Table of contents section one an introduction to intellectual property

- If a company doesn't make the second patent, they risk that another company will patent an improvement of the original invention when the patent on the original invention runs out

- Here, the second patent duplicates the first

- Apotex: didn't happen because the selection patent was an improvement over the genus patent

b) "Obviousness" double patenting

- Here, the second patent is obviously an extension of the first

- Apotex: didn't happen because selection patent was "patentably distinct coumpound" from genus

F: - See above

I: - Was there double patenting?

J: - No, for Sanofi

A: - Strategies that attempt to extend the time limit of exclusivity of a patent may be contrary to the objectives of the Patent Act, depending on the circumstances, but a generalized concern about evergreening is not a justification for an attack on the doctrine of selection patents

- A selection patent may be sought by a party other than the inventor or owner of the original genus patent so that evergreening does not arise

- In addition, selection patents encourage improvements over the subject matter of the original genus patent because that selection does something better than or different from what was claimed in the genus patent

- Thus there is no “same invention” double patenting because the claims of the ‘875 and ‘777 patents were not identical or coterminous and the former is broader than the latter

- Further, as the claims in the ‘777 patent reflect a patentably distinct compound from the compounds in the ‘875 patent, it is not invalid for “obviousness” double patenting

- B: ambit of the genus patent was defined by "sound prediction" of what compounds would have anticoagulant properties, but selection patent had a different use, so it was not double patenting

R: - There is no double patenting if a second invention is not a copy of the first patent or is not an obvious extension of the first patent

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- "An action for the infringement of a patent may be brought in that court of record that, in the province in which the infringement is said to have occurred, has jurisdiction, pecuniarily, to the amount of the damages claimed and that, with relation to the other courts of the province, holds its sittings nearest to the place of residence or of business of the defendant, and that court shall decide the case and determine the costs, and assumption of jurisdiction by the court is of itself sufficient proof of jurisdiction"

- This allows a patentee to pursue an infringement action against an infringer

42 Contents of patent

- "Every patent granted under this Act shall contain the title or name of the invention, with a reference to the specification, and shall, subject to this Act, grant to the patentee and the patentee’s legal representatives for the term of the patent, from the granting of the patent, the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used, subject to adjudication in respect thereof before any court of competent jurisdiction"

- Therefore, "using" is where the infringement action generates
- According to s.42, "use" is not restricted to inventing, as if somebody has infringed a patent by making a product that infringes a patent, mere use infringes the patent

- Note: individuals who bought infringing machines from Camco in Whirlpool were legally infringing the patent…however, they wouldn't get sued for damages or account of profits because regular people weren't doing anything to damage Whirlpool

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1) "MAKING, CONSTRUCTING AND USING THE INVENTION"
- In the next case that drew worldwide attention, the SCC heard the question of whether growing genetically modified plants constitutes "use" of the invention of genetically modified plant cells, and ruled that it does…
Monsanto Canada Inc. v. Schmeiser (2004 SCC)…Knowingly planting and cultivating new plants is use

F: - See above

- Schmeiser argues all he did was select the certain resistant plants, and since he never spread the resistant spray to produce Roundup Ready Canola, he never used the invention

I: - Did Schmeiser infringe Monsanto's patent by merely harvesting the Roundup Ready Canola?

J: - Yes, for Monsanto…infringed s.42 of the Patent Act

A: - The act of readily selecting Roundup Ready Canola from the field and planting it constituted use

- Since he organized his farm to deliberately plant and harvest the resistant Canola ready, he had the benefit of the invention available to him even if he never used it

- Even though the plants propagate without human intervention the realities of modern agriculture mean there is always human intervention in the growth of plants and thus farming is a method of "use" of plant genes

- Here, the patent granted for the invention did not specify the use of Roundup as part of the invention, and thus there was no basis for introducing the requirement that Roundup had to be used in order for the invention to be used

- That is, a patent prohibits unauthorized use of an invention in any manner, not merely unauthorized use for its intended purpose

- SCC also held that knowingly (or, where one ought to have known) planting and cultivating genetically modified canola constitutes "use" of Monsanto's patented invention of genetically modified canola cells

- B: no mens rea needed here…mere fact of spraying roundup or, in Schmeiser's case, actively selecting the resistant plants and harvesting them, infringement occurs

- Therefore, he had sufficient intent to constitute "use" of the patented invention even if the crop is not treated with Roundup and the presence of the gene affords no advantage to the farmer

- Use of the patented genes and cells analogous to the use of a machine containing a patented part

- "It is no defence to say that the thing actually used was not patented, but only one of its components"

- Finally, by planting genetically modified Roundup resistant canola, Schmeiser made use of the "stand-by" or insurance utility of the invention

- That is, he left himself the option of using Roundup on the crop should the need arise

- This was considered to be analogous to the installation of patented pumps on a ship: even if the pumps are never actually switched on, they are still used by being available for pumping if the need arises

- B: this case might cancel out Harvard Mouse, as the cell can be the invention rather than oncomouse

- Here, the resistant plants (a higher life form) weren't patentable, but basically in effect were because the resistant plant gene was patented by Monsanto

- Dissent here follows Harvard Mouse, whereby while a company can patent products and processes, they cannot patent higher forms of life such as the whole plant itself

R: - Use of an invention, whereby an infringer knowingly plants and cultivates genetically modified cells, constitutes "use" even if the plants are not sold because it threatens the monopoly on the special canola plant by storing and planting the Roundup Ready canola seeds pursuant to commercial interests