Le droit des brevets porte sur une invention. Celle-ci doit être nouvelle, non évidente et utile. Jusqu’au milieu du XXième siècle cette branche de la propriété intellectuelle a connu un développement plutôt linéaire. Les progrès récents en informatique d’abord, puis en physique et biologie, ont bousculé les principes sur lesquels le monopole reposait. L’univers des brevets est désormais un monde obscur, peuplé de trolls…
A – Histoire et justifications
B – Formalités d’obtention – fonds et formes
C – Le droit dans l’invention : les revendications et le mémoire descriptif
Chisum (Donald), “Common law and civil law approaches to patent claim interpretation: ‘fence posts’ and ‘signposts’”, Intellectual Property in the New Millennium
All patent systems must have standards for establishing rights and their scope
Re scope of right, there is a tension between balancing fair protection for owners and maintaining reasonable degree of certainty for third parties. (problem of inconsistency)
The latter is best maintained by a literalist interpretative approach, where only what is said in the patent is protected. This is typical of the UK (“fence posts”).
The former is best maintained by a more purposive view, where the language is indicative of what is protected. This is typical of Germany (“sign posts”)
Interpretation can be of direct comparison, i.e. c/r and TM, or by comparison to reasonably precise statement of invention (Patent)
Claim must define invention for it to be patentable and give notice to third parties.
European protocol: calls for “fair protection for the patentee with a reasonable degree of certainty for third parties,” which has led to development of inquiries into compliance w/ literal meaning and material effect of words.
USA: summary judgment stage: court determines if there is no genuine issue of material fact. Trial stage: fact is tried.
Exception: (to US literalism) doctrine of equivalents: what is equivalent is also protected: creates uncertainty but is fair and possibly more efficient. Clarification: Equivalency is to be determined on an element by element basis. Clarification: prosecution history estoppel prevents patentee from claiming the benefit of things it has surrendered by amendment.
Practice: lawyers press broadly worded claims and then litigate once allowed by Patent Office. Hope to gain as wide protection as possible.
Federal Court of Appeal flips between literal and purposive interpretations and often based on general principles of interpretation. Regularly cite dictionaries, and can do so w/o referral by parties. Methodologically incorrect to not cosult! But, dictionary definition must be informed by the patent claim.
D – La notion d’invention
« invention » Toute réalisation, tout procédé, toute machine, fabrication ou composition de matières, ainsi que tout perfectionnement de l’un d’eux, présentant le caractère de la nouveauté et de l’utilité, article premier, LB
i – Logiciels et ordinateurs
ii – Le savoir-faire et les méthodes
iii – Le vivant
E – Le caractère inventif de l’invention
In Plavix, the Supreme Court of Canada provided a four-step approach for assessing obviousness at paras 67 to 69:
[67] …
(1)
(a) Identify the notional “person skilled in the art”;
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
Apotex Inc. v. Sanofi-Aventis, 2011 FC
Jurisdiction
FC
Facts
Litigation between A, who makes a generic drug, and S, who makes a patented drug. A is challenging S's patent. '777 patent is a selection patent which protects a member of a patented genus. Drug is clopidogrel bisulfate, and its particular atomic arrangement is meant to be critical.
Issues
(1) Does S have standing?
(2) Has the '777 patent patent been infringed?
(3) Is the patent invalid?
Holding
Patent was infringed but is invalid b/c of obviousness and lack of utility.
Reasoning
Standing
Have to have benefit of infringed patent to claim it is infringed. s. 55(1) PA.
Application: S was a partner of patentee. Jp is clear: licensees, even non-exclusive ones, can bring claims. Includes ppl who derive rights from patentee (expands to all things contractual re patent). License does not even have to be express.
Claims Construction
Court follows purposive approach, focuses on what person of ordinary skill in the art (POSITA) would have understood the patent to mean. Must be read as a whole.
POSITA: may be person or group, and is an average member of the relevant field. (“unimaginative, uninentive, ordinary level of competence”) Preliminary battle: parties bring experts to determine what competencies POSITA would have.
Infringement
Infringement is undefined in Act and is always a question of mixed fact and law. Violation is when full enjoyment of rights is deprived. Proof: burden is on patentee to show lack of full enjoyment.
