Patent in Canada – Overview

Patent in Canada – Overview

• 
  Some affinity with copyright b/c protecting something truly inventive.
  
• 
  If you come up with an invention/recipe/process: two options  secret or patent.
  

Information:

• 
  that is not generally known in the industry or easily accessible
  
• 
  with a commercial value
  
• 
  In respect of which the owner takes precautions to maintain its secrecy.
  
• 
  What is the benefit of keeping something a secret? Can get a monopoly forever.
  

• 
  Vaver: Trade secrets can be protected by Ks and breach of confidence action
  
• 
  Confidential information
  
  • 
    Cannot be completely in public domain although can be application of thought to info available to the public [i.e. cannot be public knowledge or general knowledge in particular trade]
    
  • 
    Was communicated in circumstances indicating its confidential nature [thus breach of confidence action can be taken against a third party who was given information with knowledge it was confidential]
    
  • 
    The receiver may have only misused the information [i.e. not disclosed it] – information can only be used for purposes for which it was conveyed.
    

• 
  Damages/lost profits
  
• 
  Injunction
  
• 
  Accounting of profits
  
• 
  Restitutionary award
  
• 
  SH: See Cadbury case re rejection of proprietary remedy for breach of confidence
  

• 
  a bargain btwn the inventor and the state
  
• 
  20 year monopoly in exchange for making the “recipe” public – disclosure is the quid pro quo
  
• 
  Protection against equivalent products or processes, even if independently created [compare to CR – if two people write a substantially similar piece of music though neither had access to the other’s work = no CR infringement – defence of independent creation]
  
• 
  Vaver: public benefit is irrelevant – inventions are patentable despite a lack of perceptible public benefit. As long as the invention has no “illicit object in view” – can be patented. Notion is that public benefit is to be measured by the market and not by the PO. [Vaver doesn’t think this is sufficient – need an independent panel of the PO to examine ethical concerns of patent applications]
  

• 
  some qualitative assessments will be made of any patent application – whether new and whether useful
  

• 
  “useful art, process, machine, manufacture or composition of matter”
  
• 
  Art: any learning or applied knowledge (e.g. known chemical compounds applied to a new use), including products; not business methods (yet!). What is a business method? E.g. accounting method, one-click shopping of Amazon.com
  
• 
  Process: series of actions or steps directed to a useful end; not the end itself
  
• 
  Machine: note that some have tried to bring computer software under machine – i.e. a computer temporarily transformed by new software = a new machine.
  
• 
  manufactures [product made manually or by an industrial process by changing character or condition of material objects] and composition of matter [composite article or substance produced from 2+ substance]
  
• 
  New substances
  
• 
  Life?
  
  • 
    Lower life forms (yeasts, bacteria, etc.)  Chakrabarty, Abitibi (Canada)
    
  • 
    Patentability of higher life forms in Canada is a bit up in the air  [court threw the issue back to the legislature in Harvard]. Note however, that the process by which gene is altered is definitely patentable.
    
  • 
    Note that American approach is different – if not specifically prohibited under Patent Act, ought to grant patent.
    
• 
  In theory, pure science [e.g math algorithms, theory of relativity] is not subject matter of patent – analogous to truths or facts in CR. Patent protects specific applications of those general principles.
  

• 
  Material protected under other IP laws
  
• 
  Pure science, nature, abstract theorems – e.g. a new food found in the wild
  
• 
  Schemes, plans and business methods – e.g. a “sure-fire” scheme for winning money at the race-track
  
• 
  Computer programs
  
  • 
    Programs treated as algorithms and thus fall under prohibition against patenting abstract theorems. Schlumberger: a program may do sums faster than an unaided human but that does not make doing sums patentable even if useful data result.
    
• 
  Medical and surgical treatments
  
  • 
    Devices or drugs for treatment are patentable but methods of treating humans or animals by surgery or therapy are unpatentable.
    
  • 
    Prohibition based on desire not to hamper the saving of life and alleviation of suffering. We want any capable surgeon to be able to perform the procedure.
    
  • 
    Note that the U.S. doesn’t have this exception
    
  • 
    [SH: but wouldn’t the instruments surgeon needs to use be subject to a patent?]
    

• 
  This “absolute framing” is unrealistic. Patent gives you power to prevent others from using, making, selling, etc. the subject of your patent. Patent-holder doesn’t have exclusive right to make, sell, etc. the invention, b/c his invention may require patented elements. Thus, his ability to make, use and sell is contingent upon the granting of licenses by other patent-holders.
  
• 
  This may create holdout problems [a governance issue].
  
• 
  Bottom line: Scope of rights depends on how others are exercising their patent rights.
  
