1. PATC Module 2 – Infringement/Validity
Canada-US Differences 1

2. Canada US Differences
Novelty: First-to-File vs. First-Inventor-to-File
Obviousness: more creative POSITA
Prosecution matters
obligation of candour, disclosure
file wrapper is used to construe claims
Examination request, excess claim fees
Extensions of time vs. abandonment period
Subject matter
software
higher life
business methods
Continuation applications
Double patenting – no terminal disclaimers

3. Canada US Differences Novelty Standard
Canada: Novelty set out in s.28.2
first to file
no on-sale bar
US standard for Novelty is set out in 35 USC 102
first inventor to file system
statutory bars
US has an on-sale bar (regardless of what information is actually made available)

4. Canada US Differences (b) Obviousness Standard
Canada: s.28.3 of the Act; Beloit
very difficult to establish obviousness
this has changed somewhat in view of Sanofi
US: 35 USC 103
American POSITA is more creative
(KSR v. Teleflex)
easier to defeat patent as obvious 4

5. Canada US Differences (c) Prosecution Matters Canada:
no resort to file wrapper to construe claims
limited duty of candour
US:
high obligation to bring forward all prior art to attention of patent office (IDS)
statements made during prosecution can (and must) be reviewed when construing claims 5

6. Canada US Differences (d) Subject Matter Canada:
higher life forms cannot be patented
business methods--uncertain
software patents—limited [Amazon]
US:
much broader definition of patentable subject matter
software patents – some restrictions [Alice] 6

7. Canada US Differences (f) Double Patenting Canada:
Difficult double patenting regime, no opportunity to fix if claims were not subjected to a unity of invention rejection
US:
Obviousness type double patenting can be readily overcome by filing a terminal disclaimer
Keep in mind, not only are the patent terms fixed (PTAs are routine in US practice), but also ownership
Rationale is that two owners cannot own similar/same claims and enforce both patents separately 7