PATC Module 2 – Infringement/Validity Patent Validity: Introduction and Anticipation 1

Patent Validity--Introduction Only “valid” patent claims can be enforced Patent is valid if the application meets the requirements of the Patent Act [s.27(1)] Requirements include (among other things): Patentable subject-matter (s.2) invention--new (novel) and inventive (non-obvious)(s.2, s.28.2, 28.3) Useful (s.2) filed with a petition identifying the inventor(s) (s.27(2), R77) sufficient disclosure of one (best) mode (27.3, R80) distinct, clear claims (s.27.4, R84) accuracy, candour during prosecution 2

Presumption Of Validity: Section 43 s.43(2) “After the patent is issued, it shall, in the absence of any evidence to the contrary, be valid...” Rebutting the presumption: the presumption shows on whom the burden lies to present evidence, not the degree of proof which must be attained [Diversified Products v. Tye-Sil (1991) FCA, quoting from Rubbermaid v. Tucker Plastic] “applying the tests applicable to the pleas of anticipation and obviousness, which are not easy tests to meet as we shall see; did the [party seeking to invalidate the patent] prove, on the usual standard of balance of probabilities, that the patent was invalid as having been anticipated or as being obvious?” [Windsurfing International (1982) FCTD] 3

Patentable Subject Matter to be patentable, subject-matter of the invention should relate to a product, process or apparatus having a technical and commercial objective or application [Tennessee Eastman] Unpatentable: artwork, literature mere scientific principle, abstract theorem [s.27(8)] mental steps computer programs [Schlumberger] (sometimes) [Amazon] methods of medical treatment [Tennessee Eastman] higher life forms [Harvard College “oncomouse”] business methods... 4

Patentable Subject Matter Business Methods: Amazon “one-click” patent application (No. 2,246,933) was rejected by PAB in March 2009, concluding that business method patents: are not patentable per se do not fall within the definition of “art” of s.2 of the Patent act under the test set out in Lawson v. Comm’r of Patents are not “technological” overturned by FCTD in October 2010; Justice Phelan holding that: there is no per se exclusion of business method patents the term “art” as used in s.2 must be interpreted broadly (use three-part test of Shell Oil v Comm’r of Patents, SCC 1982) there is no “technological” requirement in Canadian Patent Law in November 2011, the FCA agreed generally with the lower court’s decision in ruling against CIPO’s analysis 5

Patentable Subject Matter Business Methods: the FCA confirmed that Canadian law did not expressly exclude business methods from patentability however, patentable subject matter must be something with physical existence, or something that manifests a discernible effect or change (Lawson) the “physicality requirement” is not met merely by the fact that the claimed invention has a practical application, e.g. using a computer to give novel mathematical formula a practical application (Schlumberger) the FCA directed CIPO to re-examine the “1-Click” application on an expedited basis in accordance with the Court's reasons CIPO allowed Amazon’s application in less than a month, and without requiring any changes to the claims New guidelines apply “purposive construction” in assessing subject matter eligibility 6

Anticipation/Novelty A claimed invention must be “new” (s.2) A claimed invention that lacks the requisite “novelty” is said to be anticipated 7

Anticipation/Novelty Old Act: s.27(1) [Invention patentable if it was]: not known or used by any other person before he invented it not described in any patent or in any publication printed in Canada or in any other country more than two years before presentation of the petition mentioned hereunder not in public use or on sale in Canada for more than two years prior to his application in Canada s.61(1) No patent shall be declared invalid or void [under s.27(1) (a)] unless it is established that: (a) that other person had, before [the filing date]. disclosed or used the invention in such manner that it had become available to the public 8

Anticipation/Novelty Old Act--Key Features a “first-to-invent” system limited Novelty-related bars to patentability: “printed publication”, available anywhere, more than two years prior to the filing date in public use or on sale in Canada, more than two years prior to the filing date 9

Anticipation/Novelty New Act: Novelty basis in s.28.2 28.2 The subject matter defined by a claim... must not have been disclosed more than one year before the filing date by the applicant... in such a manner that the subject matter became available to the public [anywhere] before the claim date by a person not mentioned in (a) in such a manner that the subject matter became available to the public [anywhere] in an application for patent that is filed in Canada by a person other than the applicant, and has a filing date [or priority date--cf.(d)] before the claim date 10

Anticipation/Novelty New Act--Key Features a “first-to-file” system one-year grace period for inventor disclosures “claim date”--defined in s.28.1 11

Anticipation/Novelty Grace Period Grace period is relative to filing date in Canada, not priority date Example problem: Applies to what is actually disclosed – different grace periods can apply to different subject matter in an application (based on when subject matter was added) 12

Test for Anticipation (Development) Beloit (1986 FCA) 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 without the exercise of any inventive skill. The prior publication must contain so clear a direction that a skilled person reading and following it would in every case and without possibility of error be led to the claimed invention. This test was approved by the SCC in Free World This test was “refined” by the SCC in Sanofi 13

Test for Anticipation (Development) Reeves Brothers (1978 FCTD): in order that there may be a finding of anticipation, the prior art must (1) give an exact prior description; (2) give directions which will inevitably result in something within the claims; (3) give clear and unmistakable directions; (4) give information which for the purpose of practical utility is equal to that given by the subject patent; (5) convey information so that a person grappling with the same problem must be able to say “that gives me what I wish”; (6) give information to a person of ordinary knowledge so that he must at once perceive the invention; (7) in the absence of explicit directions, teach an “inevitable result” which “can only be proved by experiments”; and (8) satisfy all these tests in a single document without making a mosaic. 14

