence récente en secrets de commerce

June 23, 2010

 Stonetile (Canada) Ltd. v. Castcon Ltd.; 2010 ABQB 392; Alberta Court of Queen’s Bench; June 14, 2010

 Dans cette décision, malgré le fait qu’une partie du procédé confidentiel était publié entre autres dans une demande de brevet, le juge a déterminé quand-même que l’information reliée au procédé “dans son ensemble” était demeurée confidentielle:

[49]           When I review this patent application, and in absence of expert evidence, I find that simply having the patent application would not permit an individual to know exactly the method, and details of the production process. It did not divulge anywhere near the detail as the production manual or the detail of information about production that Robert Will would have known from his employment and association with Stonetile. The installation and attachment aspect of the invention was much more the focus of the patent application for the product.

1.2.8.   Conclusion on whether the information is confidential.

[50]           As a result, I conclude that although there was some public disclosure of aspects of the Stonetile system, and particularly as it related to attachment to the building and all aspects of the installation process, there was not sufficient disclosure of details of the overall production process to say that process was in the public domain. Nor can it be said that sufficient detail of the production process had been made public that the details of Stonetile’s process taken together have lost their confidential nature. I find that Stonetile took sufficient steps to guard its production process as confidential, to meet the onus it carries as the plaintiff to prove that the production process was confidential information.


[1]               Robert Will was employed by Stonetile from 1992 until January, 2001. In 2003, he started a company, Castcon Ltd., to produce and sell a similar product to Stonetile, a cement exterior moulding system for buildings. Stonetile brings this action against Castcon, its president, Robert Will and two other shareholders and directors, Ronald Will and Bernie Knopp, alleging a misuse of confidential information. Stonetile alleges that Robert Will conveyed trade secrets of Stonetile to Castcon, in contravention of a duty of confidence and fiduciary duties he owed to Stonetile, as well as in breach of a confidentiality contract.


 [3]               1.         Is there an Action for Breach of Confidence?

 1.1.      What is the nature of the confidential information?

 1.2.      Is the information confidential in nature?

 1.3.      Was the information conveyed in confidence?

 1.4      Was the information misused by the party to whom it was communicated?

 2.         Is there an Action for Breach of Contract?

 3.         Is there an Action under the Trade-marks Act?

 4.         Is there a Breach of Fiduciary Duty?

 5.         What are the Available Remedies?


[113]      The pleadings against the defendants Bernie Knopp and Ronald Will allege that they had induced Robert Will to breach duties owed to Stonetile. No evidence was lead in relation to that conduct by those two defendants, and the action against them is dismissed.

 [114]      The plaintiff is entitled to damages of $111,345.00 against both the defendants Robert Will and Castcon.

Canada: Jurisprudence récente sur la question de la désignation des inventeurs pour une demande de brevet

June 9, 2010

Weatherford Canada Ltd. v. Corlac Inc., 2010 FC 602, (June 3, 2010)

Extrait sur “inventorship”:


[235]      Issue 9 under this heading concerns whether one or more of Ed Grenke, Art Britton, Walter Torfs, Michael Engelen and/or Andreas Reincke are inventors of the subject matter described and claimed in the ‘937 patent. There appears to be no shortage of people who had some involvement with the ‘937 Patent and who now seek the credit and more tangible benefits of being “the” or “an” inventor of this patent.


[236]      The key precedent on the issue of determining who is an inventor is Apotex Inc. v. Wellcome Foundation Ltd., [2002] 4 S.C.R. 153 which requires a court to determine “who was responsible for the inventive concept”.

97   Section 34(1) requires that at least at the time the patent application is filed, the specification “correctly and fully describe the invention … to enable any person skilled in the art or science to which it appertains … to … use it”. It is therefore not enough to have a good idea (or, as was said in Christiani, supra, at p. 454, “for a man to say that an idea floated through his brain”); the ingenious idea must be “reduced … to a definite and practical shape” (ibid.). Of course, in the steps leading from conception to patentability, the inventor(s) may utilize the services of others, who may be highly skilled, but those others will not be co-inventors unless they participated in the conception as opposed to its verification. As Jenkins J. notes in May & Baker Ltd. v. Ciba Ltd. (1948), 65 R.P.C. 255 (Ch. D.), at p. 281, the requisite “useful qualities” of an invention, “must be the inventor’s own discovery as opposed to mere verification by him of previous predictions”.


