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Thomas Bailey Oyen Wiggs Green & Mutala LLP Phone: 604 669 3432 http// Patents - Lecture 3.

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Presentation on theme: "Thomas Bailey Oyen Wiggs Green & Mutala LLP Phone: 604 669 3432 http// Patents - Lecture 3."— Presentation transcript:

1 Thomas Bailey Oyen Wiggs Green & Mutala LLP Phone: 604 669 3432 E-mail: http// Patents - Lecture 3

2 Course Materials Handouts –PowerPoint Slides

3 Lecture Outline 1.Computer-related subject matter and Business Methods 2.Combinations and Aggregations 3.Novelty - test for anticipation 4.Obviousness 5.Utility

4 Lecture Outline 6.Patent Specifications 7.Ownership

5 9-10

6 Schlumberger case (Casebook, pp. 84-86) The Applicant sought patent protection for a method of obtaining useful information about geological formations The method involved lowering instruments into bore holes to measure characteristics of the subterranean soil The measurements were recorded on magnetic tapes and processed by a programmed computer The Court applied a two step test for determining whether the claims related to statutory subject matter In the first step, the Court determined: “What, according to the application has been discovered?”

7 Schlumberger case (Casebook, pp. 84-86) The Court then asked: “Is that discovery patentable regardless of whether a computer is or should be used to implement the discovery?” On the facts of this case, the Court held that the discovery made by the applicant was the various calculations and mathematical formulae used to make the calculations which were implemented by the computer The calculations were considered to be a series of mental operations akin to a scientific principle or abstract theorem and hence patent protection was not available


9 85


11 86


13 State Street Bank case

14 State Street Bank case “Today we hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a a mathematical algorithm, formula, or calculation, because it produces a ‘useful, concrete and tangible result’ - a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades.”

15 Bilski case (Casebook, pp. 87-92) The applicant sought patent protection for a method of hedging risks in commodities trading An en banc panel of the Court of Appeals for the Federal Circuit held that, to be eligible for patent protection, a process must either be (1) tied to a particular machine or apparatus; or (2) transform a particular article into a different state or thing The Court held that the applicant’s process was non- transformative and encompassed a purely mental process The case was appealed to the Supreme Court of the United States

16 Bilski case (Casebook, pp. 87-92) The Supreme Court of the United States decision in Bilski was released on June 28, 2010 The “machine or transformation” (MOT) test is not the sole test to determine patent eligibility, but it is a useful guideline The Court declined to explicitly endorse the State Street test A categorical exclusion of business methods from patentable subject matter is inappropriate Claims to an abstract idea (like Bilski’s) are not eligible for patent protection


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20 89-90


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25 92

26 Amazon “One-Click” case (Casebook, pp. 93-104) The applicant sought patent protection for a method of ordering items on-line by means of a single click of a computer mouse or other single action The Canadian Patent Appeal Board held that that business methods do not qualify for patent protection and that the claimed method related to “non- technological” subject matter Both the “form” and “substance” of the claimed invention must be considered This decision has was overturned by the Federal Court

27 Amazon “One-Click” case (Casebook, pp. 93-104) Phelan J. held that the legal framework adopted by the Commissioner was unsupported by law and amounted to improper policy-making On further appeal, the FCA substantially agreed with the findings of Phelan J. The requirement that an invention must be “technological” was vague and confusing There is no Canadian jurisprudence which clear bars patent protection for business methods

28 Amazon “One-Click” case (Casebook, pp. 93-104) A patentable “art” must be something with physical existence, or something that manifests a discernable effect or change. The identification of the actual invention should be grounded in a purposive construction of the patent claims It was not appropriate for Phelan J. to have construed the claims without the benefit of expert evidence The application was referred back to the Examiner for further examination

29 Amazon “One-Click” case (Casebook, pp. 93-104) Following the FCA decision the applicant filed a voluntary amendment The application issued as Canadian Patent No. 2,246,933 on January 17, 2012 Accordingly, a further appeal to the SCC will not be pursued


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51 Domtar case (Casebook, pp. 104-106) The patent in issue related to the design of a beer carton having several different structural elements including panels, reinforcing rims and hand holds The Court considered whether the invention constituted a combination, where the separate elements “cooperate” or “interact” to produce a new result or an aggregation where each of the elements perform essentially independent functions On the facts of this case, the Court held that the beer carton was an aggregation and hence not entitled to patent protection




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66 Ernest Scragg case (Casebook, pp. 109-111) The Plaintiff sought to impeach the validity of two Canadian patents on the basis that the inventions claimed were not new (and hence the patents should never have been granted) The case summarizes the test for “anticipation” (i.e. lack of novelty) The prior art must provide “clear and unmistakable directions” in order to anticipate an invention Anticipation must be found in a single prior art document - the teachings of multiple documents cannot be combined


68 109

69 109-110


71 110

72 123-124

73 124

74 Sanofi case (Casebook, pp. 111 - 119) This case deals with “selection patents” The test for anticipation was refined Anticipation requires both (1) prior disclosure of the claimed invention; and (2) “enablement” which means that a person skilled in the art would have been able to perform the invention While some trial and error experimentation is permitted at the enablement stage, the prior art disclosure must have been sufficient to enable a skilled person to perform or make the claimed invention without “undue burden”


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82 118

83 The Great Cookie War (1984), 82 C.P.R. (2d) 224 (F.C.T.D.) (1989), 11U.S.P.Q. (2d) 1241 (Dist. Ct., Delaware) V.





88 Plaintiff owned a patent for a protective shield for a car generator The inventor had made a prototype of the invention and disclosed it to a single customer more than two years prior to the date the patent application was filed Noel J. held that patent lacked novelty due to prior public use of the invention Disclosure of an invention on a non-confidential basis to a single member of the public may render a patent invalid Gibney case (Casebook, pp. 120 - 123)