Test for Anticipation (Development) Diversified Products v. Tye-Sil (1997 FCTD) To defeat novelty, the prior reference must: teach the combination of all elements claimed give the same knowledge as the specification contain clear and unmistakable directions to so use it disclose whatever is essential to the invention or necessary or material for its practical working and real utility not be impractical or inoperable 15

Test for Anticipation Sanofi (2008 SCC): Two-step test for anticipation: (1) Disclosure: does the prior art disclose the invention such that practicing the prior art would be infringement (no room for experimentation; the prior art must fall within the scope of the claims) (2) Enablement: is the disclosure enabling, such that it teaches one of ordinary skill in the art how to make and/or use the invention without need for any additional inventive step (routine testing or experimentation within the scope of one of ordinary skill in the art is allowed) 16

Novelty/Anticipation: Application Prior document must be considered alone (no mosaicing)--Beloit (1986 FCA) If the single document refers to or invokes other documents, then those other documents may be considered also--Martinray (1991 FCTD) A single copy of a prior printed document released without obligation of confidentiality is sufficient--Baker Petrolite (2002 FCA) No one need actually have read the document--Abbott Laboratories (2007 FCA) 17

Novelty/Anticipation: Application internal, confidential memos or notes would not defeat novelty Experimental use can fall outside the prohibited “prior use” [Old Act cases--Hi-Qual Mfg.(1994 FCA), Canadian Patent Scaffolding (1980 FCA)] 18

Novelty/Anticipation: Application Baker Petrolite (2002 FCA) [Re New Act Patent No 2,005,946] Sale to the public or use by the public alone of a product embodying the invention is insufficient to prove anticipation. Disclosure of the invention is required to constitute anticipation under s.28.2(1)(a). For a prior sale or use to anticipate an invention, it must amount to an “enabling disclosure”. The prior sale or use of a chemical product will constitute an enabling disclosure to the public if its composition can be discovered through analysis of the product. The analysis must be able to be performed by person skilled in the art in accordance with known analytical techniques available “at the relevant time” (i.e. before the claim date). The person skilled in the art using available analytical technique must be able to find the invention without the exercise of inventive skill. 19

Novelty/Anticipation: Application Baker Petrolite (2002 FCA) (contd): In the context of patent anticipation under 28.2(1)(a), when reverse engineering is necessary to enable discovery of the invention (without the exercise of inventive skill), an invention becomes available to the public if a product containing the invention is sold to any member of the public who is free to use it as the purchaser pleases. Such sale to only a single member of the public qualifies. It is not necessary to demonstrate that a member of the public actually analyzed the sold product. It is not necessary that the product that is the subject of the analysis be capable of exact reproduction. It is the subject matter of the patent claims (the invention) that must be disclosed through the analysis. Novelty of the claimed invention is destroyed if there is a disclosure of an embodiment that falls within the claim. 20

Novelty/Anticipation: Examination Bauer Hockey Corp. v Easton Sports Canada Inc., 2010 FC 361 Alleged anticipation by reason of disclosure of Bauer’s Vapor 8 prototype at the Test League Found to not be a public disclosure because prototype skates were only available for visual inspection and neither testing nor close examination was possible Essential elements of patent would not have been revealed to a skilled person attending a game and observing the skates worn by participants 21

Novelty/Anticipation: Confidentiality Wenzel Downhole Tools Ltd v National-Oilwell Canada Ltd, 2012 FCA 333 Anticipation by prior disclosure of drilling motor bearing assembly by another, before filing date in Canada Proof of anticipation does not require demonstrating that tool was actually analyzed Assembly drawing and personnel available for consultation (could have accessed) Evidence found not to support the existence of either a joint venture or understanding of confidentiality between assembly provider and renter 22

Novelty/Anticipation: Confidentiality Corlac Inc. v Weatherford Canada Ltd., 2011 FCA 228 Relates to the manufacture and sale of drive systems for rotary oil well pumps Confidentiality found to implicitly exist and sales of prototypes did not constitute disclosure to the public Parties shared a “common cause” and had a relationship of trust and co-operation that led to an expectation of confidence Disclosure found to be part of the process to finalize the invention Confidential disclosure despite the fact that they should have obtained confidentiality agreements 23

Novelty/Anticipation: Confidentiality Varco Canada Ltd. v Pason Systems Corp, 2013 FC 750 Patent relates to braking function in an automatic drilling system, particularly used in drilling rigs to regulate the release of a drill string Prototype used on a third party’s oil rig more than one year before filing date of patent application Inventor gave only general information, personally performed test drilling, locked apparatus in box, not possible to see inner workings Found to be an intent to keep invention confidential, notwithstanding absence of a confidentiality agreement 24

Novelty/Anticipation: Experimentation Wenzel Downhole Tools Ltd v National-Oilwell Canada Ltd, 2012 FCA 333 There is no public disclosure where a prior use is experimental only (Gibney v Ford Motor Co of Canada, 52 C.P.R. 140) Everything new has to be used for a first time, does not necessarily transform an initial use into a test A use will only be experimental if it is so in the mind of the user No evidence that users of tool considered the use to be experimental 25