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Thomas Bailey Oyen Wiggs Green & Mutala LLP Phone: 604 669 3432 http// Patents - Lecture 1.

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Presentation on theme: "Thomas Bailey Oyen Wiggs Green & Mutala LLP Phone: 604 669 3432 http// Patents - Lecture 1."— Presentation transcript:

1 Thomas Bailey Oyen Wiggs Green & Mutala LLP Phone: 604 669 3432 E-mail: http// Patents - Lecture 1

2 Course Materials Handouts –Course Outline for patent section –PowerPoint Slides –casebook –example of a granted Canadian patent –list of patent related websites

3 Course Materials Statutes –Consolidated Intellectual Property Statutes and Regulations 2012 (Carswell:2011) – Reference texts –D. Vaver, Intellectual Property Law (Irwin Law: 1997) –G. Henderson ed., Patent Law of Canada, (Carswell: 1994) –H.G. Fox, Canadian Patent Law and Practice, (Carswell: 1969)

4 Course Materials Reports –Canadian Patent Reporter (C.P.R.) –United States Patent Quarterly (U.S.P.Q.) –Reports of Patent Cases (R.P.C.) Journals –Intellectual Property Journal (I.P.J.) –Canadian Intellectual Property Review (C.I.P.R) –European Intellectual Property Review (E.I.P.R)

5 Course Outline Lecture Timing –2:00 to 3:15 - break – 3:30 to 4:30 –Patent Section: February 9 & 16; March 1 & 8 –No class February 23 –Trademark Section: March 15, 22, 29 & April 5

6 Course Outline 1.The basic structure of a patent 2.Examples of granted patents 3.History of monopolies 4.The subject matter of patents

7 Course Outline 5.Requirements of Patentability 6.Patent Specifications 7.Ownership of Patent Rights 8.Infringement

8 Overview Copyright Trademarks Patents Trade Secrets Industrial Designs Unfair competition torts

9 Patent Basics Patents can protect ideas, not just the expression of ideas Not all ideas fall within patentable subject matter Patents do not protect scientific principles or abstract theorems

10 What is a Patent? A form of monopoly for a limited period of time intended to encourage disclosure of useful inventions A type of social contract between the inventor and the state An incentive to innovation

11 Patent Applications Patent Rights do not arise automatically upon conception of an invention Must obtain approval from a governmental patent Examiner in order to obtain enforceable rights Patent application process is costly and time consuming

12 Patent Applications Patent application process involves: –filing –search –examination –response or amendment –notice of allowance or final rejection –payment of issue fee or appeal

13 Infringement Patents protect against independent creation -it is not necessary to prove access The “claims” of a patent define the scope of monopoly which the patent affords Literal and substantial infringement

14 International Protection Separate patents must be obtained in each jurisdiction of interest “Worldwide patents” do not exist Difference between patentability and infringement European Patent Convention Patent Cooperation Treaty

15 PCT Applications by Country

16 Growth in Number of Patent Applications from China

17 Term Patents subsist for a defined term After a patent expires or lapses the invention falls into the public domain and may be freely used by anyone Currently, Canadian patents extend for a term of 20 years from the application filing date Formerly, patents extended for 17 years from the issue date

18 Cost & Complexity Patent applications are significantly more expensive to prepare and file than trademark or copyright applications Patents are also typically more expensive to enforce than other forms of intellectual property protection

19 Statistics from a survey by the American Intellectual Property Law Association Cost of Enforcing IP Rights * Source: AIPLA – Report of the Economic Survey, 2011 PATENTTRADEMARKCOPYRIGHTAT RISK DiscoveryTrialDiscoveryTrialDiscoveryTrial 350,000650,000200,000350,000200,000350,000<$1M 1,500,0002,500,000425,000775,000400,000700,000$1-$25 M 3,000,0005,000,0001,000,0001,500,000750,0001,375,000>$25 M

20 Trade Secrets Trade secrets are protected by the common law so long as the information remains secret Patents require disclosure of an idea - the word “patent” is derived from a Latin word which means “laid open” or “revealed” Patents will eventually expire Trade secrets may potentially extend indefinitely

21 Trade Secrets Some inventions are better maintained as trade secrets Trade secret protection may be available for new ideas which do not constitute patentable subject matter


23 Trade Secrets Trade secrets provide no protection against independent creation Protection is lost once the idea becomes available to the public