98   More recently, in Henry Brothers (Magherafelt) Ltd. v. Ministry of Defence and the Northern Ireland Office, [1997] R.P.C. 693 (Pat. Ct.), in response to a submission that an invention could be divided into contributed elements and patents awarded accordingly, Jacob J. stated, at p. 706:


I do not think it is right to divide up the claim for an invention which consists of a combination of elements and then to seek to identify who contributed which element. I think the inquiry is more fundamental than that. One must seek to identify who in substance made the combination. Who was responsible for the inventive concept, namely the combination? [Emphasis added.]


[237]      Germane to this issue is the Supreme Court’s conclusion that a person who contributes to the inventive concept may be a co-inventor while those who help the invention to completion, but whose ingenuity is directed to verification rather than original inventive concept, are not co-inventors.


[238]      The burden of proof of co-inventorship rests on the party asserting the claim to sharing in the inventorship. In the present circumstances the Defendants had the burden of proof that on a balance of probabilities, one or more of Britton, Torfs, Engelen and/or Reincke were “an” or “the” inventor of the ‘937 Patent. The Defendants must undercut Grenke’s claim to inventorship (as opposed to ownership – the two are not synonymous).


[239]      It is important on this issue, as explained in Apotex, above, at paragraph 85, that the “inventor” is not just a person who comes up with a general idea or thesis. The inventor must have reduced the idea or thesis to a definite and practical shape by building it as described or by fully describing how it will be practised – showing that there is utility in the claimed invention.


[240]      While the same analytical issue arises whether the invention is a combination patent or not, it is the combination itself which is the novelty not the elements of it. As held in Lovell Manufacturing Co. v. Beatty Brothers Ltd. (1962), 41 C.P.R. 18, even where certain elements have been contributed by persons other than the inventor named, this would not make them joint inventors of the combination.


[241]      The Defendants have taken the approach of breaking down the ‘937 Patent into various elements, the rotating sleeve, the U ring seals, various arrangements and then attributing contribution by various persons to each of these elements. This is an approach which runs contrary to that laid out in Apotex, above.


[242]      The ascribed contributions are based on witnesses’ recollection of what was said, or not said, on dates certain or approximated – in few instances is there documentary or other corroboration. The Defendants try to put Grenke in the role of nothing more than an “assembler” of others’ contributions.


[243]      The better approach is to examine the evidence as a whole taking account of the “selective” memories, the dimness of recollection and the general absence of documents.


Jurisprudence récente – information confidentielle – secrets de commerce

June 4, 2010

Voir la décision référée plus bas – un bon résumé de jurisprudence pertinente canadienne en secrets de commerce)

 Aquafor v. Whyte, Dainty and Calder, 2010 ONSC 2733 (CanLII)

[3]                       Aquafor claims that Mr. Whyte and Mr. Dainty were fiduciaries and that the manner in which they departed Aquafor was a breach of their fiduciary and other duties to the company.  In particular, Aquafor alleges that Mr. Whyte and Mr. Dainty breached their duties by: secretly planning to leave and set up a competitive firm; failing to give adequate notice of their departure; soliciting clients; soliciting employees; appropriating corporate opportunities; and using confidential information to secure future work for Calder.


[81]                    Aquafor also relies on the GasTOPS case in which departing employees of an engineering consulting firm were found to have appropriated corporate opportunities of the firm.  I distinguish that case.  The employees were found to have developed a competing software system and marketed it to the firm’s customers, using confidential business information.  That is quite different from the case of professional engineers setting up their own practice to provide engineering services, particularly where the client is the one who wishes to engage those services. 


  qui réfère à:

 GasTOPS Ltd. v. Forsyth, 2009 CanLII 66153 (ON S.C.)

 Duty to Not Misappropriate Trade Secrets or Confidential Business Information

 [117]              Regardless of whether an employee is characterized as fiduciary or key, he or she is barred from misappropriating the former employer’s trade secrets and/or confidential information and from using such information to compete with the former employer. This is one of the only exceptions to the general principle of an employee’s right to competition listed in Geoffrey England’s Employment Law in Canada, 4th ed., looseleaf (Aurora: Canada Law Book). What constitutes a trade secret is difficult to determine or precisely identify, however it generally pertains to the nature of the business. The English decision of Faccenda Chicken Ltd. v. Fowler, [1986] 1 All E.R. 617 (C.A.) suggests, it is possible to identify a trade secret by reference to:


1)            whether employees know the material or information in question ought to remain confidential;


2)            the nature of the material itself;


3)            whether the employer has emphasized the confidential nature of the material;


4)            whether the material can be separated from other, non-confidential material.




