Novelty, Obviousness and Utility Carol Hitchman March 1, 2005

Patent Act provisions  Old Act – sections 2, 27 and 61 (previously section 28 and 63)  New Act – sections 2, 28.2 and 28.3

Old Patent Act  Anticipation by-  (a) prior knowledge or use (subject to section 61) before the date of invention;  (b) patent or printed prior publication more than 2 years before Canadian filing date; or  (c) public use or sale in Canada 2 years prior to Canadian filing date

Old Patent Act  No statutory provision for obviousness  Courts refer to “invention” in section 2 as requiring that the subject matter not be obvious  Obviousness determined at the date of invention, which has to be proven by the patentee if earlier than the priority/filing date

New Patent Act  Invention must not be disclosed so that the subject matter of the patent became available to the public in Canada or elsewhere  (a) by applicant more than one year before the Canadian filing date;  (b) by anyone other than the applicant before the claim date (priority date or Canadian filing date, whichever is earlier);

New Patent Act  (c) by someone other than the applicant in a patent application filed in Canada with a filing date before the claim date; or  (d) by someone other than the applicant in a patent application filed in Canada with a filing date in Canada after the claim date, but with a priority date before the claim date (plus a few other criteria)

New Patent Act  Obviousness is provided for – invention must contain subject matter that would not have been obvious on the claim date to a person skilled in the art or science having regard to:  (a) information disclosed more than one year before the Canadian filing date by the Applicant; or  (b) information disclosed by someone other than the applicant before the claim date and in such a manner that the information became available to the public in Canada or elsewhere

Novelty  All cases in case book are under the Old Patent Act  Leading case under the New Patent Act is Baker Petrolite Corp. v. Canwell Enviro-Industries Ltd. [2003] 1 F.C. 49 (F.C.A.)

Difference between anticipation and obviousness  “..obviousness is an attack on a patent based on its lack of inventiveness. The attacker says, in effect, “Any fool could have done that.” Anticipation, or lack of novelty, on the other hand, in effect assumes that there has been an invention but asserts that it has been disclosed to the public prior to the application for the patent. The charge is: “Your invention, though clever, was already known”.  Beloit Canada Ltd. v. Valmet OY, p. 293

Novelty: Beloit  Anticipation must be found in a specific patent or other published document; it is not enough to pick bits and pieces from a variety of publications and to meld them together so as to come up with the claimed invention: p. 297

Novelty: Beloit  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: p. 297

Novelty: Voith (Beloit, part 2)  The Schiel paper is properly led in evidence and accepted as a printed publication  However, the publication must stand on its own – it cannot be extended by the introduction of parol evidence: p

Reeves Brothers: the tests  8 tests for anticipation are set out in page 157 – in essence a distillation of the case law  E.g. the prior art must give an exact prior description, give clear directions which will inevitably result in something within the claims...

Reeves revised: Diversified Products case  FCA makes it clear that the tests set out in Reeves are not cumulative – p. 361  An impractical and inoperable device cannot be an anticipation – p

Xerox v. IBM  Recites case law on anticipation – p  - paper anticipation – device never put into production looked on with “disfavour” – p. 48  “A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee” – p. 59, quoting from the General Tire case

Baker Petrolite case  Summarizes the new law at paras  1. Sale to the public or public use is insufficient to prove anticipation. Disclosure of the invention is required to constitute anticipation.  2. A prior sale must amount to an enabling disclosure, i.e. it must be such as to enable the public to make or obtain the invention.

Baker Petrolite  3.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.  4. The analysis must be able to be performed by a person skilled in the art in accordance with known analytic techniques at the relevant time.

Baker Petrolite  5. 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 she or he pleases.  6. It is not necessary to demonstrate that a member of the public actually analyzed the product that was sold.

Baker Petrolite  7. The amount of time and work involved in conducting the analysis is not determinative of whether a skilled person could discover the invention. The relevant consideration is only whether inventive skill was required.  8.It is not necessary that the product that is analyzed be capable of exact reproduction. It is the subject matter of the patent claims that must be disclosed through the analysis.

