Ip master Guide

Courts needs to make sure that the threshold of improvements is high, make sure each one is more beneficial than the last.

Issue: Free riders might take out the most important part once it has been developed and squeeze the original owner out of its profits.

Additional concerns stem from timing of this matter. After 18 months everything is disclosed, experimentation can be done and new patent may be achieved 5/10/15 years before patent has expired.

Issue: Selection patents might allow for evergreening, constantly burrowing down within ones own patents.

Unpatentable discoveries S.27(8)

Mathematical formulae and algorithms

Considered equivalent to meet scientific principles or abstract theorems

Theory of relativity Theory of gravity Theory of Evolution

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  An invention that harnesses certain non-patentable things may still be patent protected but the constituent element is not patent protected (wind turbines cannot patent the wind]
  

• 
  “method of optimizing therapeutic efficacy for treatment”
  
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  Not sufficient to transform un-patentable natural correlations into patentable applications
  

Patenting them would not serve a public policy objective

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  Mere applications of mathematical concepts
  
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  Computer program took information that was once normally computed manually but did it itself.
  
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  Not an act of invention. Simply converting what used to be done manually into a computer program that utilises those algorithms is convenient, not new or useful.
  

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  a computing apparatus programmed in a novel manner , where the patentable advance is in the apparatus itself
  
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  method or process carried out with a specific novel apparatus devised to implement a newly discovered data”
  

This is a distinguishing factor from Schlumberger, It is no longer a mere algorithm.

The US: computer programs patented. Had very few restrictions if any due to not having same restriction on mere algorithms that Canada had.

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  2010 re Bilski: Software patents no longer eligible.
  
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    Programs with no discernable change or effect, no patent granted
    
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  2014: Alice Corp. v. CLS Bank International, US Supreme Court
  
  • 
    USSC denied patentability again. Us courts have adopted aversion to mere algorithm.
    

Amazon is a method patent: physically delivers item as well as a result of the method. The purposive construction of claims allows for the analysis of every step involved and what the inevitable effect may be.

Not unpatentable – but no patent on patent a process which is essentially a mathematical algorithm.

Techniques, styles of conducting business are aspects of operating in the professional world. If you create an innovative way to conduct business, you may be rewarded by the market, no patent is required
Amazon.com Inc. v. Canada

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  A business method can be patented if the invention disclosed is something more than just a “mathematical formula”
  
  • 
    The business method that simplifies business processes which enables you to effect physical changes through the novel aspect osf the program, then it is ok.
    
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  Process that is commercially useful application of skill and knowledge that is concrete and tangible
  

There is already an incentive built into the professionals conduct. People skilled in the field should have this knowledge so as to be successful at their craft

It wasn’t an art: Land didn’t change physically, other jurisdictions denied it, method was not art

They are to be expected from someone qualified in that area
Methods of Medical or Surgical Treatment

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  Discovering use of a compound or special use can be patented. (Teva)
  

Accepted: Claims on the use for treatment, and on devices (methods) of diagnosis accepted,

Not Accepted: method of treatment

Ex:

“the use of drug X for treating cancer in humans” - Patentable

Every time you tried to administer the treatment, you might be violating rights.

Goes against notions of property rights, instructs you on use of item.
Policy Considerations for Not allowing Method of Treatment Patents

Moral Considerations: Inhumane to deny people treatment that may save their lives. Unfair for people to expect to know about the patent that they would violate in advance and expect them to license it.

Human Rights: May be a human rights violation of not allowed to administer a life saving treatment: Charter implications in Section 7, plays into consideration about assisted suicide.

Professional Ethics: Professionals (including lawyers) are expected to be paragons of their trade, expected to do what it is they trained for. Breaks Hippocratic oath to not administer proper treatments.

Public Expectation: Public expects doctors to save lives, lawyers to prevent innocent people from going to jail etc. Would violate public trust vested in professionals.
Legal Basis for Exclusion of Practice Methods

Tennessee Eastman Co v Canada (1974)

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  Old section 41 in patent act actually used to restrict scope of patents, had humane consideration built in.
  