[118]              Geoffrey England lists these factors as weighing in favour of finding a trade secret:


(a)               if the material in question affords the employer a comparative advantage such that disclosure of that information would seriously harm the firm;


(b)               if the employer can prove that it has made reasonable efforts to limit access to, and dissemination of, the material within the firm;


(c)               if the custom and practice of the industry is generally to regard that particular kind of information as confidential;


(d)               if the material in question is not accessible to the rest of the industry;


(e)               if the material in question can be categorized as “pure and applied” research such as a novel invention, technical or design specifications, technical manufacturing or construction processes, chemical formulae, secret recipes or craft secrets.




[119]              Conversely, “confidential information” tends towards the more administrative aspects of a business.  As held in R. v. Stewart, 1983 O.R. (2d) 225, confidential information includes lists of suppliers; lists of customers and their needs; instructions as to manufacturing processes; lists of employees and relevant employment information; and computer programs cataloguing the firm’s business.  For information to be protected as confidential information, it must carry the indicia of secrecy and satisfy the legal test for confidentiality (Khan v. RDMI Inc., [2001] O.J. No. 233).  Of particular interest here are customer lists.  Generally, courts protect employees who happen to remember those lists for their own purposes post-employment but will not protect those who are found to have memorized lists for the exclusive purpose of canvassing them for personal business post-employment.


[120]              The purpose of the law of trade secrets is to provide protection for information-based assets that are not publicly known by prohibiting others from using, disclosing or otherwise misappropriating the information.  The terms “confidential information” and “trade secrets” are recognized in the jurisprudence as being synonymous concepts. Numerous decisions have imposed a duty of confidence on former employees, whether or not they are fiduciaries. The main principle articulated in these decisions is that trade secrets or other information obtained in confidence while in the employ of an employer is not to be disclosed or used by former employees.  Any disclosure or use of such information is a breach of the duty of confidence.


[121]              In CPC International Inc. v. Seaforth Creamery Inc., [1996] O.J. No. 3393 (Gen.Div.), Cumming J. stated at para. 22:


… To constitute a trade secret, the information must not be of a general nature, but must be specific. The specific information must not be generally known to the public but it [may] be acquired from materials available to the public with the expenditure of time and effort. The owner of that specific information must treat it as confidential and it must be clear that the owner regards the information as secret. The information should only be communicated to an employee on a need-to-know basis and within the constraint that the owner shows his/her intention to maintain the secrecy of the information. If there is disclosure to a third party beyond the employment relationship, the owner should require of that party that there cannot be disclosure or use in any way not authorized expressly by the owner.


[122]              The confidential information need not be committed to a document that is physically removed from one’s former employer.  Committing information to memory is tantamount to the physical taking of confidential information.


[123]              In Matrox Electronic Systems Ltd. v. Gaudreau, [1993] Q.J. No. 1228 (S.C.J.), Guthrie J. discussed the “springboard” principle, which prohibits an individual from using information obtained in confidence as a springboard for activities detrimental to the person who made the confidential communication and requires such an individual to be careful to use only portions of the information that are in the public domain so as not to gain an advantage over the public. He stated at para. 83:


What is really being protected in situations of this nature is the original process of mind. The protection is enforced against persons who wish to use the confidential information without spending the time, trouble and expense of going through the same process. One can reconcile the springboard principle with the overriding principle denying confidence in information in the public domain, by describing the “springboard” as a measure of the scope and duration of the obligation enforcing good faith upon an ex-employee while the rest of the world catches up.


[124]              Whether or not a particular subject matter is a trade secret is a question of fact. The onus is on the plaintiff to demonstrate that the information alleged to have been misappropriated was at all material times confidential. To determine whether information has the necessary “quality of confidence”, courts have considered:


(a)               The extent to which the information is known outside the business;


(b)               The extent to which it is known by employees and others involved in the business;


(c)               Measures taken to guard the secrecy of the information;


(d)               The value of the information to the holder of the secret and to its competitors,


(e)               The effort or money expended in developing the information;


(f)                 The ease or difficulty with which the information can be properly acquired or duplicated by others; and


(g)               Whether the holder and taker of the secret treat the information as secret.