• 
  Note that “use” applies to patented products and processes, and also to their output. E.g. patent for zipper machines covers the zippers produced by it [even though zippers aren’t patented]
  

• 
  S. 46 (1) PA: In order to maintain rights according to patent, patentee must pay any fees prescribed
  
• 
  S. 46(2) PA: Where fees aren’t paid w/in time provided, patent shall deem to have expired at end of that time
  

• 
  File application with Commissioner of Patents [s. 27 PA]
  
• 
  Application must contain:
  
  • 
    S. 27(3) – A specification (a) correctly and fully describing the invention and its operation or use as contemplated by the inventor, (b) setting out various steps in process or method of construction, etc. in such terms as to enable anyone who is skilled in the art to make or use it…etc.
    
  • 
    S. 27(4) – Claims – defining distinctly and in explicit terms the subject matter of the invention for which an exclusive privilege or property is claimed. That which is not claimed is “disclaimed”, i.e. in the public domain. Note that each claim is an independent grant of a monopoly. One or more may be found invalid, w/o necessarily affecting the validity of any other.
    

• 
  Specification or disclosure: give up as little info as possible (such that it is harder to imitate) – risk patent becoming invalid if not enough info
  
• 
  Mythical person used to determine various Qs: person skilled in the art has to be able to replicate the invention.
  
• 
  Claim: make it as wide as possible (wider scope of application). Want it to apply to the widest possible scope of applications – e.g. such that your patented invention cannot be used in some other field w/o infringement.
  
• 
  RISK? Invalidation of a claim or of the whole patent
  
• 
  Vaver: Game for patentees is to reveal as little and to claim as much as possible
  

• 
  File application with CIPO
  
  • 
    Runs from the filing date – so file early
    
  • 
    Public after 18 months
    
• 
  Patent cannot be issued until there is Examination of patent by specialized examiner; 5 years to request examination (so that market for the invention can be tested); if do not request w/in 5 years  claim is deemed abandoned.
  
• 
  Protestors can provide materials [e.g. send materials that show patent invention is not novel]. Upon examination, anything that would invalidate an issued patent bars the initial grant.
  
• 
  Issuance of patent
  
• 
  **Patent pending – btwn filing date and issuance of patent. If you copy and patent is received = you infringed.
  

• 
  Patents are NATIONAL, i.e. applied for and granted on a country-by-country basis. Exception is Europe, where can file for patent in Munich (European Patent Office) and get protection in chosen states.
  
• 
  Outside of Europe  Patent Cooperation Treaty simplifies the procedure for applicants wanting to obtain patents in several states. File in one country  designate countries in which patent are sought  application will be forwarded to designated countries and treated as separate application [need to comply with their domestic law]
  
• 
  Paris Convention  if file in Paris Convention country, have 12 months to file everywhere else w/o losing the novelty of the patent.
  
• 
  Patent still largely domestic – compare to CR [international?]
  

• 
  How do courts interpret claims (when determining validity or infringement)?
  
  • 
    Literal approach – look at words. Policy reasons in favour – certainty and predictability.
    
  • 
    Non-literal, purposive approach as in Canada - don’t just look at words; look at spirit – pith and marrow. More subjective but more desirable (DL). Some elements of the invention are more material or important than others; if element or step is non-material, and this element is changed, most courts would find that no new invention has been created.
    
  • 
    Doctrine of equivalents in the U.S. – this goes even further  does not extend patent protection to inventions that are deemed to be the “functional equivalent” of the earlier patented invention.
    
• 
  What’s at stake? The scope of the right. Too much protection vs. too little protection. There is a balance here. Interpretation of balance will affect scope of rights.
  
  • 
    Electro-Sante, Binnie at para 3: This appeal raises impt Qs about the scope and ambit of a patent owner’s monopoly. Too much elasticity in the interpretation of the scope of the claims creates uncertainty and stifles competition. Too little protection robs inventors of the benfit they were promised in exchange for making a full and complete disclosure…
    

• 
  To obtain a patent, an invention must satisfy all of the following criteria:
  
  • 
    The invention must be new (novelty), not anticipated in prior art [invention was not described already somewhere else]  “that’s very clever but it’s already been done” [s. 28.2(1)].
    
  • 
    The invention must be inventive (non-obviousness). [s. 29.3(1)]
    
  • 
    The invention must be useful. [s. 2]
    

• 
  Cannot determine what constitutes prior art with hindsight only
  
  • 
    Would the researcher have found the prior art after a diligent search?
    