Obviousness (Beloit, p. 294)  The test for obviousness is not to ask what competent inventors did or would have done to solve the problem. Inventors are by definition inventive. The classical touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right….

Beloit continued  The question to be asked is whether this mythical creature (the man on the Clapham omnibus of patent law) would, in the light of the state of the art and of common general knowledge as at the claimed date of the invention, have come directly and without difficulty to the solution taught by the patent. It is a very difficult test to satisfy.

Beloit – p. 295  Everything is obvious after the fact Expert witnesses who say that they could have done that will have to answer “Why didn’t you”

General Tire v. Firestone  Skilled person is assumed to have the “common general knowledge”  Common general knowledge is different from public knowledge – it is what would in fact be known by an appropriately skilled addressee of the patent – p.482

P&G (the diaper case)  The skilled worker can be a composite being or a team combining knowledge of more than one relevant art – p. 12  Skilled worker has the common general knowledge as well as information available to him (her) in publications and patents – but must be evidence that the prior art would be available through a diligent search – p. 47

Farbwerke Hoechst  Inventive ingenuity – standard is not that high – practically all research work is done by looking in directions where the state of the art points – p. 155  Cripps Question – p. 156 – Was it obvious to any skilled chemist in the state of the chemical knowledge existing at the date of the patent that he could [recite claimed invention here]. If the answer is ‘No’ the patent is valid, if ‘Yes’ the patent is invalid.

Worth a Try?  Farbwerke case refers to the “worth a try” test – not enough for obviousness – p. 155  Pfizer Canada Inc. v. Apotex Inc. [2002] F.C.J. No – rephrases this saying that no research is to be conducted but the skilled person is to keep up with advances in the field and if taught by the literature to conduct investigations – so long as there is no “undue experimentation”, the invention will be obvious.

Windsurfer v. Windsurfer  UK CA and FCA come to different conclusions on obviousness of the windsurfer  Not necessary to show that the skilled worker would in fact be interested in the prior art or would recognize the commercial potential of the prior art: UK, p. 74

Windsurfer v. Windsurfer  UK court finds that the inventive concept is a “free-sail” concept and that was disclosed in the Darby prior art – p. 74  FCA finds that the inventive concept was the ability of the user to grasp either side of the sail (claim 5) – since Darby did not disclose this, the invention was not obvious – p. 260  In Canada, Darby gave evidence that the windsurfer design had not occurred to him.

Utility – Do the wheels go round?  Generally speaking, not a very high bar – in prosecution, the patent office does not require any real proof of the utility asserted in the patent; and often the utility asserted is so “soft” that it would be impossible to measure – e.g. crystal forms with “better drying and filtration characteristics” than the known crystal form

X v. Commissioner of Patents  The Patent office refused a patent application for a death ray.  The applicant (and no one else) had constructed the device.  Invention founded on a prediction of utility – patent office and Appeal Board found that the invention would not work.  Court deferred to the expertise of the Board.

Minerals Separation  Claim 9 broad enough to include things that would not work (cellulose xanthates) – p. 144  Patentee can define terms in the specification – p. 144  Not enough to say a person skilled in the art would not use cellulose xanthates to try and narrow the scope of the claim – p. 148

Burton Parsons  Case generally cited for the proposition that patents (both the disclosure and the claims) are addressed to persons skilled in the art – p. 560  The claim covered a cream applied to the skin to which electrodes are applied (for example in electrocardiogram).  The claim covered highly ionizable salts – however some were not compatible with the skin.

Burton Parsons cont’d  S.C.C. finds that the toxic/incompatible substances will work – i.e. not a case of inutility as in the Minerals Separation case; and that persons skilled in the art would know not to use the ones that are incompatible with the skin – p  Distinguished Minerals Separation saying that the inutility of the cellulose xanthate was not known in the prior art; however, the toxicity of the highly ionizable salts was known