24 Industrial Designs Industrial designs protect visual or aesthetic features of new articles of manufacture whereas patent protection functional features Term of protection is 5 years renewable for one further 5 year term In the United States industrial designs are referred to as “design patents” and extend for a single term of 14 years D


26 Structure of Patent Specifications “Specification” refers to the “Disclosure” or “Description” (i.e the descriptive portion of the patent application) and the “Claims” (the numbered paragraphs which define the scope of the patent monopoly) The purpose of the Disclosure is to describe the invention in sufficient detail to allow someone to reproduce the invention once the patent lapses or expires The Disclosure is addressed to a person “skilled in the art”, not the average layperson

27 CANADIAN PATENT Henry H.Schweitzer, Pacific Palisades, California, U.S.A. and James R. Drake, Santa Monica, California, U.S.A. No. OF CLAIMS 10 54WIND-PROPELLED APPARATUS ISSUED Oct. 24, 197245 52 CLASS 114-12 C.R. CL. CANo. 91292111 21 APPLICATION No. 061,852 30 PRIORITY DATE 22 FILED Sep. 12, 1969

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40 Structure of Patent Specifications Abstract –a brief technical statement describing the utility of the invention and the manner in which the invention is distinguishable from other inventions Field of the Invention –a summary of the field of technology to which the invention relates Background of the Invention –a description of the “prior art” (i.e any other existing devices or processes in the same field) and the problems or shortcomings which the invention is designed to overcome

41 Structure of Patent Specifications Summary of the Invention –a brief summary of the invention –often a paraphrase of the claims Brief Description of the Drawings –a brief description of what each drawing view represents Detailed Description of the Preferred Embodiment –a detailed description of the structure of the invention with reference to the part numbers shown in the drawings –usually also a detailed description of the operation of the invention

42 Structure of Patent Specifications Claims –one or more numbered paragraphs which define the scope of the monopoly which the patent affords Drawings –illustrations of the invention using the reference numbers used in the Detailed Description –not all inventions require drawings

43 Patent Claims The purpose of the claims is to delimit the scope of exclusive rights protected by the patent The scope of the patent monopoly is defined by the claims rather than what is described in the patent disclosure or illustrated in the drawings What is “not claimed is disclaimed” Claims may cover actions (i.e. methods, processes and uses) in addition to things (i.e. apparatuses, compositions and products)

44 Patent Claims “Independent” claims stand on their own “Dependent” claims (those which refer, by number, to one or more preceding claims) are read as including the features of each claims from which they depend, either directly or indirectly Claims may be of varying scope - e.g. “broad” or “narrow” claims Functional terminology is used to broaden the scope of the claims (broad claims are ordinarily more valuable than narrow claims)

45 Patent Claims Structure of the claims is critical when assessing whether an invention constitutes patentable subject matter or whether it is infringed by a competing apparatus or activity Must consider not only what an invention is but how it is claimed By convention, each claim is a single sentence

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48 Self-sealing incisions for cataract surgery

49 Transgenic Non-Human Mammals US Patent No. 4,736,866

50 Stac Electronics v. Microsoft (

51 NTP v. RIM

52 i4i’s XML-Related Patent (i4i v. Microsoft, US$290 million in damages)

53 Facebook’s News Feed and Search Ranking Patents


55 Steve Jobs’ Design Patents iPhone 4 and iPad

56 Steve Jobs’ Design Patents Glass Staircase

57 Mobile Device Legal Wars Patent disputes involving Microsoft, Kodak, Apple, Google, Nokia, Samsung, HTC and Motorola are ongoing including: –Lawsuits in California, Delaware, Germany, Australia, Netherlands, France, Japan, UK, Italy, South Korea –Two International Trade Commission complaints Products at issue include: iPhone, iPad, iCloud, Galaxy S, Galaxy Tab, Nexus S 4G, Droid Charge, Droid X Recent developments include: –Motorola wins German injunction against Apple iCloud (3 February 2012) –Apple fails to obtain German injunction against Samsung Galaxy Tab 10.1N and Galaxy Nexus (1 February 2012) –Apple obtains German injunction against Samsung Galaxy Tab 10.1 (31 January 2012) –Samsung loses in 2 actions alleging patent infringement by Apple in Germany (27 January 2012) –Apple loses in action alleging patent infringement by Samsung in the Netherlands (24 January 2012) –Apple loses in preliminary action alleging patent infringement by Motorola in the ITC (13 January 2012) –Kodak sues Apple and HTC for patent infringement in the US (10 January 2012) –Microsoft wins interim victory against Motorola in the ITC (20 December 2011) –Apple obtains import ban on HTC phones implementing “data tapping patent” in the ITC (19 December 2011) –Apple loses injunction against Samsung banning Galaxy Tab in Australian appeals court (30 November 2011)