  • 
    Prior art must be sufficiently disseminated and accepted within the art
    
• 
  Prior art includes written documents such as patents (or published patent applications), scientific/technical articles, and prior use
  

• 
  Indicia of prior art includes:
  
  • 
    Commercial success
    
  • 
    Long-felt need
    
  • 
    Attempts by others to solve the problem
    
  • 
    Acceptance by relevant public
    
  • 
    Contemporaneous development
    

1. 
   An exact prior description
   
2. 
   Directions which will inevitably result in something w/in the claims
   
3. 
   Clear and unmistakeable language
   
4. 
   Information which for the purpose of practical utility is = to that give by the subject patent
   
5. 
   Information to a person of ordinary knowledge so that he must at once perceive the invention
   
6. 
   In the absence of explicit directions, an “inevitable result” which “can only be proved by experiments”; and
   
7. 
   Information so that a person grapplying with the same problem must be able to say “that gives me what I wish
   

• 
  Display of invention
  
• 
  Lecture at conference
  
• 
  Installed at home where others can see it
  

Q: I try to register a patent in Country B. If patent for same product is already registered in Country A, would court in B not allow b/c “prior art”? A: would probably not be considered prior art in Country B….but person in Country B could use without infringing patent and w/o needing license.

• 
  Requirement of non-obviousness has similar purpose to novelty - should not be able to obtain monopoly over knowledge that is already in the public domain
  
• 
  Unlike novelty, permitted to “mosaic” prior art for the purposes of obviousness
  
  • 
    Was invention practicably within the grasp of others skilled in the art?
    

• 
  Would the skilled unimaginative worker, in light of his/her common general knowledge and armed with the available prior art be led “directly and w/o difficulty” to the claimed invention?
  
• 
  WARNING: everything is obvious in hindsight; must give some benefit of the doubt to the inventor
  

• 
  Knowledge that is sufficiently disseminated and accepted w/in the art so as to be generally known and understood by the real life equivalents of the unimaginative skilled technician in the art
  
• 
  Not the same as common knowledge
  
• 
  Must be known and widely accepted without question by the bulk of practitioners
  
• 
  Knowledge that practitioners may be expected to have as a part of their technical equipment
  

• 
  problem being worked on may have long been known and path to solution littered with failures
  
• 
  Inventor experimented long and hard before hitting on the solution
  
• 
  Patented product was instant success on the market
  
• 
  Disinterested experts praised the invention
  
• 
  Competitors accepted the validity by taking licenses or working around it
  

• 
  Canada: actual and ultimate utility
  
• 
  U.S.: specific, substantial and credible utility
  
• 
  Europe: can be made or used in industry
  
• 
  If practical or market utility – will probably meet all these stds.
  

• 
  Invention must work for purposes for which it was designed; it need not work well
  
• 
  Invention must serve some positive purpose
  
• 
  Judged using perspective of someone skilled in the art
  
• 
  Benefit to society not relevant
  

• 
  Must be complete
  
• 
  No need, however, to explicitly describe how the invention is useful
  
• 
  Adopt the point of view of someone with ordinary skill in the art
  
  • 
    Cannot require any knowledge other than obvious steps falling within common knowledge of someone skilled in the art.
    
• 
  Would such a person understand the description to describe all instantiations of the claimed invention?
  
  • 
    If not, claim is over-broad.
    
• 
  If there is evidence that some instantiations of the invention do not work, then claim must be rejected
  
  • 
    This flows from utility requirement
    
  • 
    See Minerals Separation
    
• 
  Would this person understand that all instantiations of the invention would likely work?
  
  • 
    “If it is possible for the patentee to make a sound prediction and to frame a claim which does not go beyond the limits w/in which the prediction remains sound, then he is entitled to do so.” (Pigeon J in Monsanto v. Canada)
    

• 
  Must disclose the “best mode” of using a machine in the specifications
  
• 
  Some obiter suggesting that this is broader, but likely a mistake.
  

• 
  In Canada, the failure to list all inventors does not lead to invalidity – not a material allegation
  
• 
  In U.S., failure to name an inventor leads to invalidity unless innocent error [35 U.S.C. S. 256]
  

• 
  can put product on the market immediately after 20 years passes
  
• 
  Recipe might be useful to others – can use as element for another invention – [would have to get license??]
  

