1. Patent Law Overview

2. Outline Effect of patent protection Effect of patent protection Substantive requirements for patent protection Substantive requirements for patent protection Procedural requirements for patent protection Procedural requirements for patent protection Form and interpretation of patents Form and interpretation of patents

3. Right to Exclude Patent is a right to exclude Patent is a right to exclude Not a right to practice Not a right to practice The wording of the Act is ambiguous, but the principle is perfectly clear The wording of the Act is ambiguous, but the principle is perfectly clear You may patent a weapon, but this does not give you the right to use it You may patent a weapon, but this does not give you the right to use it Also GM crops, cloning, etc. Also GM crops, cloning, etc. A patent may be granted for an improvement to a patented invention A patent may be granted for an improvement to a patented invention Result is “blocking patents” Result is “blocking patents”

4. True Monopoly S.42 Exclusive right “of making, constructing and using the invention and selling it to others to be used” S.42 Exclusive right “of making, constructing and using the invention and selling it to others to be used” Independent creation is not a defence Independent creation is not a defence Contrast with copyright Contrast with copyright

5. Procedure Registration Registration Patents are registered and publically searchable Patents are registered and publically searchable Examination Examination A patent must be applied for and specifically granted after examination A patent must be applied for and specifically granted after examination Contrast copyright where protection is automatic Contrast copyright where protection is automatic

6. Application The issued patent is the application The issued patent is the application The patentee (or the agent) writes the patent The patentee (or the agent) writes the patent The patent application must be examined by patent office before it will be issued The patent application must be examined by patent office before it will be issued

7. Examination On examination the patent office will often make objections On examination the patent office will often make objections Eg the patent is broader than the invention, Eg the patent is broader than the invention, The disclosure is not sufficient The disclosure is not sufficient The patent agent will answer these objection, often by modifying the patent The patent agent will answer these objection, often by modifying the patent This is known as “patent prosecution” This is known as “patent prosecution”

8. Examination Examination is not automatic Examination is not automatic A patent is examined only after request and payment of a fee A patent is examined only after request and payment of a fee If the patent is never examined, it will never issue If the patent is never examined, it will never issue Note: examination is automatic in the US Note: examination is automatic in the US

9. Application Laid Open Whether or not a request is made, the patent will be made public (”laid open”) 18 months after it is filed Whether or not a request is made, the patent will be made public (”laid open”) 18 months after it is filed Note: patent applications were traditionally kept secret in the US and still may be if the applicant certifies that she is not seeking any foreign patent Note: patent applications were traditionally kept secret in the US and still may be if the applicant certifies that she is not seeking any foreign patent

10. Examination Advantages of deferred examination Advantages of deferred examination Save costs by avoiding the expense of examining applications which would otherwise be abandoned Save costs by avoiding the expense of examining applications which would otherwise be abandoned Allows CIPO to rely on prior examination by US/EPO Allows CIPO to rely on prior examination by US/EPO Why file if you do not intend to request examination? Why file if you do not intend to request examination? Filing establishes priority under “first to file” Filing establishes priority under “first to file” Novelty is decided as of the filing date Novelty is decided as of the filing date Allows a chance to see whether the invention is worth pursuing Allows a chance to see whether the invention is worth pursuing Why doesn’t the US have deferred examination? Why doesn’t the US have deferred examination?

11. International Patent Application Patents, like copyright, are national Patents, like copyright, are national Though the EU is moving towards a single EU patent Though the EU is moving towards a single EU patent Patent Cooperation Treaty Patent Cooperation Treaty Not an international patent Not an international patent Establishes a procedure for making simultaneous applications in multiple jurisdictions Establishes a procedure for making simultaneous applications in multiple jurisdictions European Patent Convention European Patent Convention Single procedure for grant of a European patent Single procedure for grant of a European patent Results in a bundle of national patents Results in a bundle of national patents Post-grant – infringement, validity, scope – is determined by national law Post-grant – infringement, validity, scope – is determined by national law

12. Term 20 years from filing 20 years from filing Problem: Office delay affects issuance date Problem: Office delay affects issuance date (Old system – 17 years from issue) (Old system – 17 years from issue) Problem: “submarine” patents Problem: “submarine” patents Contrast with much longer copyright term Contrast with much longer copyright term

13. Substantive Requirements Sufficiency (disclosure) Sufficiency (disclosure) Invention Invention Utility Utility Novelty Novelty Non-obviousness Non-obviousness Subject matter Subject matter

14. Invention Utility Utility Output Output How much benefit to society? How much benefit to society? Novelty & Non-Obviousness Novelty & Non-Obviousness Input Input How much technical difficulty? How much technical difficulty?

15. Novelty & Non-Obviousness Monopoly are generally undesirable Monopoly are generally undesirable Do not grant unless necessary to call forth the invention Do not grant unless necessary to call forth the invention No playing card patents No playing card patents

16. Novelty & Non-Obviousness How difficult was it to come up with the device? How difficult was it to come up with the device? Novelty Novelty Minimal hurdle Minimal hurdle Less stringent than non-obviousness Less stringent than non-obviousness Much easier to assess Much easier to assess Non-Obviousness Non-Obviousness Did the invention require the lure of a patent? Did the invention require the lure of a patent? High hurdle, in principle High hurdle, in principle Often very difficult to assess Often very difficult to assess

17. Utility How much benefit to society? How much benefit to society? Utility hurdle is low Utility hurdle is low The invention must work as described The invention must work as described No need to show commercial value No need to show commercial value Why not? Why not? Why not have a high utility threshold? Why not have a high utility threshold? If the goal of patents is to benefit society, why not grant patents only for patents that do in fact benefit society? If the goal of patents is to benefit society, why not grant patents only for patents that do in fact benefit society?

18. Invalidity Validity is an issue both Validity is an issue both During examination During examination and and During an infringement action During an infringement action A defendant will argue A defendant will argue My product does not infringe your patent, and My product does not infringe your patent, and If it does, your patent is invalid If it does, your patent is invalid 59. The defendant, in any action for infringement of a patent may plead as matter of defence any fact or default which by this Act or by law renders the patent void, and the court shall take cognizance of that pleading and of the relevant facts and decide accordingly. 59. The defendant, in any action for infringement of a patent may plead as matter of defence any fact or default which by this Act or by law renders the patent void, and the court shall take cognizance of that pleading and of the relevant facts and decide accordingly.

19. Form and Interpretation Construction & Infringement Construction & Infringement The alleged infringing device is not compared with the patentee’s device – it is compared with the patent The alleged infringing device is not compared with the patentee’s device – it is compared with the patent The construction of the patent is therefore crucial to the issue of infringement The construction of the patent is therefore crucial to the issue of infringement

20. Remedies Injunction is routine after finding of infringement Injunction is routine after finding of infringement But see eBay Inc. v. MercExchange, L.L.C., 126 S. Ct. 1837 (U.S. 2006) But see eBay Inc. v. MercExchange, L.L.C., 126 S. Ct. 1837 (U.S. 2006) Damages post-grant Damages post-grant Reasonable compensation for pre-grant “infringement” Reasonable compensation for pre-grant “infringement” Accounting of Profits Accounting of Profits Interlocutory injunction Interlocutory injunction