Intellectual Property Law Patent The Patent System

Intellectual Property Law

Patent

The Patent System

Specification

The specification has two parts

The “disclosure”

The “claims”

27(2) . . .the application must contain a petition and a specification of the invention.

27(3) The specification of an invention must

(a) correctly and fully describe the invention and its operation or use as contemplated by the inventor;

(4) The specification must end with a claim or claims defining distinctly and in explicit terms the subject-matter of the invention for which an exclusive privilege or property is claimed.

Specification

The claims define the monopoly

So that others will know whether they are infringing

In US this function is performed in part by “written description” requirement re the disclosure

One of the important features of the claims is to make it clear to other people what they are not entitled to do during the life of the patent. . .

Whitford J., American Cyanamid Co. v. Berk Pharmaceuticals, Ltd., [1976] R.P.C. 231, 234 (Ch. D.).

Specification

The disclosure describes the invention to the world

So that others will be able to practice the invention after the patent term expires

‘Quid pro quo’ for patent monopoly

[The disclosure] should be a complete description which will enable anybody, after the patent has expired, to put the invention into practice.

Whitford J., American Cyanamid Co. v. Berk Pharmaceuticals, Ltd., [1976] R.P.C. 231, 234 (Ch. D.).

Specification

The disclosure also reveals knowledge that may be useful even during the term

Invention is monopolized, knowledge is not

These monopolies are granted to encourage people to make inventions and to make the nature and working of them known. . .

Whitford J., American Cyanamid Co. v. Berk Pharmaceuticals, Ltd., [1976] R.P.C. 231, 234 (Ch. D.).

Claims

“Embodiment” – the specific machine or compound which the inventor has come up with.

Claims

See Chapter on “Sufficiency”

But the concept must be described in concrete terms

See Chapter on “Patentable Subject Matter”

But the court will not determine the inventive concept

That is left to the inventor in prosecuting the patent

Recall – the inventor (& her agent) writes her own patent

Claims

In an infringement action, the court compares the defendant’s product with the claims not with the plaintiff’s product

Validity, infringement, etc. are all determined with reference to the invention as claimed

“Men substitute words for reality and then fight over words”

Edwin Howard Armstrong, pioneer in radio, on his experiences in patent litigation, quoted by Hayhurst, in Patent Law in Canada

BVD v Can. Celanese

Issue: stiffening shirt collars

The prior art consisted of coating material with cellulose which left a stiff and glassy surface: e.g. the Van Heusen patent

BVD v Can. Celanese

The substance of the plaintiff’s Dreyfus invention was a method of making a flexible composite textile material by weaving cellulose into the fabric.

the very substance of Dreyfus' invention was. . .to make a composite textile material by taking a plurality of fabrics and uniting them by the use of a fabric composed of or containing yarns, filaments or fibres of a thermoplastic cellulose derivative and the application thereto of heat and pressure.

There is no doubt that this invention was new, useful and not obvious

BVD v Can. Celanese

Problem: the claim did not mention weaving

A process for the manufacture of composite sheet material which comprises treating a fabric containing a thermoplastic derivative of cellulose with a softening agent, associating it with another fabric, and uniting the fabrics by subjecting them to heat and pressure.

BVD v Can. Celanese

The patent was invalid because the scope of the invention as claimed was not novel

The prior art spread the cellulose over the fabric and then applied heat

Spreading falls within “associated”

The inventive concept was novel, but the invention as claimed was not

Note the consequence is not just that plaintiff loses infringement action, but patent for real invention is rendered worthless by overly broad claims

Claiming

Begin by claiming the broadest possible scope

Gradually narrow to the specific embodiment

Claims stand or fall independently

58 When, in any action or proceeding respecting a patent that contains two or more claims, one or more of those claims is or are held to be valid but another or others is or are held to be invalid or void, effect shall be given to the patent as if it contained only the valid claim or claims.

Construction

Principles

We must look to the whole of the disclosure and the claims to ascertain the nature of the invention and methods of its performance, (Noranda Mines Limited v. Minerals Separation North American Corporation [[1950] S.C.R. 36]), being neither benevolent nor harsh, but rather seeking a construction which is reasonable and fair to both patentee and public.

Per Dickson J. Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd. [1981] 1 S.C.R. 504

Principles

There is no occasion for being too astute or technical in the matter of objections to either title or specification for. . ."where the language of the specification, upon a reasonable view of it, can be so read as to afford the inventor protection for that which he has actually in good faith invented, the court, as a rule, will endeavour to give effect to that construction".

Per Dickson J. Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd. [1981] 1 S.C.R. 504

Principles

[T]he patent should be approached "with a judicial anxiety to support a really useful invention".

Per Dickson J. Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd. [1981] 1 S.C.R. 504

Specifics

The patent is addressed to persons skilled in the art and it is permissible to use expert evidence to explain the meaning of the terms used in a claim, though not to explain the meaning of the claim.

The disclosure may also be referred to in order to interpret the meaning of the terms used in the claim

The disclosure cannot be used to change the meaning of the claim

E.g. if more was disclosed than was claimed

True Monopoly v Copyright

American Cyanamid v. Berk Pharm.

The broad claim would enable the plaintiffs to stop any worker who dug up a soil sample anywhere and found in it a strain of Streptomyces aureofaciens and mutated that strain to produce a near 100 per cent tetracycline-producing strain, from using that strain . . .

American Cyanamid v. Berk Pharm.

So, on the broad claim, the plaintiffs could seek to stop other workers from reaping the benefit of what might be a long and possibly expensive programme of work and research, to which the plaintiffs, by their disclosure in this patent, could not conceivably have made any kind of contribution.

American Cyanamid v. Berk Pharm.

It is clear that as between two independent inventors the first to file receives the patent and can exclude the other

Is this case different from a standard case of independent invention?

Does Whitford J.’s objection apply in the standard case?

What is the response?

Presumption of Validity

Presumption of Validity

43(2) After the patent is issued, it shall, in the absence of any evidence to the contrary, be valid . . .

Is this a substantive burden?

That is, should the court defer to the examiner?

Or is it only necessary to raise some evidence?

Diversified v Tye-Sil

Presumption of validity

Thus the section does impose on the party attacking the patent for invalidity the onus of showing that it is invalid and, in my opinion, the onus so imposed is not an easy one to discharge.

Thorson P.

This is not the law

Presumption of Validity

The law is as follows:

"...the peculiar effect of a presumption 'of law' (that is the real presumption) is merely to invoke a rule of law compelling the jury to reach the conclusion in the absence of evidence to the contrary from the opponent. If the opponent does offer evidence to the contrary (sufficient to satisfy the judge's requirement of some evidence), the presumption disappears as a rule of law, and the case is in the jury's hands free from any rule."

Decary J.A. Diversified Products Corp. v. Tye-Sil Corp.

Presumption of Validity

Is Decary J.A. right as a matter of policy?

Registration System