LAW206_Slides_Week2.pdf

Patentable Inventions Part 1 MORG AN JARVI S FACU LTY OF LAW QU E E N ’ S U N I VE RSI TY What is a Patent? Patent Patent Infringement Exclusive right to practice an invention for 20 years from the “claim date” Granted under the Patent Act The right to exclude others from making, constructing and us...

Patentable Inventions Part 1 MORG AN JARVI S FACU LTY OF LAW QU E E N ’ S U N I VE RSI TY What is a Patent? Patent Patent Infringement Exclusive right to practice an invention for 20 years from the “claim date” Granted under the Patent Act The right to exclude others from making, constructing and using the invention and selling it to others to be used is exercised or enforced by suing them Every patent granted under this Act shall, subject to this Act, grant to the patentee for the term of the patent, from the granting of the patent, the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used, subject to adjudication in respect thereof before any court of competent jurisdiction - Patent Act, Section 42 What is an Invention? “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter;” - Patent Act, Section 2 Also can’t be obvious (Section 28.3), or otherwise unpatentable subject matter, under the Patent Act or otherwise at common law. What is an Invention? Art An act or series of acts performed by some physical agent upon some physical object and producing in some object some change either of character or of condition Process A systematic series of interdependent actions or steps directed to some economically useful result. Machine An apparatus of interrelated parts which can be used to make products or practice a process. What is an Invention? Manufacture A product made by changing the character or condition of material objects Composition of Matter Composite article or substance produced from two or more substances Improvements An apparatus of interrelated parts which can be used to make products or practice a process. As long as they’re new, useful, and unobvious, and not otherwise unpatentable Unpatentable Subject Matter No patent shall be granted for any mere scientific principle or abstract theorem. 27(8) Information, concepts or ideas Discoveries and products of nature Mathematic al formulas Diversified Products Corp v. Tye-Sil Corp Methods of medical treatment Computer programs and business methods Higher life forms SCC in Harvard College v Canada Un/patentable Subject Matter Patenting life forms Harvard College v. Canada (Commissioner of Patents) Patenting business models and computer programs Canada (Attorney General) v. Amazon.com, Inc. Patentable Inventions Part 2 MORG AN JARVI S FACU LTY OF LAW QU E E N ’ S U N I VE RSI TY What is an Invention? “…Any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter; - Patent Act, Section 2 Must also be unobvious as per Section 28.3 Novelty New is defined as not known or “disclosed” or made “available to the public” in the “art” or anywhere in the world By the inventor, more than a year before the patent is to be filed (the ‘grace period’) By others, anytime before the patent is filed Public Disclosure Grace Period 28.2 (1) The subject-matter defined by a claim … must not have been disclosed (b) before the claim date by (a) more than 1 year before a person not mentioned in the filing date by the applicant, paragraph (a) in such a or by a person who obtained manner that the subject-matter knowledge, directly or indirectly, from the applicant, became available to the public in Canada or elsewhere; in such a manner that the subject-matter became available to the public in Canada or elsewhere; (c) in an application for a patent that is filed in Canada by a person other than the applicant, and has a filing date that is before the claim date;… - Patent Act, Section 28.2 Subsection 1 Prior Art Disclosures Disclosure to one person, without the bounds of confidentiality, can be a public disclosure. Disclosure must be an ‘enabling disclosure’ in the ‘prior art’ to prevent patentability, or for the patent to have been ‘anticipated’. Prior art is essentially the state of the field of knowledge at the time the patent was filed. Enabling disclosure is one where a worker skilled in the ‘art’ would be able to make or perform the claimed invention, without unduly burdensome experimentation, given the general knowledge available POSITA Ordinary skilled person, of ordinary creativity and common sense Knowing the state of prior art at the relevant time Traditionally not considered inventive ★ Ex. A lab technician with a Masters in the relevant field Cartoon by Mike Twohy (https://condenaststore.com) Claim Dates The date of a claim in an application for a patent in Canada (the “pending application”) is the filing date of the application, unless (a) the pending application is filed by: (i) a person who has previously regularly filed in or for Canada an application for a patent disclosing the subject-matter defined by the claim (ii) a person who is entitled to protection under the terms of any treaty or convention relating to patents to which Canada is a party and who has previously regularly filed in a treaty country a patent disclosing the subject-matter defined by the claim; (b) the filing date of the pending application is within twelve months after the filing date of the previously regularly filed application; and (c) the applicant has made a request for priority on the basis of the previously regularly filed application. - Patent Act, Section 28.2 Subsection 1 Patentable Inventions Part 3 MORG AN JARVI S FACU LTY OF LAW QU E E N ’ S U N I VE RSI TY What is an Invention? “…Any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter; - Patent Act, Section 2 Must also be unobvious as per