|Disclaimer: This set of notes does not claim to be either authoritative, correct, or even satisfactory. You should, at all times, exercise your own judgment and disagree with what I’ve written when appropriate. There may errors, omissions, or outright fabrications that should be ignored and ridiculed at all times. I make no warranty or condition as to the veracity of my notes and only a fool would think otherwise. Please forgive any colourful language. Good luck, I sincerely hope you don’t need it.
IP Master Guide
Intro to IP
IP in all of its forms (Patent/Copyright/Trademark) is primarily a creature of statute. Very few rights exist at common law. As a result of the statutory scheme, the case law tends to clarify and refine the legislation
Historically, IP was “Industrial Property” Focused on control over the means of production and manufacture of industrial innovations. As we move into the “intangible age”, IP becomes more focused on things like computer programs, genetics, life forms, novels, etc
Intellectual Property: The right to exploit information and the right to exclude others from exploiting that information.
What constitutes IP is difficult as different jurisdictions have different things they want to protect and different regimes they want to prop up.
A communist government will have different ideas about what constitutes IP and IP infringement than a traditional capitalist/liberal government.
Differentiation between real and intangible property
IP Ownership is ownership. The owner has full control over the property and its exploitation much the same way as a homeowner over his or her home
That being said, there is no complete exclusivity as there is over possession of chattels.
IP is protected by statute and case law, cannot be protected by other means.
Additionally, there is no benefit in having IP forever. IP helps to spur on more IP and its inclusion into the public domain serves the public good.
Determination of ownership time over IP governed by statute, has historically evolved to grant more time.
Rights of Exploitation in Information
Can be transferred/inherited/assigned
Enjoys protection from state appropriation
Grants right to exclude others (but to varying degrees)
Exploitation of information can be worth much more than physical property exploitation, as such IP enjoys varying strengths of protection in varying avenues of law. Courts now appreciate that the value of intangible items must be respected, especially as we move forward in the digital age with items sometimes existing entirely online (Amazon)
IP Categories – Products of “Intellectual Activity”
Copyrights: Ideas, products of the mind, expressed in literary and artistic works
Patents: Innovations and creativities that have industrial application
Integrated Circuit Topography: Integrally formed interconnections that are intended to perform an electronic function
Industrial Designs: Designs that gave a special appearance to a product or handicraft
Lower forms of Intellectual Activity
Trademarks: Trades distinguishing marks in a commercial setting
Geographical Indications: Indications that identify a good as originating in a geographical locations
Trade secrets: Valuable commercial information in the business world.
Moral rights: rights to attribution and to prevent distortion
Torts of Passing Off: Prevents misrepresentations that deceive or confuse consumers in the marketplace of decisions .
Tort of Misappropriation: of personality: public figures commercial use of their name, image, likeness, or other aspects of their identity.
Historical Origin and Development of IP
Tracing back to Ancient Greece Ideas as free as the air. Ideas are a common resource.
Given they were developing modern thought, it makes sense when comparing them against other groups that they would not put any proprietary rights on IP. It did not serve the particular public bargain at the time.
Intellectual Property Rights did not extend beyond territory of the sovereign who issued the rights.
Travel was less frequent, less chance of overlap. Almost no chance of enforcement outside of boundaries of dominion. Evolution of rights indicates state taking on some responsibility for enforcing rights thereby giving back to the people who applied to have their rights protected
Free riding was a real issue, states began entering into bilateral agreements to help protect citizenry abroad as much as possible. Theft of ideas was still a real issue, but theft of this idea unlikely to affect your economic rights or rights to exploiting your idea.
Geographic make up of Europe and differing levels of statehood.
Establishment of multiple bilateral and multilateral treaties and agreements
Paris Convention of 1883
Berne Convention of 1886
WIPO 24 multilateral treaties by 1992
Establishment of “National Treatment”: Nations began establishing legislation and adopting legislation that allowed them to treat IP aspects domestically as they did internationally, thereby establishing implicit support for the power structures being created.