[125]              In employment-related cases, the courts also consider whether:


(a)               the employer possesses a trade secret;


(b)               the employee knew it was secret;


(c)               the employee acquired knowledge it during his/her employment;


(d)               the employee has, after termination of his/her employment, used of this knowledge improperly.


[126]              In my view, the defendants were well aware at all material times that the business opportunities GasTOPS was pursuing and its proposals to potential customers was confidential business information. I am also of the view that they were subject to a fiduciary duty not to use such information directly or through MxI to compete unfairly with the plaintiff.  GasTOPS spent a great deal of time and money developing products and solutions for its customers, especially as its programs were “hard coded” (designed for a particular engine and/or aircraft). There can be no doubt that the confidential business information to which the defendants were privy at GasTOPS would be extremely valuable to GasTOPS competitors. It seems to me that confidential business information of which an employee learns during his/her employment over which a duty of confidentiality applies during the employment might also be subject to a duty of confidentiality after the employee leaves his/her employment, especially vis-à-vis customers or potential customers of the former employer. The defendants owed a higher degree of confidentiality with respect to such information in dealing with GasTOPS’ customers and potential customers than in dealing with those with whom GasTOPS had formed no business relationship during the defendants’ terms of employment there.


[127]              In Delrina Corp. (c.o.b. Carolian Systems) v. Triolet Systems Inc., reflex, [1993] 47 C.P.R. (3d) 1 (Ont.Gen.Div.), the defendant was an experienced computer programmer employed by the plaintiff to re-write the source code for an application program. The defendant formed his own company and created a program to compete with the plaintiff’s program, and the plaintiff alleged misappropriation of trade secrets.  O’Leary J. stated:


In my view, the evidence before me does not enable me to conclude that what has gone into the development of this suite of programmes is of so confidential a character that respondent should be restrained… I emphasize that I am not here referring to the copying of the suite of programmes. That respondent plainly cannot do. It is common cause that much work, skill and time is needed to produce a suite of programmes of this kind. If respondent were permitted simply to copy it, he would be unfairly nullifying the advantage of the “long start” over anyone else to which applicants are entitled. To that limited extent, the suite of programmes is, in my opinion, a trade secret …


O’Leary J. found that if the defendant wanted to re-write the suite from scratch, he could do so, so long as he “wipe[d] clean from the slate of his memory (as if that were possible) any recollection he may have of the things which it seemed to him were appropriate for inclusion in such a suit of programmes, or of appropriate formulae, or the like.”


[128]              In Software Solutions Associates Inc. v. Depow, [1989] N.B.J. No. 419 (N.B.Q.B.), Higgins J. discussed the criteria necessary to establish that information contained in computer software can be considered a trade secret, quoting an article that concluded:


[C]omputer software that is distributed pursuant to a licence agreement containing confidentiality provisions, and that is in all other respects treated as being confidential and proprietary property of the owner, would be a trade secret. Similarly, any information related to a unique hardware design will be a trade secret, provided of course that it is treated as such by the owner.


The information sought to be protected must be specific in nature.


[129]              As with trade secrets, the facts of each particular case are crucial in determining whether a breach of confidence has occurred. The subject of an employee’s duties with respect to confidential information obtained in the course of employment was considered Chevron Standard Ltd. v. Home Oil Co., [1980] A.J. No. 656, aff’d [1982] A.J. No. 744 (C.A.), wherein Moore J. considered at para. 110 “the nature of the information, the employees’ relation to it, the amount of knowledge possessed and the circumstances in which it was obtained and when it was obtained” as some of the factors to be considered. Moore J. also held that there is an onus on the plaintiff to establish that the information was confidential and that it was used to the plaintiff’s disadvantage.


