LAW206 Slides Week 4 PDF

Patent Owner Rights & Infringement MORG AN JARVI S FACU LTY OF LAW QU E E N ’ S U N I VE RSI TY Patent Rights Granted 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...

Patent Owner Rights & Infringement MORG AN JARVI S FACU LTY OF LAW QU E E N ’ S U N I VE RSI TY Patent Rights Granted 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. - “Grant of Patents” under the Patent Act, Section 42 So if anyone else constructs, uses or sells the invention in Canada, without permission (license) from the patent owner, they are infringing the patent. Patent Infringement A person who infringes a patent is liable to the patentee and to all persons claiming under the patentee for all damage sustained by the patentee or by any such person, after the grant of the patent, by reason of the infringement. - “Liability for Patent Infringement ” under the Patent Act, Section 55, Subsection 1 A person is liable to pay reasonable compensation to a patentee and to all persons claiming under the patentee for any damage sustained by the patentee or by any of those persons by reason of any act on the part of that person, after the application for the patent became open to public inspection under section 10 and before the grant of the patent, that would have constituted an infringement of the patent if the patent had been granted on the day the application became open to public inspection under that section. - “Liability Damage before Patent is Granted” under the Patent Act, Section 55, Subsection 2 Patent Rights & Direct Infringement Infringement For production, advantage, or to deal with it commercially, regardless of intent to infringe. "Any act that interferes with the full enjoyment of the monopoly granted to the patentee" Did the defendant deprive the inventor/owner of the full enjoyment conferred by the patent (in whole or in part, directly or indirectly)? Monsanto Canada Inc. v. Schmeiser, [2-4] 1 S.C.R. 902 Use or sale of a product made by a patented process or machine is infringement. Patent Rights & Direct Infringement Making Sale Manufacture of a patented product Transfer of title that takes place in Canada of patented product without permission A purchase of a patented device from the patent owner (or licensee) transfers rights Patent Rights & Indirect Infringement An indirect infringer induces or procures another third party to infringe the patent. For there to be indirect infringement: (1) A third party (e.g. end consumer) has made, used or sold an embodiment of an invention without license (i.e., an act of direct infringement); (2) Defendant caused the direct infringer to infringe, and without such influence the infringement would not have taken place; and (3) Defendant knew such influence would result in the infringing action of the direct infringer. Patent Claim Construction MORG AN JARVI S FACU LTY OF LAW QU E E N ’ S U N I VE RSI TY Claim Construction Claim Construction Interpreting the meaning of the patent claims. Need to determine what the patent claims were intended to cover, to assess whether an alleged infringer is infringing on the territory claimed. Determine the scope of the claims to know whether some prior art invalidates the patent (anticipation and obviousness). Depends on what the essential elements of the invention are. Purposive Construction Not just literal interpretation, but the intent and purpose of the patent drafter. Claims interpreted through the eyes of the POSITA at the time the patent application was filed, in the context of the patent document. Need to determine what the essential elements of the claims are, vs. nonessential elements. Essential Elements Patent claims describe the “essential elements” of the invention, differentiating it from the prior art. If a particular element can be substituted and not effect how the invention works, it’s not an essential element. There is no infringement if an essential element is different or omitted in what the alleged infringer is doing. However, there may still be infringement if non-essential elements are substituted or omitted. Essential Elements “In reality, the “fences” often consist of complex layers of definitions of different elements (or “components” or “features” or “integers”) of differing complexity, substitutability and ingenuity. A matrix of descriptive words and phrases defines the monopoly, warns the public and ensnares the infringer. In some instances, the precise elements of the “fence” may be crucial or “essential” to the working of the invention as claimed; in others the inventor may contemplate, and the reader skilled in the art appreciate, that variants could easily be used or substituted without making any material difference to the working of the invention. The interpretative task of the court in claims construction is to separate the one from the other, to distinguish the essential from the inessential, and to give to the “field” framed by the former the legal protection to which the holder of a valid patent is entitled.” - Free World Trust c. Électro Santé Inc. (2000), 9 C.P.R. (4th) 168 (S.C.C.) per Binnie, J. at 178–179, para. 15. Essential Elements SCC notes that a purposive construction of the claims will distinguish essential from non-essential elements of the invention: i. Having regard to whether or not it was obvious to the skilled reader at the time the patent was published that a variant of a particular element would not make a difference to the way the invention works; or ii. According to the intent of the inventor, expressed or inferred from the claims, that a particular element is essential irrespective of its practical effect. - Free World Trust c. Électro Santé Inc. (2000), 9 C.P.R. (4th) 168 (S.C.C.) per Binnie, J. at 183–184, para. 31. Patent Validity / Invalidity MORG AN JARVI S FACU LTY OF LAW QU E E N ’ S U N I VE RSI TY Patent Validity Issued patents are presumed valid. Each claim is presumed valid, independent of the other claims. Grounds for invalidity: § Defects in the registration itself § Lack of patentability of the invention (subject matter, utility, novelty and inventive merit). Invalidity Arguments Over breadth or lack of support Ambiguity Insufficiency Good faith in patent prosecution Fraud on the Patent Office Double patenting Invalidity Arguments Over breadth or lack of support Ambiguity Insufficiency Good faith in patent prosecution Fraud on the Patent Office Double patenting Invalidity Arguments Over breadth or lack of support Ambiguity Insufficiency Good faith in patent prosecution Fraud on the Patent Office Double patenting Invalidity Arguments Over breadth or lack of support Ambiguity Insufficiency Good faith in patent prosecution Fraud on the Patent Office Double patenting Invalidity Arguments Over breadth or lack of support Ambiguity Insufficiency Good faith in patent prosecution Fraud on the Patent Office Double patenting Invalidity Arguments Over breadth or lack of support Ambiguity Insufficiency Good faith in patent prosecution Fraud on the Patent Office Double patenting Invalidity Arguments Over breadth or lack of support Ambiguity Insufficiency Good faith in patent prosecution Fraud on the Patent Office Double patenting Hot Topics and Key Phrases in Patent World MORG AN JARVI S FACU LTY OF LAW QU E E N ’ S U N I VE RSI TY Defensive & Offensive Patent Strategy Defensive patenting Owning/licensing patents to defend yourself and your freedom to operate your business. Offensive patenting Owning/licensing patents to assert against others through patent infringement claims, demanding royalties. Non-practising entities (NPE) or “patent trolls” Don’t actually work the patented invention, but generate revenue through asserting the patent rights against others. Freedom to Operate Freedom to Operate Analysis: Determining what patents are out there, and what you might need to license Patent Thickets: Intertwined and overlapping patent claims making commercial activity difficult. Patent aggregators/pools: Pool patents for either defensive or offensive use, avoiding the problem of patent thickets.