Prohibition: extends to use, sale, importation. Possession can lead to rebuttable presumption of use.
Finding: Apotex manufactured, used, imported, exported, possessed and sold the protected drug. Rights were infringed.
Substances are deemed to be made accoring to protected processes.Proof: burden on defendant. Apotex alleges that supplier used a different process but can't convince the court. Clarification: in process claims, only essential elements are protected. Essential elements, if substituted or omitted, take the claim outside the monopoly. Non-essential changes are not fatal to a claim of infringement. Method: determine if something is non-essential by looking at the construction of the words in the patent and whether POSITA sees obvious substitutability. Conclusion: processes are really similar, only changes are non-essential: Apotex has infringed.
Infringement leads to liability.Exception: exemption if use is developmental and related to submission of information that is required by law, see s. 55.2(1) PA. Application: Apotex alleges experimental use, has budern to prove this. Fails.
Other defences: (a) re limitation periods: rule: s. 39(1): if matter is not purely provincial then there is a 6 year limitation period as opposed to whatever rule would apply in the relevant provinces. Application: evidence shows that infringement was in several jdxs.
(b) re settlement agreements and estoppel defence: litigation in other jdxs was settled. Ppe: estoppel prevents double recovery of same issue between same parties after a final juridical decision (outcome). Aapplication: not the same issue here b/c agreements didn't address infringement of the particular patent.
(c) re abuse of process: rejeted.
Validity of Patent
Proof: defendant has burden.
Anticipation: exists if there was disclosure and enablement to re-create patented thing prior to grant.Clarification: disclosure does not need to be exact, enablement needs to lie above a threshold of trial and error. Subject matter of patent can't be published in anything more than two years before filing. See s. 27(1)(b): invention not elsewhere disclosed is patentable.
Application: Court says that attendance at conferences, writing abstracts, showing posters, etc. is not enough to make information enter into mind of POSITA as part of general knowledge. However, proximity of genus and species matter a lot. If very close, can be discolusre, but they aren't in this case.
Double patenting: single monopoly - can't have multiple patents on the same thing.Application: conceptually close to anticipation re genus/species. Ct rejects.
Utility: Utility is required to be granted a patent.
Lack of utility already rejected / Demonstrated utility: not accomplished by studies
Sound prediction
Fundamental aspect: promise of patent. Analysis is not about degree of difference between patented molecule and previous molecules. Ct looks at evidence and finds that the promise is of a molecule with better activity, toxicity, and tolerability; this is established by S.
Three part analysis to sound prediction
(a) factual basis: ct looks at drug's record in past studies. Finds that a factual basis for predicting utility exists, can be based on global analysis of facts. Must be prima facie reasonable to conlcude that the invention is useful and that the patent does what it says the invention will do. Ct finds that, despite some setbacks, research shows good track record for the drug.
(b) sound reasoning: there is no automatic extrapolation from success on animal test to success in humans, good track record on inhibiting platelet aggregation is established.
(c) proper disclosure:quid pro quo, monopoloy for knowledge.Rule: if benefit of monopoly is predicted, disclosure obs are higher. Must disclose the prediction, not just factual basis and line of reasoning. Finding: '777 patent does not lead POSITA to extrapolate to use in humans. Disclosure must be in the patent. Too difficult to see what S was giving the public in return for its monopoly, therefore patent is invalid.
General comments: ct finds there is a promise of utility but there is no sound prediction because of incomplete disclosure. Bargain with society as important as good science.
Obviousness
No monopoly for something obvious.
Obvious to try test:
When appropriate: where advances in the science happen incrementally (esp in pharma)
Method: Four step approach
(1)
(a) who is POSITA? A group of PhDs.
(b) what is the relevant general common knowledge?
Expertise in chemistry, chirlaity, enantiomers, stereiosmers, racemtaes, optical activity
(2) what is the inventive concept of the claim?
Compound useful in inhibiting platelet aggregation
(3) what were the differences between the state of the art and the inventive concept of the claim?