Patent in Canada – Initial Hurdles and Scope

PATENT - INITIAL HURDLES Patentable subject matter: “invention” w/in the meaning of s. 2  any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter. Note ethical dimensions to this problem, and Qs of institutional competence [Harvard Mouse, Chakrabarty; Parker; Diamond] Pure science, math theorems, business methods, computer programs and medical/surgical treatments are all excluded. Novelty (not anticipated in prior art) [s. 28.2(1)]. Art must be available w/o mosaicing. Your invention, while clever, is already known. [see Beloit] Non-obviousness (related to novelty) [s. 29.3(1)] Any practitioner skilled in the art could have done that. Mosaicing allowed. [see Beloit] Utility [s. 2] Registration + fees PATENT – SCOPE Patent holder’s rights [s. 42]: exclusive right, privilege and liberty of making, constructing and using the invention and selling to others to be used. [DL: more like the right to prevent others from…]. In return for these rights  must disclose [specifications] What does it cover?: only the subject matter in the claims [s. 27(4)] [not claimed = in public domain] Term: [s. 44] 20 years from filing date; must pay fees to maintain [s. 46] Infringement Canada: adherence to language of claims but read language in informed and purposive way. Separate essential elements from non-essential ones. Substitute latter = infringement. Substitute former = not necessarily infringement. [Electro-Sante: see justifications] U.S.A: “doctrine of equivalents” – stronger protection/extends patent-holder’s monopoly to anything that is functionally equivalent. [possible justifications: gives greater incentives to inventor to be creative and make something useful and novel = progress. Counter: may stifle R&D b/c inventors afraid to tread where might infringe] Non-use may lead to compulsory licensing TRADE SECRETS – INITIAL HURDLES Must be a secret (i.e. not in general public knowledge); e.g. customer list, recipe or invention. Need not be novel or useful but probably will be (not novel = not a secret) (not useful = no reason to keep it a secret) No registration (but will be costs associated with keeping it a secret) TRADE SECRETS – SCOPE U.S. – can get injunction to enjoin use or disclosure of secret when it has been improperly discovered (e.g. stolen, agreement of confidentiality breached) TS law doesn’t protect against reverse engineering, actual disclosure or independent creation **Difference in TS/Patent justifications = different initial hurdles

SH: Justifications Labour (does it apply as well where there are multiple inventors?) Personhood (same goes) Utility (foster innovation, R&D etc. by granting monopoly but put limits on that monopoly – disclosure requirement, limited in time, patent only granted where you have come up with something novel and non-obvious [not already in the public domain]). DL notes that standards for novelty and non-obviousness are very low (Beloit)  shows that we want to reward labour but also reflects some utilitarian arguments [want to encourage inventiveness and must be careful of hindsight – obvious in hindsight…but not obvious at the time]

Beloit Canada Ltd. v. Valmet Oy

Beloit Canada Ltd. v. Valmet Oy, [1986] F.C.A., CB II p. 7 Facts: Ptf and dft were granted patents for the same invention. The invention is for the press section of a paper machine, and the ptf calls it a “Tri-Nip”. When this invention was adopted in the industry, the speed of paper-making machines increased from previous maximum of ~3000 ft. per minute to max of ~ 4000 ft. per minute, resulting in increased economy and profitability. Each party claims infringement of its patent by the other and the invalidity and expungement of the other’s patent. Trial judge found that both patents should be expunged on the grounds of obviousness or anticipation. Issue: Are either or both patents invalid? Held: Dft’s patent is invalid. Pft’s is not. Ratio: Trial judge appeared to confound obviousness and anticipation. Obviousness is an attack on a patent based on its lack of inventiveness – “any fool could have done that.” Anticipation, or lack of novelty, assumes that there has been an invention but asserts that it has been disclosed to the public prior to the application for the patent – “your invention, though clever, was already known.” Test for obviousness: whether the technician skilled in the art but having no scintilla of inventiveness or imagination would, in light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and w/o difficulty to the solution taught by the patent. This is a very difficult test to satisfy. [if this is the “next obvious step”, then invention is obvious.] Was this invention “obvious”? No. Trial judge held obvious b/c the inventors came up with it in a relatively short space of time in order to satisfy the needs of customers – this fact almost denies the obviousness. Trial judge also relied on expert evidence, but expert evidence must be treated with extreme care. Every invention is obvious after it has been made. Expert said that he could have come up with the same invention, but didn’t answer the question – “Then why didn’t you?” The fact that the invention has become the industry standard and increased the profitability of the paper industry so dramatically suggests that the patent is inventive. Test for anticipation: [judge cites S. 28(1) PA] anticipation (lack of novelty) = the invention has been made known the public prior to the relevant time. Anticipation must be found in a specific patent or other published document; it is not enough to pick bits and pieces from a variety of prior publications. One must, in effect, be able to look at a prior, single publication and find in it all the information which, for practical purposes is needed to produce the claimed invention w/o the exercise of any inventive skill. Was this invention anticipated? No. Judge goes through evidence – various patents describe designs which were never built, and it was probably that none of them was operable w/o major modifications. Also, some publications were published less than 2 years prior to filing of ptf’s patent. Trial judge was correct in finding that ptf’s patent was not void for misrepresentation in accordance with s. 55.