[130]              The facts in Clayburn Industries Ltd. v. Piper, [1998] B.C.J. No. 2831 (B.C.S.C.), are very similar to the facts of this case:


The information which was available to Messrs. Schoen and Piper was variously described. It included key contacts at various customers: who actually made the decision within an organization, who could agree by a “hand shake” and who had “constraints” on business decision making. It also included what products had previously been installed at a customer (how those products performed, what was and was not preferred by the customer), what workers from the union hall were good and what workers weren’t (who should be “name-hired” and who had been found by which customers to be good or bad), the budget a client might have for repair or new construction in the upcoming year, the projects likely to require bids and those that would not be bid, what were the product costs of the plaintiffs, what were the standard markups of the plaintiffs for both product and labour costs, and technical information about the products of the plaintiff (productivity rates, installation practices and procedures, safety standards and practices).


After reviewing all of the evidence, I am satisfied that the plaintiffs have not shown that any lists were actually taken by Messrs. Schoen and Piper when they left the employ of the plaintiffs. As well, it is clear that some of the information that they took with them included information which would generally be available to anyone who made diligent inquiry.


However, I am satisfied that much of the information they knew as a result of their employment with the plaintiffs was of a confidential nature and that, in accordance with the decisions dealing with these matters, neither was in a position to use such confidential information. I find that Messrs. Schoen and Piper used the following confidential information improperly after they left the employ of the plaintiffs… (paras. 32-34)


[131]              The defendants submit that in order to be capable of protection, the trade secret must be information that is defined with some degree of precision.  In other words, it must be identified by the plaintiff with sufficient specificity.


[132]              A breach of confidence will be established where: (1) the information has the necessary quality of confidence; (2) the information was communicated in circumstances giving rise to an obligation of confidence; and (3) there is an unauthorized use of the information to the detriment of the party communicating it. (See Lac Minerals Ltd. v. International Corona Resources Ltd., [1989] S.C.J. No. 83, at para. 129.)


[133]              The courts have used a “reasonable person” test to determine whether information embodies the necessary quality of confidence.  The courts examine whether a person, acting reasonably, should have expected the information to be confidential: if the person should have realized that the information was to be maintained in privacy, there will be an implied obligation to maintain it in confidence. In Coco v. A.N. Clark (Engineers) Ltd., [1969] R.P.C. 41, Megarry J. stated at 48:


It seems to me that if the circumstances are such that any reasonable man standing in the shoes of the recipient of the information would have realised that upon reasonable grounds the information was being given to him in confidence, then this should suffice to impose upon his the equitable obligation of confidence. In particular, where information of commercial or industrial value is given on a business-like basis and with some avowed common object in mind, such as a joint venture … I would regard the recipient as carrying a heavy burden if he seeks to repel a contention that he was bound by an obligation of confidence.


The fact that an employer did not tell its employee that information was confidential is not determinative. The test is whether a reasonable person standing in the shoes of the recipient of the information would have realized that the information was being given in confidence.


[134]              In Matrox Electronic Systems Ltd. v. Gaudreau, supra, the court acknowledged the difficulty of proving misuse of confidential business information through direct evidence in some cases.  Guthrie J. stated at para. 94:


In cases involving confidential business information, misuse can rarely be proved by convincing direct evidence. In most cases, employers must construct a web of perhaps ambiguous circumstantial evidence from which the Court may draw inferences which convinced it that it is more probable than not that what employers alleged happened did in fact take place. Against this often delicate construct of circumstantial evidence, there frequently must be balanced the testimony of the employees and their witnesses who directly deny everything.


[135]              In Computer Workshops Ltd. v. Banner Capital Market Brokers Ltd., [1988] O.J. No. 223 (H.C.), the court recognized that computer software, including components, methodologies, designs, specifications, schematics and knowledge of the trial and error process employed creating it falls within the ambit of trade secrets and confidential information. The court held that a trade secret can exist in a product even where all the components thereof are in the public domain on the grounds that a trade secret can exist in the original combination or characteristics of components or in the unique design of the product as a whole.


[136]              Customer information has also been held to be confidential information in need of protection by the court, as it is valuable and forms part of the good will of the employer and was developed over time at the employer’s expense.  A former employee who had access to such information and used it after leaving the employer could seriously injure the employer’s business by springboarding to activities detrimental to the former employer.


[137]              In Metaphore Corp. v. Protek Systems (London) Inc., [2000] O.J. No. 4975, I stated at paras. 8-9:


Given that Metafore has designed unique systems for its clients and is aware of the needs of these clients, Protek, with former Metafore employees, is a threat to Metafore’s business. A new company entering this specialized field would not pose such a threat. It is the confidential information that Metafore has about its clients that is so valuable.