Process to make salts from molecule
(4) without knowledge of the claim, are the differences noted simply steps that would be obvious to the POSITA or do they require further invention?
Use obvious “considerations” as a guide. (yes)
Considerations: (after this analysis it was stressed that conduct matters, effort, expense, etc. Problematic if you're lucky). Note that there is a difference in ppe btw worth a try and obvious to try: the former relates to possibility of success and, if success follows it is protectable; the latter relates to likelihood based on common general knowledge and is unprotectable.
(a) is success self-evident? Are there a limited number of prediction solutions known to POSITA?
- another method to separate salts was available but there is no garuantee it would have worked; method used would probably not have been chosen by POSITA and therefore is not self-evident.
- methods of obtaining salt-formation were obvious and well-established
(b) what effort was required to succeed?
- there were several events which created pressure for the separation of enantiomers one from the other, that is distinguishing between them, in patent applications (including the thalidomyde disaster). POSITA would have been aware of the need to make efforts in this direction.
(c) was there a motive provided by the prior art?
- yes.
Conclusion on obviousness: compound but not its properties were known before '777 patent. POSITA would have used a different method, of separation but knew about relevant solvants, methodology, and would have been motivated to try to separate enantiomers. Overall: it was obvious to try.
Other
Date of invention: when inventor was capable of describing how to make invention.
Common general knowledge: Limits availability of patent protection because if generally known, possibily obvious. invention in patent revealed either by reasonably diligent search or w/in knowledge of POSITA. Information must be available to contribute to CGK. Apotex says materials already available, ct disagrees. Finding: reasonably diligent serach in 1987 would not have revealed info on molecule. Molecule was known but its properties were not.
Eurocopter v. Bell Helicopter Textron Canada Ltée 2012 FC
Jurisdiction
FC
Facts
Classic patent claim. Euro claims infringement, Bell claims invalidity. Patent is over helicopter landing gear that saves money, reduces load bearings and is lighter. Bell made 21 similar copies and used one of them at a trade show.
Issues
Is the patent valid? Had it been infringed? What are the remedies?
Holding
Partial invalidity in so far as it relates to a backward leaning front piece. Infringement in so far as Bell's Legacy landing gear violates the parts of the patent which stand.
Reasoning
Legal Framework:
(A) Court must construe patent's claims
Read patents in an informed and purposive way.Proof: extrinsic evidence as to inventor's intention is inadmissible.
Distinguish: btw claims which are essential and non essential. There may be self-inflicted wounds in the claims if they are self-limiting.
(B) Has there been an infringement?
“There is infringement if all of the essential elements of claim are present in the product, but there is no infringment if an essential element is different or omitted; there may still be infringement if non-essential elements are substituted or omitted.”
Clarification: “substitutability of non-essential elements comes from an informed interprtation of the language of the claims at the time of the publication of the patent. Both the elements specified in the claim and the variant not making use of this element must be presented to the POSITA. The patentee bears the burden to establish known and obvious substitutability.”
Clarification: “ID of elements as essential or non-essential is made on the basis of the common knowledge of the POSITA.” Test: if POSITA would have thought that claim was meant to be followed with strict compliance, then the variant is outside the claim.
Clarification: common general knowledge: testb: determine the source of the relevant piece of information and determine what field that information comes from.
(C) If there is an infringement, is the defendant within an established exception?
(1) Gillette Exception: a patent cannot be infringed if what a defendant is doing has already been disclosed in the prior art. (finding: not made out)
(2) Regulatory or experimental defence: s. 55.2(1), below. No infringement if product is made to comply with regulation or solely for the purposes of development.Also: jp exception for experimentation. (finding: not made out)
(D) Is the patent valid?
Regulated generally by s. 2 of the Act, below. (1) Is the invention useful?
Must be useful to get a monopoly.Rule: must either demonstrate utility of the invention or make sound prediction of utility based on science available at time of prediction. Proof: onus on party alleging lack of utility (defendant). Note: very low standard for establishing utility. Newer, better, cheaper, or afford a choice. Can include a disadvantage that is avoided.