POINT: Novelty (not anticipated in prior art) = one (skilled in the art) must be able to look at a prior single publication and find in it all the information needed to produce the claimed invention w/o any exercise of inventive skill. Non-obviousness = whether the technician skilled in the art but having no scintilla of inventiveness or imagination would, in light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and w/o difficulty to the solution taught by the patent. [see Vaver, evidence of non-obviousness, above]

Notes (DL):

• 
  both very low standards (favour inventor) – justifications: labour and utility
  
• 
  Issue wrt prior art and traditional knowledge (is traditional knowledge prior art?)
  

How does patent differ from trade secrets?

Kewanee Oil v. Bicron

Kewanee Oil v. Bicron Corp., [1974] U.S.S.C., CB II p. 15 Facts: Harsahw is division of Kewanee (petitioner). H is leading manufacturer of a type of synthetic crystal which is useful in the detection of ionizing radiation. H considers some of the processes involved in the production of such crystals to be trade secrets. Rspdts are former employees of H who later joined Bicron. When they left H, they executed an agreement which required them not to disclose confidential info or trade secrets. They breached this agreement. H sought injunctive relief and damages. Court granted permanent injunction against disclosure or use of the trade secrets until they had been disclosed to public or obtained by legal means. C.A. overturned, finding state TS laws to be in conflict with patent laws of U.S. Issue: Are state TS laws in conflict with federal patent laws? Held: No – the policy objectives underlying each of TS laws and patent laws do not conflict Ratio: Court reviews features of trade secrets and patent Trade secrets: info that a company keeps secret so as to obtain advantage over competitors. Subject must be secret – cannot be of public knowledge or general knowledge in trade, but secrecy not lost where it is revealed to someone in confidence under implied obligation not to disclose. TS only protects against improper discovery; doesn’t protect against independent creation, actual disclosure or reverse engineering. Novelty not required per-se. Patent: allowable subject matter more limited [e.g. doesn’t include customer lists]. Must meet conditions of novelty, nonobviousness and utility. Court reviews the policy objectives underlying patent and trade secrets Patent: promote progress of science by giving limited right of exclusion (i.e. a monopoly) as incentive to invest time, research, development, $. This benefits society – new useful products, increased employment of citizens. In return for reward – inventor must disclose – the patent quid pro quo. That which is not patented is in the public domain. Trade Secrets: maintenance of stds of commercial ethics, GF, honesty and fair dealing. Encouragement of invention (b/c protects items which would not be proper subjects for patent protection). Do these policy objectives conflict with each other? Trade secret doesn’t constitute validly patentable invention [e.g. customer list] Incentive to invention – TS law encourages invention in areas where patent law doesn’t reach. Disclosure – abolition of TS law would not increase disclosure b/c couldn’t get a patent if TS protection wasn’t available. As well, hard to see how public would benefit from disclosure of customer lists – keeping them secret encourages competition and innovation. Lack of trade secret law would be economically inefficient b/c businesses would resort to expensive “self-help” mechanisms such as paying EEs extra money to assure loyalty and making premises more secure. Smaller cos would be placed at an economic disadvantage. Abolition of TS law would also lead to knowledge hoarding b/c inventors won’t license if they know that they cannot place a licensee under a binding legal obligation which the courts will enforce. Trade secret whose valid patentability is considered dubious [court may overturn validity] If inventor has genuine doubt – will likely take risk of filing for patent b/c offers stronger protection Where validity is very doubtful – better that patent never issues b/c inventor can get royalties via TS protection that he wouldn’t be able to get if the patent was rendered invalid [i.e. not patent and secret out] Trade secret constitutes validly patentable invention. If state TS law created real risk that patentable inventions would not be patented, then there would be conflict. But, TS protection will not deter inventors from seeking patent application b/c TS protection offers far weaker protection: does not forbid discovery by ind creation or reverse engineering; also, always risk that secret will be passed on by theft or breach in a manner not easily susceptible of proof or discovery. What about worry that TS will not be disclosed and thus will deprive society of useful advancements? Ripeness-of-time concept of invention suggests that when something is first discovered, it is likely to be discovered by others w/in a short period of time. [Douglas, dissenting]: TS laws effectively grant perpetual protection to articles too lacking in novelty to merit any patent Dissent really only has problem with injunctive remedy: damages for breach of a confidential relation are not pre-empted by patent law, but an injunction against use is pre-empted b/c patent law states that the only monopoly over secrets that is enforceable by specific performance is PATENT – and that monopoly exacts as a price full disclosure. [DL: Permanent injunction against dft = more protection than patent. Is that really the case? ]

POINT: State trade secret protection (via injunction against use or disclosure where secret improperly discovered) does not conflict with federal patent jurisdiction. It has different underlying policy objectives and it will not be used in place of patent where an invention is clearly validly patentable (b/c much weaker protection: doesn’t protect against ind creation or reverse eng). What used for? Any secret (e.g. recipe, customer list, etc); need not be novel or useful but likely will be. Policy objectives? Maintenance of stds of commercial ethics, GF, honest and fair dealing. Encouragement of invention. [Protection of privacy?] [DL: labour + labour]

Notes (March 9, 2004):

• 
  How do the justifications for TS and patents differ? What is at stake?
  