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  Old section 41 restricted the scope of patents on substances prepared or produced by chemical processes and intended for food or medicine.
  

Patent office will still not allow administration methods to be patented based on this case, but there is currently no legal basis that wouldn’t prevent you from attempting to patent administration methods

Microorganisms have always been able to be patented (virus, fungi, moulds etc) as composition of matter

They are described as being made up of atoms, and not as products of nature.
Courts currently do not recognize patent ownership over higher life forms directly, but do indirectly as a result of Monsanto v Schmeiser.
Jurisdiction: Patent Office and courts determine grants of patents by law, no discretionary elements included in legislation or inherent jurisidiction. As long as “patent” satisfied by law, it will meet test.

Courts interpreted scheme of act, object of act, and intention of parliament to determine that higher life forms were not intended to be subjects of patent protection.

Affirmed that lower life forms can be subjects of patents

Courts also limited their own role intentionally, best left to legislators. No moral power to compel denial or acceptance of patents.

Legislators have not been given any form of authority, only allowed to use their normal powers of interpretation to determine if something fits the subject matter.

Higher life forms do not fall under definition of invention either as a manufacture or a composition of matter.

Line drawn between higher/lower completely arbitrary, no substantial law background. Peculiarity of reasoning also draws suspicion, especially when almost all other jurisdictions recognize patentability of higher life forms.

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  All in agreement that PO/Courts have no moral/ethical mandate. If something fits into the statutory subject matter, it must be granted.
  

Former case is an empty shell, simple use of higher life form containing patented gene is essentially the same as infringing on the cellular level. No need to differentiate between cell at its origin or in its final form. Infringement is use by default.

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  After original criteria has been met (Art, method, process etc), additional criteria must be made out
  

Comes in stage of examination or later when a patent granted is being challenged for obviousness

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  A “mere scintilla” of utility will suffice if specification does not promise a specific result
  
  • 
    Applies especially to process patents
    
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  If specification sets out an explicit “promise” utility must be measured against the promise
  
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    Must be directed to a practical use
    
  • 
    If someone makes an anticipatory patent (mere speculation) it is not valid
    
    • 
      A wise guess (sound prediction) may be allowed
      
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  Marketability not an issue
  
  • 
    unless patent specifically for commercialisation, (commercial utility) it is not required
    
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  Lack of utility of one or more of the compounds
  
  • 
    Utility examined on claim date.
    
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  Utility need not be of any social utility (patent act of 1994 removed illicit object requirement)
  
  • 
    Patent officer has no discretion (Harvard) Courts have historically considered beneficial aspects of the patent if it is brought up (1970’s razor blades). Are they the moral arbiters or is it best left to legislators?
    

On the claim date, you can make a patent filing for something that you are still in the experiment stage with.

You know it is useful, so you take action pre-emptively.

Through examination it is proved it is useful. By filing date you prove that it works but at the claim date that wasn’t clear.

1. 
   Must look at evidence: Analysis is fact based
   
2. 
   Must have a factual basis for the prediction
   
   1. 
      Ex: Initial Tests on mouse cells proved useful, may transfer to human cells
      
3. 
   Sound line of reasoning from which desired result can be inferred
   
   1. 
      Similarity of cells leads to inference it might work, were cells different, connection may be more tenuous
      
4. 
   Proper disclosure in the application: Everything must be there, no special treatment for prediction
   
5. 
   Determination is same as a normal patent
   
   1. 
      If patent is shown to be wrong, patent is voided for lack of utility
      
      1. 
         This is normally discovered during examination by the patent office
         
   2. 
      If patent is shown to be correct, patent may be granted
      
6. 
   Assumes more work to be done: Development of the item may take much longer than the initial 18 months. Product does not need to be final in this case but the balance between protection and prediction is tenuous.
   
7. 
   Must be approached with judicial anxiety: Courts default position is that the item is an invention; courts are not designed to disprove the inventions utility or use.
   
   1. 
      Analysis of disclosure is done in a purposive way: intending to establish the utility of the patent and whether or not it will meet the standard.
      
8. 
   Specification must be detailed enough for patent examiners to see or predict the usefulness if you are basing your patent on sound prediction
   
   1. 
      If there is any issue with clarity, Patent Examiners may require additional evidence
      

On claim date  must demonstrate predictability, sound reasoning.

Doctrine lies between wishful thinking and proof of utility

Advice: File patent as soon as possible, but try not to risk being invalidated.

Usefulness is a common ground for invalidity claims.

If you are relying on a prior claim date, there must be sound prediction

If you are relying on file date, there must be utility.

Most of the time, patents are challenged after they have been given

Disclosure time for many industries would not allow enough time for people to invalidate claim or test it themselves
Novelty

Has the invention been disclosed? (Anticipation)

There must not be a “prior art” (material) which may have disclosed the invention

There must not have been an earlier application

Priority in application either based on local filing or international filings (S.28.1)

Disclosure occurs if the invention or its claims have been made available to the public or select non-confidential groups without any requirement for confidentiality.

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  Grace periods: 28.2(1): inventor, applicant, or someone obtaining knowledge in confidence directly or indirectly
  
  • 
    If you published an article 6 months ago…doesn’t matter
    
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    Only applies to these three people, any other manner of disclosure and you’re boned.
    
    • 
      If there is a prior art/patent no luck, if you disclose to joe blow, no luck.
      
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      Disclosed a year and a half ago, too late.
      

Patent Examiners  may claim or discover there is prior knowledge

Any reader of the Canadian Patent Office Record  may claim or discover there is a prior knowledge

Essentially anyone: Can raise claim that something was disclosed before your claim/filing
What constitutes Disclosure

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  Normally established via prior publication.
  
  • 
    Disclosure anywhere in the world can count
    

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  Can be disclosed in any kind of document
  
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  Able to find all of the information in a single, prior publication which, for practical purposes, is needed to product the claimed invention without the exercise of any inventive genius (purely by mechanical skill)
  
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    Still may not constitute disclosure if too many additional steps or discoveries required
    
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  Contains so clear a direction that a skilled person reading and following it would be led to the claimed invention
  
  • 
    Oral dissemination is disclosure in Canada, not in the United States
    

Sale to the public or use by the public alone is insufficient: What more is needed?

Must amount to enabling of disclosure (make information available)

If based on this sale someone is able to reproduce it, could amount to disclosure. (Reverse engineering)

If the chemical compound can be discovered by a person skilled in the art using known techniques in that field, then prior sale may be enough to constitute disclosure.

Products can, and quite often do, come with contracts or restrictive covenants that deny the ability to reverse engineer to the purchaser of the item. This confidentiality protects disclosure.

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  To be considered a disclosure under reverse engineering, it is not necessary to show that a member of the public actually did conduct the reverse engineering, only that it is possible to reproduce
  
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    Amount of time and work involved in conducting the analysis not determinative of whether a skilled person could discover the invention
    
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      The product that is the subject of the analysis need not be capable of exact reproduction.
      
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        If a large part of the invention is reproducible because of your action of sale or use and hypothetically someone can reproduce it it can amount to disclosure.
        

Usage restrictions: Experimentation with product allowed unless it is no longer “Reasonable and necessary”  Patent act gives specific ability to conduct experimentation for personal use.

Information disseminated must allow for reproduction or enough information being given to allow for reproduction.

Information found by public allows for reproduction.

Pharmaceuticals: Public being able to identify invention is sufficient.

Even if invention fits into subject matter of patents, it still cannot be patented if obvious.

Court inferred obviousness from the definition of invention when it wasn’t stated in patent act

Now stated in patent act at 28.3

Inventions implied inventive ingenuity, without which an advance was obvious

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  Obviousness only matters at the claim date. If something seems obvious afterwards that is of no relevance to the awarding of a patent
  
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  It must not be obvious to a “notionally skilled person” at the time of claim
  

Query: Would a notionally skilled person in the field find the invention obvious?