89 Court also held that the experimental use exemption was not available The inventor had failed to take precautions to avoid disclosure of the invention and there was insufficient evidence that the inventor created the prototype for the purposes of experimentation In order to qualify as bona fide experimentation, tests must be conducted to perfect the invention or to convince the inventor of the merits or practical utility of the invention (rather than to convince others, such as investors) Gibney case (Casebook, pp. 120 - 123)


91 122


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96 137

97 137-138


99 Baker Petrolite case (Casebook, pp. 125 - 135) This case deals with anticipation by prior use or sale There is very little jurisprudence interpreting Section 28.2(1)(a) of the Patent Act The Federal Court of Appeal held that an “enabling” disclosure is required If a product is made available without restriction to even one member of the public, and if a person skilled in the art would be able to discover the claimed invention without the use of inventive skill (such as by reverse engineering the product), then the invention may be found to be anticipated

100 Baker Petrolite case (Casebook, pp. 125 - 135) The amount of time and work involved in conducting the reverse engineering analysis is not determinative of whether a skilled person could discover the invention In this case the Court held that a person skilled in the art and using data and techniques available at the relevant time, and without the exercise of inventive skill, would have been led inevitably to the subject matter of the patent claims, namely the extraction of hydrogen sulphide from natural gas by contact with triazine (or its starting components)


102 130


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107 Concealed Use Some “black box” inventions are concealed or undetectable in normal use Query whether the sale of such inventions makes them “available to the public” within the meaning of Section 28.2(1) Canadian law now clearly requires an “enabling disclosure”, namely a disclosure by which information sufficient to enable a person skilled in the art to practice the invention has been “made available to the public”

108 Obviousness “[The issue of obviousness] is as fugitive, impalpable, wayward, and vague a phantom as exists in the whole paraphernalia of legal concepts.” Judge Learned Hand, Harries v. Air King Products Co. (1950) 183 F.2d 158, 162, CA2, N.Y.


110 139


112 Ernest Scragg case (Casebook, pp. 140 - 142) The courts apply an objective test - whether the alleged invention would have been obvious to a person of ordinary skill in the art A “mere scintilla” or slightest trace of an inventiveness is sufficient Workshop improvements are not patentable “Hindsight analysis” should be avoided - many important inventions may seem obvious once the solution to a particular problem has been shown


114 140-141


116 142

117 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

118 All of the component elements of the invention were known in the prior art The Plaintiff obtained a patent on the basis that the invention was a new and inventive combination The trial court held that the invention was obvious in view of a Darby sailboard which was described in a 1965 article in Popular Science magazine The Darby sailboard included a mast which could swivel in a socket, but it did not include a Marconi rig (i.e. a triangular sail) or a wishbone boom Windsurfing case (Casebook, pp. 142 - 151)

119 The trial judgment was overturned on appeal Urie J. held that the advantages of the Marconi rig were not obvious to the inventor of the Darby sailboard who the court considered to be someone skilled in the art Urie J. also considered the commercial success of the invention (i.e. a “secondary consideration”) In the result, claims 5 and 10 of the patent were found to be valid Windsurfing case (Casebook, pp. 142-151)


121 143


123 150


125 7 5 10 15 20 25 30

126 7 5 10

127 5.The apparatus of claim 1 including means adapted to enable said user to grasp either side of said sail. 10.The apparatus of claim 4 wherein said boom comprises a pair of boom members arcuately connected athwart said mast and securing said sail there-between.




131 Sanofi case (Casebook, pp. 151-160) This case also deals with the test for obviousness The Court adopted the four-step Windsurfing/Pozzoli approach An invention may be “obvious to try” if it is more or less self-evident that what is being tried ought to work However, a mere possibility of finding an invention is not enough It was not self-evident from the “875 patent or common general knowledge that the selected isomer ought to work, i.e. that it would be more effective and less toxic


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140 An invention is not useful if will not operate at all or, more broadly, if it will not do what the patent specification promises it will do In this case the applicant sought patent protection for a “death ray” which allegedly used a path of photo- ionized air produced by a laser beam as a channel for the transmission of a very high voltage The Federal Court of Appeal upheld the judgment of the Patent Appeal Board which refused the application on the basis that the invention was not useful since it was inoperable for the purpose for which it was designed X v. Commissioner of Patents (Casebook, pp. 161 - 162)


142 161-162

143 162

144 Apotex v. Wellcome Foundation (Casebook, pp. 163 - 178) This case deals with the “doctrine of sound prediction” AZT was a known compound which had been synthesized and tested in the 1960s as a possible anti- cancer agent In 1984 the respondents Glaxo/Wellcome began to test AZT in mice as a drug candidate for treating retroviral infections such as HIV On March 16, 1985 Glaxo/Wellcome filed its initial patent application although scientific tests had not yet been completed

145 Apotex v. Wellcome Foundation (Casebook, pp. 163 - 178) Binnie J. held that when the 1985 patent application was filed Glaxo/Wellcome had sufficient information about AZT and its activity against HIV to make a sound prediction that AZT would be clinically useful in the the treatment and prophylaxis of HIV/AIDS in human beings


147 171


149 172-173


151 The inventor devised an improved concrete extruder during the course of his employment However, it was not part of the inventor’s employment duties to create new products and innovations According to the common law, if a person creates an invention as part of his or her employment duties, then ordinarily the employer is entitled to claim ownership of any resulting patent Otherwise, the ownership rights remain with the inventor (subject to the terms of any employment agreement or other contract) Spiroll case (Casebook, pp. 181 - 184)


153 183


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