  • 
    Patent – promote progress of science and encourage inventiveness – society ultimately benefits from useful products and increased employment.
    
  • 
    Trade secret – one comment: seems to protect one’s privacy; I can keep something private if I want; ultimate utility to society isn’t an explicit factor (utility is not required); labour plus labour; promote honesty, good faith and fair dealing in business (a bit like TM – there is nothing intrinsically good about a TM in and of itself – same thing here: a secret recipe is not necessarily worth anything intrinsically but in market context it is useful; in market society, want to create rules that will encourage creation of things that will sell AND encourage honest competition); promotion of doing business in an ethical manner and slapping people who don’t. DL suggests that TS law also does promote inventiveness.
    
• 
  Dissent worries that this is a permanent injunction. But is it? Other parties can reverse engineer. Once they do, Bicron is off the hook.
  

Cadbury Schweppes v. FBI Foods

Cadbury Schweppes v. FBI Foods, [1999] S.C.C., CB II p. 25 Facts: Aplts manu’d Clamato under license from Rspdts Rspdts terminated license. Aplts misused confidential information related to the Clamato recipe obtained during the license period to continue to manufacture a rival drink. [Note that this is a case of third party liability – aplt received confidence, not from rspdts, but from third party (now defunct). Receipt, however, was burdened w/ knowledge that it use was to be confined to the purpose for which the information was provided (i.e. the manufacture of Clamato under license). Issue: What is the remedy for breach of confidence? Is it proprietary? Held: Remedy is not proprietary; court seems to suggest that it is sui generis, but effectively equitable. Ratio: Liability for breach of confidence is not contested – only issue at bar is that of remedy. Action for breach of confidence is sui generis. This refers only to the flexibility that courts will use in upholding confidentiality and crafting remedies for its protection [equity = flexibility]. Relationship btwn breach of confidence and fiduciary duty: court below held that this was not a fiduciary relationship (i.e. not in established category and doesn’t meet criteria of fiduciary duty outside these categories). Presence of fiduciary duty would have assisted rspdts in their claim to a proprietary remedy…and they are now asserting that remedy should be approached on same basis as if fiduciary argument had succeeded. Respondents assert a “proprietary interest” in the information (and thus claim a proprietary remedy): Rspdts base this assertion on link to IP and trust law. Rspdts’ characterization of confidential information as property is controversial. Courts have emphasized that breach of confidence action is rooted not in property (i.e. the legal characteristics of the information) but in the breach of confidence itself. In some contexts (e.g. trust law – Phipps), courts have found information to be property – but that characterization is limited to that context, and cannot be extended to common law of property more generally. Also, reliance on IP is not of much assistance, as it ignores the “bargain” that lies at the heart of patent protection: if court were to award compensation to rspdts on principles analogous to those applicable in patent infringement case, the rspdts would be obtaining the benefit of patent remedies w/o establishing that their invention meets the statutory criteria for the issuance of a patent, or paying the price of disclosure. Proprietary remedy might be appropriate in some cases of breach of confidence, but not this one. Hallmark of equity is flexibility and courts can fashion remedies as they see fit. Trial court found that the confidential information was “nothing special” and that “but for” the breach the rspdts would in any event have faced a merchantable version of Ceasar Cocktail in the market place w/in 12 months. On these facts a “proprietary” remedy is inappropriate [i.e. shouldn’t get all of aplt’s profits b/c would have had a competitor eating at profits even had it not been for the breach of confidence?] In the present case, the policy objectives in both equity and tort would support restoration of the ptf to the position it would have occupied “but for” the breach.

POINT: Breach of confidence (former licensee of juice recipe mfd competing juice in breach of confidence). Court has flexibility to fashion appropriate remedy. Here, proprietary remedy not appropriate b/c would effectively extend patent protection w/o establishing that invention meets statutory criteria for patent or requiring disclosure (the “price” paid for a patent). Remedy = temp injunction for time it would have taken other party to reverse engineer the juice. NB: prop remedy might be appropriate where fiduciary relationship.

*DL: solve these problems by going back to justifications.