Protek with former employees of Metafore can compete for the business of Metafore clients on the basis that a shift from Metafore to Protek will be seamless as the same employees will be servicing the client and making recommendations on improving their systems.


[138]              Confidential business information may include customers’ names, contact persons for customers or potential customers, customers’ or potential customers’ needs and preferences, the rates the business (employer) proposes to charge the customer and the price that the customer is prepared to pay or is paying. A particular document containing the information need not have been removed from the employer to find that confidential information has been misappropriated. (See Trauzzi at paras. 62-63.)


[139]              In addition to the special knowledge of the target and actual customers of the employer, the knowledge of the employer’s policies, procedures and selling strategies in relation to their customers can constitute confidential information, as it makes it possible to undercut the former employer and to promise a seamless transfer of business to induce the customer to move its business to a new supplier. In Scantron Corp., Eberhard J. stated at para. 20 that the freedom to compete refers to skill and knowledge rather than confidential information, because “This information could include not only the special knowledge of the target customer but also knowledge of the employer’s policies and procedures making it possible to undercut the former employer with a view to inducing the customer to change from its current supplier to the former employees.”


[140]              Former employees may be liable to their former employer for wrongful appropriation of corporate opportunities based on misuse of confidential information.  In Omega Digital Data Inc. v. Airos Technology Inc., [1996] O.J. No. 5382, the individual defendants held senior positions at the plaintiff employer and were, together, intimately familiar with virtually all aspects of its business. While employed by the plaintiff, they were involved in negotiations with a potential distributor of the employer’s product that did not succeed; within days of leaving the employers, they were engaged in similar discussions on their own. Sharpe J. noted at para. 30 that the following factors would be relevant in considering whether or not the defendants wrongly appropriated the plaintiff’s corporate opportunity: “the pursuit by the defendants of precisely the same market niche [and] the evidence of approach to the same customers and of deals and arrangements with co-venturers actual or proposed of the plaintiff.”


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

May 14, 2010

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.



Ontario: un particulier accuse sans succès GSK d’avoir retardé l’entrée de génériques par le processus des NOC

May 9, 2010

Harris v. GlaxoSmithKline Inc., 2010 ONSC 2326 (CanLII)

Une décision avec des tableaux intéressants qui montrent la complexité de la question des brevets / procédures NOC entourant un produit pharmaceutique (7 brevets et 6 procédures NOC)


[133]      Before completing this part of my Reasons for Decision, there is one final matter. After the argument of this case, to his credit as an officer of this court, Ms. Harris’ counsel provided me with a copy of the judgment of Justice Padova of the United States District Court, E.D. Pennsylvania, in Nichols v. SmithKline Beecham Corp. 2005 WL 950616 (E.D. Pa.). This was a class action against GSK in the United States that alleged that GSK had caused consumers to overpay for Paxil by: “stockpiling and causing patents to be listed;” violating s. 2 of the Sherman Antitrust Act; violating state antitrust and consumer protection statutes; and violating the common law. The action included a claim of sham litigation similar to the claim made in the case at bar.

[134]      Justice Padova’s judgment was to approve a settlement of the claims as fair and reasonable. In the course of making that determination, he considered the Plaintiffs’ risks of establishing liability. Justice Padova’s comments reveal that the sham litigation claim in the United States’ class action was as dubious as is the claim in the case at bar. He stated at p. 14 of his judgment:

In order to prevail on their claim that GSK’s patent infringement suits constituted sham litigation, Plaintiffs would have to demonstrate that GSK’s actions were both “objectively baseless” and “an attempt to interfere directly with the business relationships of a competitor.” …. Co-Lead Counsel recognize that they face significant hurdles in demonstrating that GSK’s actions were “objectively baseless.” Indeed, Judge Posner, who ruled inSmithKline Beecham Corp v. Apotex Corp. 247 F.Supp. 10111 (N.D.III.2003), that Apotex did not infringe on the ‘723 Patent stated in Asahi Glass Co. v. Pentech Pharm. Inc. 289 F.Supp.2d 986 (N.D.III.2003) (Posner, J.), that “[w]hether or not Pentech infringed patent 723 or other patents held by Glaxo, including patents on anhydrous forms of the paroxetine molecule, is uncertain, but there is nothing to suggest that the claim of infringement was frivolous.” Id. At 992.

[135]      I, therefore, conclude that Ms. Harris’ allegations of sham litigation are ridiculous and not capable of proof, and this provides another reason for concluding that it is plain and obvious that her claims of abuse of process, conspiracy, and waiver of tort are not viable in law. 

Jurisprudence récente de la Cour fédérale sur un brevet “obvious to try”

May 7, 2010

Extrait: The main problem with the ‘772 Patent is that it is an “obvious to try” patent.

 Sanofi-Aventis Canada Inc. v. Ratiopharm Inc., 2010 FC 230, (March 5, 2010)


[24] The issues in this proceeding are:

(a) What is the proper claim construction?

(b) Is the ‘772 Patent valid or has Ratiopharm proven invalidity on one or more grounds of anticipation, obviousness, ambiguity of claims, claims broader than invention, inoperability/inutility, sound prediction, insufficiency of disclosure and double patenting?

(c) Does Ratiopharm’s proposed drug infringe Sanofi-Aventis’ patent more specifically does Ratiopharm’s tablet contain a diluent?

Si vous avez besoin d’une interprétation de “about”

39] The term “about” is not defined in the specifications, as is often the case with performance patents. Absent some indication of the range of “about” specified in the patent, the expert evidence which could help resolve the issue is inconsistent as to what the range should be.

[40] Sanofi-Aventis argued that it was “within 10%” and while Ratiopharm disputed that, Dr. Lee acknowledged that 10% was used in the U.S Pharmacopeia and he used the 10% rule both in some of his patents and in his affidavit.

[41] The best evidence suggests that a skilled person would more likely than not refer to such texts. The Court accepts that “about” means “within 10%”.


Jurisprudence récente en contrefaçon de brevets-Équipement de hockey

April 13, 2010

Pour coïncider avec le début des séries éliminatoires de la Coupe Stanley (et une bonne révision à lire pour l’état du droit avant le début des examens d’agents cette semaine).

La décision analyse entre autres le facteur “climate in the industry” pour le critère de non-évidence.

Bauer Hockey Corp. v. Easton Sports Canada Inc., 2010 FC 361, (April 1, 2010)

Voici les sujets discutés:


  I. The Evidence                                                                                                                   

II. General Background

      A. The Hockey Skate Market   

      B. Types of Skates  

      C. Skate Components                  

      D. Evolution of the Hockey Skate Construction 

E. Easton Skates 

III. Patent Construction

      A. The Legal Test

      B. Person Ordinarily Skilled in the Art      

      C. Common General Knowledge Principles    

      D. Analysis       

IV. Infringement

      A. Burden                 

      B. Analysis                         

V. Invalidity

      A. Standard of Review and Burden of proof                 

     B. Anticipation                                                 

      C. Obviousness

            (1) The Legal Test    

            (2) The Person Ordinarily Skilled in the Art     

            (3) Relevant Common General Knowledge 

            (4) Climate in the Industry 

            (5) Prior Art        

            (6) Inventive Concept           

(7) The Differences between the Common General Knowledge and the Above-Mentioned Prior Art and the Inventive Concept   

(8) Would the Difference be Obvious to the Ordinary Person Skilled in the Art?  

D. Lack of Utility                                               

      E. Misleading Representations subsection 53(1) of the Patent Act                               

 VI. Remedies, Interest and Costs

CA: décision du Commissaire sur le “double-patenting” dans le contexte d’une demande divisionnaire en biotech

February 26, 2010

Voir la décision du commissaire dans l’affaire:

  • 1299 (PDF) (2010-01-07) – Patent Application No. 2425101 – TNF-INHIBITING PROTEINS AND THE PREPARATION THEREOF; PROTEINES INHIBANT LE TNF ET LEUR PREPARATION (ABBOTT GMBH & CO. KG (Germany (Federal Republic of)) )
  • CA: décision du Commissaire utilisant les principes de l’affaire

    February 26, 2010

    Une autre décision de la Commission d’appel aux brevets qui rejette une demande de brevet en informatique pour un système de gestion d’une flotte de véhicules. La décision analyse en détail les principes établis dans la décision précédente du Commissaire dans l’affaire


    CA: jurisprudence récente-ajout d’inventeur à un brevet émis

    February 26, 2010

    Voir la décision Plasti-Fab Ltd. v. Canada (Attorney General) 2010 FC 172

    La Cour explique sous quelles règles un inventeur peut être ajouté à un brevet au Canada une fois que le brevet est émis.

    CA: Rappel de pourquoi en pratique canadienne, il faut le support du texte des revendications dans le sommaire de l’invention

    February 12, 2010
    Ce principe trouve sa source dans une décision de 1974:


    17 C.P.R. (2d) 110

    Affirming 12 C.P.R. (2d) 117

    Federal Court of Appeal

    Jackett, C.J., Thurlow, J., and Mackay, D.J.

    November 22, 1974

     In this case in my view, the specification did not comply in any substantial sense with s. 36(1). The first part of the specification 6 (down to the paragraph beginning “In the accompanying drawings …”) talks about the purposes and objects of the “invention” and says what it “relates to” but. Once the “specification” starts to refer to the drawings, it does nothing but explain the particular machine that those drawings represent and it makes it very clear that they, “for the purpose of illustration”, show “only a preferred embodiment of the invention” which I take to be patent jargon for saying that they are a fulfillment of the requirement that the applicant explain “the best mode” in which he contemplates the principle of the machine “being applied”.

    [17 C.P.R. (2d) p. 115]

    does not describe it, much less set forth how to construct it, explain its “principle” or indicate or claim the “part, improvement or combination” claimed to be the inventor’s invention

    CA: confidentialité de documents lors de disputes de PI devant la Cour

    February 12, 2010

    Une dispute de franchisés envers Tim Hortons avec une requête de Tim Hortons de garder leurs documents financiers confidentiels a produit une décision avec une bonne liste de jurisprudence en PI sur les ordonnances pour préserver la confidentialité des documents des parties:

    Trade Secret and Intellectual Property Cases

    [44]      Cases of true trade secrets and patents are likely to involve important public and private interests and sealing orders have frequently been granted in such cases: see Eli Lilly and Co. v. Apotex Inc., 2008 FC 892, [2008] F.C.J. No. 1593; Laboratoires Servier v. Apotex Inc., 2006 FC 1405, [2006] F.C.J. No. 1764; Camoplast Inc. v. Soucy International Inc., 2003 FC 1401, [2003] F.C.J. No. 1791; Merck & Co. v. Apotex Inc., 2004 FC 567, [2004] F.C.J. No. 684; AB Hassle. v. Canada (Minister of National Health and Welfare) 2000 CanLII 17121 (F.C.A.), (2003), 5 C.P.R. (4th) 149, [2000] F.C.J. No. 283 (F.C.A.). They have been granted prior to Sierra Club – see, for example, Dupont Canada Inc. v. Russel Metals Inc., [2000] O.J. No. 2043; CPC International Inc. v. Seaforth Creamery Inc., [1996] O.J. No. 2059, 70 C.P.R. (3d) 434. In Abbott Laboratories v. Canada (Minister of Health), 2005 FC 1368, [2005] F.C.J. No. 1669, Prothonotary Milczynski of the Federal Court refused to make a confidentiality order in a patent case, although she noted that such orders were common in patent cases. She found that, on the evidence, the Sierra Club test had not been met. See also Hyundai Auto Canada v. Cross Canada Auto Body Supply (West) Ltd., 2006 FC 1127, [2006] F.C.J. No. 1402. Orders were refused in Osmose-Pentox Inc. v. Société Laurentide Inc., 2005 FC 1689, [2005] F.C.J. No. 2093; and in Novopharm Ltd. v. Company “X”, 2008 FC 840, [2008] F.C.J. No. 1062.

    Voir: Fairview Donut Inc. v. The TDL Group Corp., 2010 ONSC 789 (CanLII)

    Canada: jurisprudence récente en brevets

    February 9, 2010
    Confidentialité des présentations de drogues nouvelles dans les procédures d’avis de conformité:

    1) EpiCept Corporation v. Canada (Health), 2010 FC 120, (February 4, 2010)


    Une décision avec application de l’ancien article 43 de la Loi sur les brevets sur les conflits pour les demandes de brevets pre-1989 quand le système de “first-to-invent” existait encore au Canada.

    Mycogen Plant Science, Inc. v. Bayer Biosciences N.V., 2010 FC 124, (February 5, 2010)