58 Cork Stopper

59 Flow Actuated Pulsator

60 T-shirt map

61 Apparatus for facilitating the birth of a child by centrifugal force

62 Drinking vessel with sound effects

63 Bath capsule

64 Cow with artificial horns

65 Statute of Monopolies During the reign of Elizabeth I the Crown often exercised its prerogative power to grant trading monopolies In Darcy v. Allen (1602) 11Co Rep 84 the courts of common law declared void a patent granting the plaintiff the sole right to import foreign playing cards into England on the basis that the monopoly was contrary to public policy The Statute of Monopolies (1623) declared all monopolies to be invalid, subject to some exceptions

66 Statute of Monopolies In Section 6 of the Statute of Monopolies an exception was made for letters patent and grants of privilege for “any manner of new manufactures” which were granted to the “true and first inventor” This exception to the general rule prohibiting monopolies is the foundation of modern patent law The Statute of Monopolies did not use the term “invention” per se

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68 Evolution of Patent Specifications Originally patents were granted without the need to file a detailed description of the invention After about 1700 the custom of filing a written patent specification emerged Inventors eventually began to describe both the best means for carrying out the invention in specific terms and the general nature of the invention in broad terms It became a requirement in 1883 that a patent end with a set of claims delimiting the scope of the invention

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71 NRDC case (Casebook, pp. 4- 9) Australian patent statute defined an invention as a “manner of new manufacture” within the meaning of Section 6 of the Statute of Monopolies Only the claims relating to a “method” of eradicating weeds were in issue Judgment is an inquiry into the scope of permissible subject matter of letters patent Court held that an expansive interpretation of the “vendible products” test was required

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77 Patent Applications Patent application process involves: –filing –search –examination –response or amendment –notice of allowance or final rejection –payment of issue fee or appeal

78 Lawson case (Casebook, pp. 10 - 16) Applicant sought patent protection for a parcel of land subdivided into lots each delineated in the shape of a champagne glass Court considered whether the invention was an “art”, “process” or “manufacture” within the meaning of Section 2 of the Patent Act Court held that a method for describing and laying out parcels of land was a professional skill which could not constitute an “art” or “process” Also, since the invention did not change the character or condition of the land itself, it was not a “manufacture”


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85 Tennessee Eastman case (Casebook, pp. 17 - 22) Applicant sought a patent on a method of surgically bonding the surfaces of incisions or wounds using adhesive compounds Exchequer Court held that method was in the professional field of surgery and medical treatment and was therefore not essentially economic in character Exchequer Court therefore refused the application on public policy grounds On appeal, the Supreme Court of Canada also held that the method did not constitute patentable subject matter, but for different reasons

86 Tennessee Eastman case (Casebook, pp. 17 - 22) Former Section 41 of the Patent Act prohibited the patenting of medicines except in “process dependent” form The Supreme Court reasoned that if a method of medical treatment consisting in the application of a new drug could be claimed separate from the drug itself, this would permit inventors to circumvent Section 41 The Court applied the same reasoning to surgical treatments Section 41 has since been repealed

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90 Wayne State University case (Casebook, pp. 23) Applicant sought a patent for a method for slowing the rate of cancer cell growth Method claims were refused, but the Patent Appeal Board allowed claims to the new use of known compounds for therapeutic purposes Patent Appeal Board relied upon the decision of the Supreme Court of Canada in Shell Oil Co. (1982) 62 C.P.R. (2d) 1

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92 Methods of Medical Treatment Cosmetic methods involving the treatment of living tissue may constitute methods of medical treatment Diagnostic methods, which do not involve the direct treatment of human tissue, are potentially patentable Methods of medical treatment are patentable in the United States, although U.S. legislation enacted September 30, 1996 has established new limitations on the remedies available for infringement of a patented “medical activity”

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