Free World Trust v. Electro-Sante

Free World Trust v. Electro-Sante, [2000] S.C.C. p. 109 At issue is scope and ambit of patent owner’s monopoly  to what does it extend? Literal vs Substantive infringement: taking letter of invention vs. appropriating its substance (pith or marrow). Must strike a balance. Purely literal application = minor and inconsequential variations would not constitute infringement (unfair; robs protection promised in exchange for disclosure). Over-broad interpretation = gives patentee benefit of inventions he hasn’t created, stifles competition (inventors will be afraid to tread where they might infringe), and makes patent system unfair and unpredictable. [Court rejects “spirit of the invention” approach and adopts informed and purposive interpretation of claims approach]. Principles to be followed: patent act promotes adherence to language of claims (=fairness and predictability, encourage research and investment, patent can properly perform its public notice function) BUT…claim language must be read in an informed and purposive way by identifying which elements are essential and which are non-essential There is no infringement if an essential element is different or omitted. There may still be infringement if non-essential elements are substituted or omitted. ID of elements as essential or non essential is made On the basis of the common knowledge of the worker skilled in the art to which the patent relates As of the date the patent is published Having regard to whether or not it was obvious to the skilled reader at the time the patent was published that a variant of a particular element would not make a difference to the way in which the invention works; or According to the intent of the inventor, expressed or inferred from the claims, that a particular element is essential irrespective of its practical effect. Patentee cannot extend monopoly to cover anything that achieves the desirable result

**Approach in U.S.  “doctrine of equivalents”: infringement where inventor produces device the performs substantially the same function in substantially the same way to obtain substantially the same result.
Who is competent to decide whether something is patentable where the patent act is silent?

Parker v. Flook

Parker v. Flook, [1978] U.S. S.Ct. Issue: Are post-solution applications of a math formula (i.e. a computer program) patentable? NO Post-solution activity cannot transform an unpatentable principle into a patentable process. A process is not unpatentable simply b/c it contains a law of nature or math algorithm, but in this case only the math algorithm is new and useful, not the process. Must decide such a case on the premise that the math formula was well known (b/c math formulas never patentable). Once the math formula is considered part of the prior art, the application contains no patentable invention. Institutional competence: This decision must not be interpreted as holding that protection of computer programs by patent is not desirable as matter of policy. BUT…difficult questions of policy concerning the kinds of programs that may be appropriate for patent protection and the form and duration of such protection can be answered by Congress on the basis of current empirical data not equally available to this tribunal. We must proceed cautiously when asked to extend patent rights into areas wholly unforeseen by Congress.

POINT: Where patent act is silent wrt a certain subject matter, court should proceed cautiously. Difficult policy questions are best dealt with by legislators.

Diamond v. Diehr, [1971] U.S. S.Ct. Issue: Is a process for curing synthetic rubber, which includes in several of its steps the use of a math formula and a programmed digital computer, patentable subject matter? YES Congress intended statutory subject matter to include anything under the sun that is made by man. The respondents’ claim is nothing more than a process for molding rubber products and is not an attempt to patent a mathematical formula. Dissent: the essence of the claimed discovery in both this case and in Flook was an algorithm that could be programmed on a digital computer. The broad question whether computer programs should be given patent protection involves policy considerations that this Court is not authorized to address.

POINT: Congress intended statutory subject matter to include anything under the sun that is made by man.
DL: The facts of Flook and Diehr are very similar…but the courts’ starting presumptions re. who is competent to decide what constitutes patentable subject matter are very different.

Diamond v. Chakrabarty, [1980] U.S. S.Ct. Issue: Whether genetically engineered bacterium capable of cleaning up oil spills is patentable. YES Rspdt’s micro-org plainly qualifies as patentable subject matter. His claim is not to a hitherto unknown natural phenomenon (which would not be patentable) but to a nonnaturally occurring manufacture or composition of matter with the potential for significant utility – a product of human ingenuity. Policy arguments were presented to the court – i.e. hazards of genetic research and related technological developments, e.g. loss of genetic diversity. Petitioners suggest that court should weigh these in making its determinations. The court disagrees (for two reasons). First, judicial declarations on patentability will not deter people from doing the research anyway. [This is problematic b/c the heart of the judgment is that we need the patent as an incentive for research in the first place]. Second, the court is without competence to entertain these arguments – job of Court is to interpret the Statute, not to decide what the law should be (that is role of leg) Dissent: Plain interpretation of patent leg shows that Congress did not intend it to extend to living organisms. It is the role of Congress, not this Court, to broaden or narrow the reach of patent laws. This is especially true where, as here, the composition sought to be patented uniquely implicates matters of public concern.