Section 28.3 Utility Useful Solving some practical problem Disclosed Invention Must actually work to solve the problem Sound Prediction Factual basis Sound line of reasoning Proper disclosure Obviousness For an invention to be inventive, it can’t be obvious. The bargain between state and inventor requires some inventive merit in the innovative advance upon the prior art. If the “invention” is found obvious, then no patent can be issued, or if it was, then it shouldn’t have been, and then patent is declared invalid. Prior art documents can be combined to demonstrate obviousness of a claimed invention. A finding of obviousness is often far from obvious. Obvious? www.ipwatchdog.com By Manu Cornet Obviousness …claim in an application for a patent in Canada must be subject-matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains, having regard to: (a) information disclosed more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant in such a manner that the information became available to the public in Canada or elsewhere; and (b) information disclosed before the claim date by a person not mentioned in paragraph (a) in such a manner that the information became available to the public in Canada or elsewhere. - Patent Act, Section 28.3 Obviousness “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. The question to be asked is whether this mythical creature (the man in the Clapham omnibus of patent law) would, in the light of the state of the art and common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent. It is a very difficult test to satisfy.” - Beloit Canada Ltd. v. Valmet Oy (1986), 8 C.P.R. (3d) 289 (F.C.A. per Hugessen J.A.) Obviousness “….would, in the light of the state of the art and common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent.” Indications of non-obviousness are: Prior work in the field points to a different solution; The industry thought it wouldn’t work; The invention meets an unfulfilled need in the marketplace; The invention was commercially successful; and There has been substantial infringement of the invention. Obviousness “….would, in the light of the state of the art and common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent.” Indications of non-obviousness are: Prior work in the field points to a different solution; The industry thought it wouldn’t work; The invention meets an unfulfilled need in the marketplace; The invention was commercially successful; and There has been substantial infringement of the invention. Obviousness “….would, in the light of the state of the art and common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent.” Indications of non-obviousness are: Prior work in the field points to a different solution; The industry thought it wouldn’t work; The invention meets an unfulfilled need in the marketplace; The invention was commercially successful; and There has been substantial infringement of the invention. Obviousness “….would, in the light of the state of the art and common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent.” Indications of non-obviousness are: Prior work in the field points to a different solution; The industry thought it wouldn’t work; The invention meets an unfulfilled need in the marketplace; The invention was commercially successful; and There has been substantial infringement of the invention. Obviousness “….would, in the light of the state of the art and common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent.” Indications of non-obviousness are: Prior work in the field points to a different solution; The industry thought it wouldn’t work; The invention meets an unfulfilled need in the marketplace; The invention was commercially successful; and There has been substantial infringement of the invention. Obviousness “….would, in the light of the state of the art and common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent.” Indications of non-obviousness are: Prior work in the field points to a different solution; The industry thought it wouldn’t work; The invention meets an unfulfilled need in the marketplace; The invention was commercially successful; and There has been substantial infringement of the invention. Obviousness Test 1. Identify the “notional person skilled in the art”, and identify the relevant common general knowledge of that person; 2. Identify the inventive concept of the claim in question or if that cannot readily be done, construe it; 3. Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed; and 4. As assessed without any knowledge of the alleged invention as claimed, do those differences constitute steps that would have been obvious to the person skilled in the art or do they require any degree of invention. Obvious to Try Was it more or less self-evident that what is being tried ought to work? Are there a finite number of identified predictable solutions known to persons skilled in the art? What are the extent, nature and amount of effort required to achieve the invention? Are routine trials carried out or is the experimentation prolonged and arduous, such that the trials would not be considered routine? Is there a motive provided in the prior art to find the solution the patent addresses? Obvious? “It is obvious for one... to apply peanut butter on the bottom slice of bread... add jelly... and apply another layer of peanut butter on top of the jelly." US6004596 “Claims: … “The sealed crustless Sandwich of claim 3, wherein said at least one filling comprises: a first filling, a Second filling, a third filling, and wherein Said Second filling is completely Surrounded by Said first filling and Said third filling for preventing Said Second filling from engaging Said first bread layer and Said Second bread layer”