Clarification: Promise of patent relevant to establishing extent of utility. Method: look at specification of patent through eyes of POSITA, determine true intent, and whether patentee had sufficient infromation upon which to base the promise at the date of filing. “bare speculation, even if it turns out to be correct after the fact, is insufficient to justify a valid patent.”
Matching ppe and sound predictions: (?)
if patent states what result has in fact been acheived, that statement is accepted for what it says subject to challenge in court.
if patent provides information and predicts a result, that prediction must be sound. Test:
(i) factual basis for the prediction
(ii) inventors must have at the date of the patent application an articulable and sound line of reasoning from which the desired result can be inferred from the factual basis
(iii) there must be proper disclosure. Ppe: to get a monopoly you have to tell society how you produced the invention. Rule: “the specification must explain the principle of the machine and the best mode in which the inventor has contemplated the application of that principle.”
Sound prediction looked at separately in Apotex.
(2) Anticipation and obviousness?
Obvious: lack of inventiveness, something that any fool could have done.
Anticipation: lack of novelty, assumes that there has been an invention but that it was already been disclosed to the public.
Rule: disclosure must have occurred in one single patent or other publication (Beloit). This publication must:
disclose “subject matter which, if performed, would necessarily result in an infringement of the patent. There is no room for trial and error or experimentation at this stage.”
enable: if there is disclosure, “at this stage, a certain amount of trial and error is allowed.”
Obvious to try test: 4 steps
1) a) Identify POSITA b) Identify general common knowledge of that person.
2) Identify inventive concept of the claim or, if necessary, contrue it.
3) Identify what difference exists between matter cited as forming the state of the art and the inventive concept to the claim or the claim as construed.
4) Viewed without any knowledge of alleged invention as claimed, do those differences constitute steps which would have been obvious to the POSITA or do they require degree of invention?
Factual and expert evidence Patent Construction
POSITA: engineers with familiarity with landing gear. Should know relevant scientific principles.
Common General Knowledge: things are usually kept secret in the field. A reasonably diligent searh would involve looking at databases of abstracts.
Specification: explicit promise made to reduce drawbacks significantly. The promised utility lies in higher load factors, new mechanism for reducing ground resonance, and lower weight.
Infringement
Compare the product at issue with the claims, not with the products made under the claims. Patents are not infringed b/c a defendant's product has the same function.
Finding: production gear claim - not all essential elements are present. Legacy gear claim: all essential elements are present.
Exceptions: ways to avoid liability if monopoly has been infringed. Like defenses.
A. Regulatory or experimentation exception:
Made 20 to test and 1 for trade show. Commercial prospects take it beyond compliance with statute and CML.
B. Gillette defense:
Prior art: not made out. Wanted to capture main benefit of what was protected by the patent.
Disclosure and enablement conditions are not made out. What exists was not publicly available, and even if it was it wasn't sufficient.
Validity
A. Obviousness: some incompatibility with obviousness/insufficient disclosure claims. Ct finds invention is not obvious. Inventive concept departs from prior art and was not available in publications. Invention would not have been known to POSITA.
Obious to try test: factors considered
1. was it more or less obvious that invention would succeed: NO
2. was acheivement of invention easy: NO.
3. Did prior art provide motive to find solution that patent addressed? NO.
4. What steps led to invention: Many, many calculations.
5. Was invention obvious to try: NO
B. Insufficient disclosure: specious.
C. Utility and overbreadth: there is definite utility. There is no overbreadth with regard to inclinations of front cross piece, use of aluminium, and connection devices.
- however, there is no utility to backwards leaning front cross piece.
Declarations and remedies
Backwards leaning front cross piece is invalid. Everything else is valid and has been infringed by B.
Injuction pursuant to s. 57, delivery up of landing gears, which are to be destroyed under oath
There can be a choice as to damages/profits disgorged. Here, there is not. Only damages. General damages and punitive damages awarded because of bad faith and egregious conduct and need to sanction bad conduct. Meant to punish B and deter others. Will be determined as to amount later on.
S. 55.2(1) It is not an infringement of a patent for any person to make, construct, use or sell the patented invention solely for uses reasonably related to the development and submission of information required under any law of Canada, a province or a country other than Canada that regulates the manufacture, construction, use or sale of any product.