Unimaginative skilled technician: Only is able to output manual work – unable to express innovation or creativity  Not a person in the related field.
Apotex Inc v Sanofi-Synethlabo Canada Inc 2008 (Rothstein)

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  (Notionally skilled) Endowed with ordinary skill, creativity and common sense
  
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    Technologically adaptable (latest stages); aware of prior art (knows publically available literature) reasonable and logical inquiries.
    
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  Background technical knowledge (Must be aware of things that predated the invention) aware of other similar patents that may be available. (Doesn’t need to know everything in field)
  
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    Knowledge that is confidential, known by a privileged few, that is excluded.
    
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      Must know what is known by most skilled workers.
      
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  Inventive steps (to what extent does the invention differ from background knowledge)
  
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    What is the standard of change required?
    
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  Difference between new inventive concept and the prior art
  
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    Every knowledge that differed prior to time of invention
    
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  Would differences have been obvious?
  
  • 
    Come to the notional skilled person directly and without difficulty?
    

Note: Many endeavors are team efforts and may require people contributing across multiple different practice areas.  Is it obvious to the notionally skilled team?

1. 
   Motive: What caused them to try and engage in finding a selection patent
   
   1. 
      Is it a profit motive? Desire to evergreen? Health emergency? Lack of Resources?
      
2. 
   Self-evident that what is being tried would work?
   
   1. 
      If a notionally skilled person would think to try it, too obvious
      
3. 
   Extent, nature and amount of effort required
   
   1. 
      More effort = less obvious (Question of fact)
      
   2. 
      Does a person with the prerequisite skill have the wherewithal to take this on
      
4. 
   Anticipated success?
   
   1. 
      If they can anticipate the result, most likely not innovation
      
5. 
   Obvious to try vs. worth a try (US) (Given the anticipated success…)
   
   1. 
      Obvious to try (CAN) is more rigid. Any research might find something worth a try, but much harder to find something obvious to try.
      

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  Secondary considerations: Could provide emphasis to facts
  
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    Commercial success (may come from brilliant marketing, not the invention) parties can provide this as evidence to support their claims
    
  • 
    Product made from a different material (plastic smart phones vs glass phones)
    
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    Long felt want (large issue solved through the invention)
    
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    Attempts by others (did they fail or succeed)
    
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    New process invented, no-one goes back to old one (was it a paradigm shift)
    

All of these factors are used to prove the obviousness or nonobvious nature of the product based on who is litigating the issue

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  Non-obviousness Vs. Novelty
  

Once the patent has fulfilled the subjective criteria and satisfaction of subject matter, certain rights and privileges will be afforded to the title holder.

The designation of “Inventor” is always afforded to the person or team who first independently thought of the patent claim. The system is designed to give recognition at the basest of levels to the inventor.

S.42 - Inventor s. 42;

S.32 - Inventor of an Improvement

Inventor must always be named regardless of who owns the invention or who their legal representative or agent may be.

S.52 – If inventor is wrongfully identified, the claim can be amended to have the inventor put back in, even after issuance of the claim and even if they have no further right to the claim.

If two independent inventors file for invention at the same time, patent is granted for both.

Does not contradict bargain principles, may even improve them as competition between inventors may allow for more benefit to public, no longer a monopoly.

S.31: Joint Inventors: “One invention, one patent”  Each individual’s share is determined from the heart of the inventive concept.

All inventors would apply as joint inventors. If someone is left off the application, there can be a petition to leave the person off or say their whereabouts are unknown.

It is still possible to have name put back on where appropriate.
Quantum of Ownership

If there is a dispute as to who contributed what, you can adduce evidence to see what X and Y contributed to the patents creation.

Is the contribution essential to the heart of the invention? If their contribution is immaterial they are kicked out, need not be inventive.
Employment Context: If an invention is created as a term of employment or during a relevant employment term, there still must be a recognition of who the original inventor was.

Normally the inventor owns the rights to an invention. If done during employment, employer will most likely own.

What if the item invented has nothing to do with the employment?

Employers hold the balance of power, does the employee know what they are signing up for?

What if the invention is worth a fortune? What if the invention is worth more than the business?