After the Industrial Revolution ended, increasing shift towards appreciation of intellectual property. No longer the same reliance on sheer industrial methods, understanding that ideas were helping to spur on the creation of the mechanics. Ideas were much easier to steal as a result of cross atlantic travel and communications
Invention of the telephone, shortly after, invention of multilateral treaties.
Populace now needed international bodies because everything was growing bigger than themselves. Governments needed protection from each other and to try and force compliance on nations with poor behaviour. Establishing treaties and legislation in advance prevents issues with international litigation.
Intellectual Property Rights incorporated into international trade rules.
Entities representing audio-visual, publishing, agricultural and pharamaceutical cocerns foisted these things together. With increasing inter-reliance between states, it makes sense that combining these two issues with the implicit understanding that protecting right to economic exploitation was at the forefront would be the most efficient manner to approach any future issues.
Creating a level playing field for all involved makes sure that nations that have certain skills can pursue those appropriately and without fear of being exploited. Populace is gaining from the bargain insofar as the international instruments prevent them from unintentionally infringing or being infringed upon.
Standards and norms of IP have global coverage (mandatory and obligatory)
Systematic global enforcement
They are under obligation to honour national treatment principles
They face trade sanctions for not meeting minimum requirement
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)
Most-favoured nation treatment (America, commonwealth country)
If someone gets preferable treatment, it must extend to all member states
Increasingly stronger IPRS through bilateral and regional treaties came from this such as NAFTA, Transpacific agreements, new Canada/EU agreements
All of these trade issues contain IPRS
Resulted in people amending national legislation to meet minimum obligations under TRIPS regarding IPR’s.
Canada amends corporate act to meet further obligations. Patent act to undergo further amendments.
Justification for IP Protection
State must step in to guard things that people view as property (legal view). The fruits of our labour are increasingly intangible and it isn’t right to value a physical manifestation more than something that could lead to physical changes or effects.
State also guided by international influence especially from US and US lobbying. Creation of most substantial agreements resulting from the rise in economic clout of the United States post WW2 was largest shaper of rights.
Justification for IP
Natural Rights/Labour Theory
We own our mind and the “profit a prendre” is there for the taking. Similar to fishing. We own the results of our labour.
Invention is seen as a form of “self” Denying self is in essence to deny personhood and respect to the inventor. We derive the most satisfaction from recognition, not from materializing of wealth
Patent/Copyright We respect your “selfhood” for a limited time. After your selfhood has been sufficiently appreciated, it is time for it to be shared. IPRS cannot be monuments to your greatness as it elevates the individual beyond the sacrifice they are making for the protections afforded.
Additionally, inventions are often built on old inventions, there is always some contribution from past culture either directly or indirectly, do not want to give that person permanent credit for something that was passed down to them. Culture of improvement and respect.
IPRS as a Contract/Bargain
Enter into contract with state. After X years invention idea becomes public, but in the mean time he receives protection from the state (limited/temporary monopoly)
Eventual benefit to public is worth granting temporary protection
Balancing of interests
Individuals receive some limited rights depending on type of IP for protecting that persons IP
Multiple Flaws with Analysis:
Contract: If state fails to protect you, do you sue state for damages?
Bargain: Freedom of expression, what if their right trumps yours? (Balancing of fundamental rights versus granted rights) Harry Potter reading on the night of release/spoilers
Contract: Rights protection is never absolute and always subject to provisos. Are these provisos really something we are consciously agreeing to?
Evergreening (Contract): Manipulation of system may allow for final exchange to never take place. Person signs a contract and reaps the rewards perhaps permanently. Clearly in bad faith nd not only violating contract with government but also social contract with populace.
Granting of certain rights is a reward given to you by the state.
Reward given is typically through form of statutory protection of your rights, right to exploit your idea right to prevent it from outsider exploitation.
The state is attempting to maximize greatest amount of happiness to all involved groups. Granting a limited monopoly in which the author can exploit the resource temporarily, the author is rewarded appropriately and the public gets the benefit of wanting to seek a similar reward along with the utilization of the idea when it enters the public domain.
Inventions are not entirely based on commercial success and profit
Some people pursue inventions for non-monetary reasons, some stumble upon them through serendipity, others do it for self fulfillment. Important to recognize the aspects of the regime that allow people to give their inventions away or donate them to good causes.
Critique of Rewards theory
This also pushes people to engage in innovation in primarily economic ways (commercially attractive ways). People develops items that will reward them monetarily, this leads resources away from smaller or underprivileged areas (poor people, smaller diseases)
Ebola, ALS etc. are not focused on whereas Botox and skin surgeries which cater to rich people
Orphan drugs and orphan diseases also sometimes get proportionally more money or research than they should out of a misguided lust to cure societies ills.
Social Planning Theory
Explicit appreciation of the legislations ability to create certain predominant sentiments within society. Understandable given our approach to valuing IP is reflected in how it has been protected or expanded at law
IP can and should be shaped so as to help foster the achievement a just and attractive society
Helps to recognize consumer/public interest in IP.
A limited term monopoly for an invention.
A right to exclude others from making, using or selling one’s invention
Granted for new, unobvious, and useful inventions
The term of protection for a patent – 20 years is supposedly the best balance between public rights and inventors rights to exploit their invention.
Invention market value is roughly equivalent to the 20 year period. Must give sufficient time to benefit from invention. Avoids issues with Heirs and succession as well.
People can find a way to build on that invention in the mean time and take advantage once patents have expired.
Patents have no fair use condition, complete prohibition complete freedom of use after 20 years (20 years resulting from TRIPS agreement)
Canada went from 15 (5-5-5) to 17 to 20 years.
Should there be limitation periods for different kinds of IP? Should some things due to their inherent ability to promote creativity and innovation be different in their monopoly period?
I believe so. Certain things like extremely important life saving medical devices or wonderful new drugs are being exploited for too long. 3d Printers are only now being developed due to patents expiring such a long time ago, now their benefits are only beginning to be recognized
Hindsight is 20-20, easy to see now how important 3d printing will be, but there should be a process in place to allow for the patent office to vary amount of time for a patent.
Distinction from Trade Secrets
In some cases, people do not want to disclose their secrets. They get some protection but not the complete protection (granted at common law).
Programs or certain types of machines being patented might be especially damaging to the original patent holder. Significant improvements may be able to be made to existing inventions or selection patents might allow for them to be completely stripped of their use. Better to keep it entirely secret that way you have less risk of innovation from outsiders.
A trade secret protection applies to any invention, method or process that gives the owner of the information a competitive advantage in the market place.
Courts protect it in a way that can reasonably be expected to prevent the public or competitors from learning about it (not so all encompassing as to bring in criminal proceedings most likely)
Once made available to the public, trade secret protection ends (Regardless of method of disclosure)
Could sue leaker of trade secret in accordance with terms of employment contract. Can also seek injunctions against those who attempt to utilize it in other businesses prior to its leak.
Filing Date and Claim Date
Filing date: Date on which the application is filed; on which the Commissioner receives the documents, information and fees prescribed. S.28
20 years from filing date is when patent protection starts
Claim date: the date when the subject matter of the claim is disclosed
Each claim in a patent has a claim date, different claims may have different claim dates
Claim date and filing date are the same usually
S.28(1) – Sometimes they expose their invention and if they finish it before 12 months is up their original claim date would become their file date. They still have the time to finalize it and modify it. Should be relatively similar.
If claim is filed first and filing is done within 12 months, filing date reverts back to claim date.
Claim date may be before file date if you are filing internationally. As long as part of the appropriate treaty, file date will revert back to claim date of original jurisdiction.
Having a patent in one country won’t protect you in another country by default, must apply. Does help to establish precedent. Countries are setting up fast tracks.
Important that it doesn’t apply automatically as there are still matters of good governance and certain territorial implications that must be taken into account. One can imagine a circumstance where use of a particular machine or crop could decimate local economies if subjected to patent protection without taking local circumstances into account
Most jurisdictions are “first to file”, some have been or still are “first to claim”
If both patents fall on the same date, both are given patent protection
Patent agents execute and work on claim construction. Communication between inventor and patent agent isn’t privileged.
Applicant can be a the inventor, employer or an agent who purchased the patent
S.27(1) “Inventor or the inventor’s legal representative”
Contents of the application
“Specifications” comprising of “disclosure” S.27(3) – the description of the invention (often shown through schematics or drawings)
Disclosure must be in such a detail as to enable a “person skilled in the art” to replicate it S.27(3)
Applicants detail monopoly sought (Must be specific)
Rights are expanded/limited by claims, you can only protect what you claim.
What new things does this invention do?
What problems does it solve?
Abstract What is the purpose of this invention?
Normally only one patent is claimed. Depending on linked
Multiple claims allowed if linked in a “single general inventive step” S.36 (1)
Different inventions must be necessary parts in this single inventive step, otherwise you must file for additional patents.
Application fees ($200) + Patent Examination Fees + Patent Grant Fees + Maintenance Fee
Renewal fees paid to maintain a patent
To be paid on a yearly basis s.27.1(1)
Fees differ depending on whether small entity or large entity. (International protection = +fees)
Examination must be requested within 5 years
You are given 5 years to determine whether the patent is economically viable.
You may even wish to sell your own patent or prevent others from monetizing it (Developing patent technology might be expensive in the mean time, people might come in to purchase it once you have done additional work)
Patent application disclosed 18 months after application s.10.2
Available in print or online people can either contest patents or use the disclosure to further their own goals
Role of a Patent Officer
Patent Officer either grants or rejects
They will actually try to make your item.
They are also arbitrator of public interest, might not be in interest of public to grant patent. Do this by looking into the law.
That being said, they have no discretionary measure whatsoever. As long as something is a patent by law, they must give a patent.
Appeal to Patent Appeals Board
Can re-examine officers decision under appeal
Goes to federal court after appeals board. Federal government has jurisdiction over patents, copyright, trademark etc. Only federal court has jurisdiction over patent appeals board.
If someone infringes your trademark, you can go to BCSC or Federal Court, but decisions of appeal board only for federal judges.
Contents of a Patent
Requirement: Contents must be truthful S.53(1)
If contents are untruthful in specifications and drawings different than in application, invalid
Specifications and drawings
Not more or less than their purpose (only enough to disclose invention)
No wilful omission or addition to mislead
If you act with the purpose to mislead through addition or omission, your patent will be voided.
How about misstatements with no purpose to mislead?
Involuntary mistakes are allowed to be amended by patent officer, or if you make mistakes you may only get patents for correct elements.
No false “material allegation”:
If they touch on subject matter of the claim (not the application) it may void the patent.
“Non Material Allegations” (errors in regard to application) may not necessarily void the patent.
Depending on the effect of the false material allegation, it may render the PO unable to test the patent/replicate it and if the “use” is not there, it can be invalidated.
Respond to examiners questions in good faith s.73.1(a)
Do not respond within 6 months: Deemed abandoned ergo void.
Extent of Disclosure
You must disclose the best mode of working the invention: S.27.3 (c)
Courts are serious about requirement of disclosure; crucial for exchange of monopoly.
Patent holders don’t deserve patent in the beginning if insufficient disclosure discovered later.
Typical patent cases do not have enough disclosure. Attempting to make it so that their claims avoid as much disclosure as possible.
Less disclosure hinders replication. Most people will work on the patent during its exclusivity period and try to get things ready for when it expires. Competitive advantage is retained if less disclosure is given, harder to have other people work on vague disclosures as they might infringe on nebulous patents.
Patent Applications: Key Case
Teva Canada Ltd vs Pfizer Canada Inc, 2012 SCC 60
Facts: Teva attempting to utilize Viagra patent. Sued Pfizer over inadequate disclosure over the patent. Too many potentially misleading compounds were found in the patent application. They never pointed out exactly which compound actually works, which one is preferable is nebulous, not clear that other compounds don’t work. Wanted to be able to produce drug in generic form due to invalid patent.
Held: The specification required, at a minimum, “a minor research project” in order to determine whether claim 6 or claim 7 contained the correct compound. Must be able to be produced with only the information contained in the patent application, rendering the best method of production.
What must be considered is whether a skilled reader having only the specification would have been able to put the invention into practice
Pfizer had the information needed to disclose the useful compound and chose not to release it. Even though Pfizer knew that the effective compound was sildenafil at the time it filed the application, it limited its description deliberately.
Lack of disclosure, not a useful decription, didn’t address that Syldenafil is the only compound that works. Concealment and avoidable obscurity is what should invalidate the patent according to Teva
Did Pfizer give sufficient disclosure?
What was supposed to be disclosed? Was it just the chemical?
The use of the chemical itself was the invention. The chemical compound that achieves the purpose for which the patent is claimed.
“Specification as a whole, does it all come together to construct a single, general inventive concept?”
The whole claim must show how this is achieved, disclosure must relate to the use of the invention.
Pfizer: Teva was able to figure it out, they figured out which chemical was the proper substance.
SCC: Disclosure must be enough so that only instructions contained in disclosure are necessary, doesn’t require minor research project. Public wouldn’t have been able to use it right away without that research project. Must be able to replicate just by materials alone.
Class action suit against Viagra (Because they had invalid patent, profits should be disgorged)
Patent Granting Criteria
Patent granted for an invention
“...any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement” s. 2 PA
Categories of recognized patentable subject matter
(Must fit into this category) art, process, machine, manufacture, composition of matter and their improvements.
If it falls within recognizable category, must also meet additional patent criteria.
Must be: Non-obvious, useful (no moral recognition necessary), new.
Categories are expanded or restricted based on culture, legislation and caselaw
Canada doesn’t have a morality requirement (historically did but removed). Courts implicitly take the role upon themselves to be moral arbiters but are not officially in this role.
Courts take this role on by determining whether something fits the subject matter of the patent act through legislative analysis (Harvard Mouse)
Patent act is designed to grant a benefit to the public through the disclosure bargain, makes little sense to allow potentially harmful things to all citizens.
United States: Courts have an expanded ambit. Almost everything made by man is patentable.
Canada: Courts are not designed to overturn patents.
Are also much more restrictive than US courts.
Application of knowledge to effect a desired result; the practical application of knowledge, defined in a manner that gives practical effect to the knowledge
Must be practical, must give practical effect to the knowledge. Some tangible effect to an intangible knowledge.
Can be applied as:
A manner of achieving result through a step or series of steps to arrive at the desired result (method)
A manner of achieving result through the application of a particular means (use)
Eg. - medical uses for a known pharmaceutical
Distinction between Method and Use: (Teva) Method involves directing a person skilled in the art to take steps to reach the result. Use does not require any specific steps. Use is only a “means to be applied”
Teva: “The how of implementation is the invention” The idea of using this particular thing to cause a certain effect.
In Teva, The method of making the drug was not in question as the compound was already known. Disclosure was not met because the actual invention Pfizer should have filed for was the use of the specific compound in treating ED (the use).
Amazon.com Inc v Canada – The program is not a use. The program is a method patent because there is an emphasis on the chain of procedures that will achieve the desired result (one step purchasing)
Trying to solve the problem of cumbersome purchasing.
Note: Professional techniques are generally not patentable. Signature method of cross examination, ways to treat certain medical patients etc Denies the bargain principle. Allowing a doctor to only perform a surgery a certain way if they license the technique ALA Monsanto is ridiculous, serves no one.
Differing from Art(Method): Process does not need to lead to a finite outcome, may not have certain result.
Normally applies to industrial processes
Example: Computerized method of manufacturing a product. Focus not on product but process of producing it. Often refers to computerized processes aiding mechanical applications.
Styrofoam factory, process of using wires to cut through Styrofoam. May result in many different applications, may only be one step in the process.
Any mode of operation by which a result or effect is produced by physical or chemical action;
Systematic series of interdependent actions or steps
Point of Interest: Computer assisted process distinguished from MERE mathematical formula
Canada: Process must be tied to a complete result. Ergo:
Computer programs doing certain algorithms = not patentable
Computer program algorithm that open doors, close windows etc = patentable
Amazon Inc v Canada – Computer program that goes towards a complete result (buying item)
US: Bilski Invention only a process if attached to a machine or something practical or it can transform something from one thing to another.
US courts have abandoned old stance wherein algorithm without end result was acceptable. No more monopolies on mere algorithms, leading to certain computer software being denied patents.
The mechanical embodiment of any function or mode of operation designed to accomplish a particular effect.
Each machine part can be subject to different patents. Normally previous patent holder allows use of their patent.
The process of making articles or material (in modern use on a large scale) by the application of physical labour or mechanical power, or the article or material made by such a process
Create something new physically. Did not exist before.
Combination of elements that interact to produce something more than their sum
combine a known meat mincer with a known sausage stuffer to manufacture a sausage-making machine?
Something new must be the result. If it is simply the end result of the two individual tasks done by the machine.
Harvard Mouse: Manufacture understood in via oxford definition. Item being created by “hands of man”
Higher lifeforms are not “manufactured by hands of man” proceeding by way of analogy incorrect. Cannot manufacture higher life forms.
Composition of Matter
Things have been moved/organized in such a way to come to a kind of substance
chemical compounds, compositions and substances.
new molecules, purified substances and even isolated micro-organisms
“Composite Article” Refers to compounds, substances, microorganisms etc
Pharmaceutical drugs are the results of compositions
Canadian Courts have made distinction between micro-organisms and higher life forms
A combination of living micro-organisms coming together to make something it is patentable
Anything that can be created and replicated insofar as the replicated compositions of matter will be completely the same and uniform as all other group members
A combination of things generating a higher life form is not patentable.
Harvard Mouse – So many other things contribute to the creation of the lifeform that are not controlled by “the hands of man” as per manufacture.
1980 US: Diamond v. Chakrabarty
Genetically engineered bacterium was patentable. Bacteria that destroyed oil. “Anything under the sun made by a human.”
Legislators have allowed economic concessions to the patent laws and may continue to do so depending on where the bargain best lies.
1982 Canada: Re Abitibi “… all micro-organisms, yeasts, moulds, fungi, bacteria,
Canada suffered from U.S result in Diamond. Inevitable that it would want to make its laws similar to another WIPO entity.
“pioneering” inventions vs improvements
Selection patent: a fraction of a larger known class of compounds which was the subject matter of a prior patent.
Drug composed of “x” number of materials, additional things added might result in a new use.
Courts use special criteria to determine differentiation between old and new inventions.
Unpatentable Subject Matter
A discovery reveals something which already exists in nature and, hence, cannot be said to be an invention.
A newly discovered natural law or phenomenon
Traditional knowledge in biotechnological inventions
Invention by definition is something that never existed before.
Some times difficult to differentiate between medicine and discovery, find a new special plant that cures cancer or something, is it an invention? Do you add to it to give it patent protection?
No invention comes out of the blue. Most inventions come from original pioneering invention. New inventions can be patented based on old patent but cannot overwrite old patent.
Improvements on patent rights can be given to pioneering patent owner or;
May go to the person who improved on the original pioneering patent