POINT: “Anything under the sun” principle is invoked. Lower life forms are patentable (followed in Canada – Abitibi)

Harvard College v. Canada (Commissioner of Patents), [2002] S.C.C. Issue: Is onco-mouse (i.e. mouse which has been genetically altered so as to be more susceptible to cancer) patentable subject matter under s. 2 of the Patent Act? NO, higher life forms are not the proper subject matter for patent (5:4) [Note that Harvard has patent on process of altering mouse, but b/c oncomouse can reproduce it wants to be able to get royalties on each mouse used. Oncomouse patent has been granted in most jurisdictions] Bastarache: Whether higher life forms such as the oncomouse ought to be patentable is a matter for Parliament. This Court’s views as to the utility of such patents are irrelevant. Words of statute (composition and manufacture) + unique concerns surrounding patentability of life forms (which statute doesn’t address) suggest Parliament didn’t intend that life forms should be patentable. Unique concerns? E.g. unique ability of higher life forms to self-replicate. Patent protection of progeny represents a significant increase in the scope of rights given to patent holders. E.g. concern with innocent bystanders and farmer’s privilege rules (a patent act which allowed patents on life would have to deal with these matters). E.g. may deter innovation in biomedical field and drive up end costs of end results of research (such as inputs to Cdn health care system). Patent act that allowed patents on life would need research and experimental use exceptions. Slippery slope  patents on human life? This is objectification. Object of patent Act is to encourage and reward dvlpt of innovations and technology. BUT…this does not imply that “anything under the sun” is patentable. Regardless of the desirability of a certain activity or the necessity of creating incentives to engage in it, a product of human ingenuity must fall within the terms of the Act in order for it to be patentable. Binnie, dissenting: Harmonization: mobility of tech and capital makes it desirable that comparable jurisdictions w/ comparable IP leg arrive at similar legal results Strong utilitarian justification advanced: imptce of biotech to Cdn economy, imptce of genetic research in curbing disease, necessity (medical research relates to life thus its products will often impinge on higher life forms) No principled basis on which to distinguish lower and higher life forms. There are all sorts of proposed places to draw the line btwn life that is patentable and that which is not. If we are going to introduce a dividing line that is not in text of Patent Act, must be done by Parliament. Binnie addresses and rejects each of the policy arguments against granting the patent. E.g. he addresses the majority’s contention that there is not adequate regulation w/in the patent act to deal with issues that might arise wrt patents on life. BUT, regulation follows rather than precedes the invention; health and safety are not preoccupation of IP leg; patents shouldn’t be denied as protest against perceived shortcomings in reg structures. He does acknowledge that changes in governance tools might be needed (e.g. farmer’s privilege; research exceptions; shorter patent term for biotech), but that these considerations shouldn’t be bar to awarding patent. Also emphasizes that if patent is not granted, inventors will have incentive to use trade secret protection (= no public benefit from disclosure); the “hide and hoard” mentality was the very mischief the Patent Act was aimed at.

POINT: Higher life not patentable in Canada. Where Act is silent (and also where Act doesn’t have the mechanisms to deal with unique concerns raised by proposed subject matter), court should not grant patent. Utility and policy arguments are irrelevant where subject matter is not w/in terms of Act.
Lametti:

• 
  American courts and Cdn courts have different starting points re. what to do when the legislation is “silent” (anything under the sun vs. judicial restraint, leave it to Parliament). One’s view on this case depends on ethical stance and views about dividing line btwn Parliament and courts.
  
• 
  TRIPs agreement allows us to have such exceptions in our Patent law…other countries cannot compel us to extend patent protection to life even though they have.
  
• 
  Will this have a chilling effect on biotech research? Probably not. The mice are already in Canada.
  
• 
  Decision in this case is a great way to put the issue on the legislative agenda. If court had gone the other way, leg might not have as great an incentive to think about the matter.
  
• 
  Implications of this decision?
  
  • 
    Chilling effect on research? [Gold article: argument for greater patent protection is an attempt to maximize profit, not to maximize levels of innovation]
    
  • 
    Has court watered down “anything under the sun” principle so much so that might be reticent to recognize new patentable subject matter in other areas?
    
  • 
    Creates public debate, puts matter on public agenda?
    
  • 
    SH: Will lack of int’l uniformity on this issue be problematic re. enforcement of judgments, etc? Will other countries put pressure on Canada to conform to their view?
    

Directory: pubdocs -> files -> IntellectualandIndustrialProperty
files -> Chapter 1: Property as rights, not thing
files -> Insurance Law – May 4
files -> Contractual Obligations – Prof. Helge Dedek Introduction 1
files -> Constitutional Limits on Criminal Law 1
files -> Antonio Iacovelli Winter 2005 Advanced Criminal Law
files -> Private International Law – Prof. Walsh Summer 2005
files -> Part I – general 5 The Sources of Int’l Air Law 5 Q? How does customary law relate to int’l law?
files -> Topic One Seaworthiness and Common Venture, chapter 15
IntellectualandIndustrialProperty -> I – Introduction a – La nature des droits intellectuels

Download 0.64 Mb.

Share with your friends: