Transcript Document
Intellectual
Property:
Patenting Procedure and
Requirements for Patentability
T.T. Lang
What Is a Patent?
What is a patent?
A patent is a government granted monopoly
Exclusive right to make, use or sell an
invention
The right to exclude others from making,
using or selling an invention
Patents are granted for
inventions
What is an invention?
New or useful art, process, machine,
manufacture or composition of matter
Improvements
Defined in s.2 of the patent act
Patent Is a Business Asset
Value of a patent is determined by the
subject matter
Some patents are very valuable and others
are less so
Value may also be determined by
enforceability
Patent Act – Federal
Legislation
Patents are entirely a creature of statute
No common law basis, case law interprets
and applies provisions of the Patent Act
Patent Rules govern procedural aspects of
applying for a patent
Section 27 – Patent Act
(1) authority to grant patents to inventors
(3) defines what is necessary by way of
description
(4) requires claims that are distinct and
explicit
(8) provides an exclusion for mere
scientific principle or abstract theorem
Parts of a Patent
Claims
Serve to define the invention to be protected
Description and drawings
Serve to teach
Addressed to a person skilled in the art
Disclose the best mode – machine
As contemplated by the inventor
Consolboard Inc. v. Macmillan Bloedel
(Sask.) Ltd.
(1978), 63 CPR (2d)
Enabling disclosure is the heart of the
patent system
Patent is entirely directed at those skilled
in the art
Claim construction
In FCT, for infringement or validity opinion
Done from point of view of person skilled in the
art, at the date of patent publication [whirlpool
and FreeWorld trust cases]
Utility is a very low threshold and does
not need to be explicitly stated
Requirements for
Patentability
Must be an “invention” as defined in the
Act
Subject matter
Must be new (“novel”, “unanticipated”)
Must be non-obvious (“inventive”)
Must have utility
Applicant must be the inventor, or have derived rights
from the inventor
Naming proper inventor (Apotex inc. V. Wellcome
foundation (1998) 79 CPR (3d) 193) & (Q’max case)
What Is Patentable Subject
Matter?
Living Matter:
Grant to lower life forms:
Diamond v. Chakrabarty (US)
Abitibi Co.
Not higher life forms:
Harvard Mouse – Patent Appeal Board
Harvard Mouse – Federal Court
Harvard Mouse – Supreme Court of Canada
Harvard Mouse Patent
What Can’t Be Patented?
Higher life forms
Methods of medical treatment
Scientific principles or abstract theorems
(Section 27(8))
Software
Business methods
Professional methods – interpretive or
judgmental reasoning
Methods of Medical
Treatment
Tennesee Eastman v. Commissioner
A chemical used as an adhesive was known
The new discovery was that it bonded human
tissue – used in place of stitches to close
wounds
SCC held that methods of medical surgical
treatment are not inventions
EPO has a similar ban
USPTO allows such claims
What Is Patentable Subject
Matter?
Surgical treatment
No
Diagnostic methods
Yes – not a method of
medical treatment
Preventative
medicine
Questionable – no
case law
Contraceptive
methods
Yes – (re. General
Hospital)
Medicines
Yes
Medical devices
Yes
In the Claims
A method for treating Disease X,
comprising administering an effective
amount of compound Y to a patient
No
Use of compound Y for treating cancer disease
Use of compound Y for preparation of a
medicament for treating cancer disease
Use of compound Y for the amelioration of the
effects of disease X
Use of compound Y for therapeutic
treatment
No
Software
Software is not patentable as an article
Software is patentable as a method,
provided that the method involves more
than just a calculation (Schlumberger)
May be considered a mere mathematical
algorithm
Hardware (system) which relies on
software is patentable (re. Westinghouse)
Business Method
Methods of doing business
Not patentable in Canada (lack of utility)
Few Examples: Patentable?
A new way to wager in a poker game
No, lack utility (progressive games decision)
A wallpaper pattern that is a nice design
No, lack utility, industrial design subject
matter
A wallpaper pattern of proven therapeutic
value
Yes, has utility
A method of anger management training
No, business method, requires professional
skill
A heart valve for implantation in a human
heart
Yes, not a medical treatment, medical device
A new crack cocaine pipe
Yes, even illicit subject matter is patentable
IP Trail: Patenting an
Invention
1. Innovation/
development
6. Infringement/validity
2. Patenting strategy
Filing program
Publication
Examination
5. Commercialization
3. Patent prosecution
Amendments
4. Issuance
What Are the Costs?
Filing fee - $300
Examination fee - $400
Final fee - $300
Maintenance fee – payable commencing 2nd
anniversary of filing date and annually thereafter
Different from US – due 3 times, larger amount
Reinstatement fee - $200
Maintenance Fee
Is a government fee
Must be paid at the CIPO
For both pending applications and issued
patents to keep them in good standing
Applicant may claim “small entity” status
Pay half of the fees of a “large entity”
In Canada, “small entity” refers to an entity that
employs 50 or fewer employees or a university
In the US, “small entity” refers to a company
with 500 or fewer employees, a non-profit
organization or an independent inventor
Claiming Small Entity
Barton No-Till and Flexi-Coil v. Dutch Industries
Small entity status:
Is critical to determine whether applicable to
applicant;
Whether there is a likelihood that the “entity”
status may change
Will not be questioned by CIPO for
correctness
Patent rights may be entirely lost through
improper assertion of small entity status
Does not apply to entity which
has transferred or licensed,
or is obligated to transfer or license, any right to
the invention to
a third party which does not qualify as a small entity
CIPO has no discretion to accept top-up
payments to correct underpaid patent
maintenance fees from small entity to large
entity
CIPY currently does not accept corrective
payments
Grant of Patents
s.42 – exclusive rights to make, construct, use or
sell the invention
s.44 – 20 year term
From the filing date (Canadian filing)
From the filing date, or earliest priority date, if a
request made claiming priority of earlier filed
application (US filing)
s.43 – presumption of validity
s.46 – subject to payment of maintenance fees
Amendments to Patents
During prosecution/final fee not paid
s.38.2(2) must be satisfied
Matter that may be reasonably inferred from the
specification/drawings may be entered
No new subject matter may be added
Notice of allowance
In addition to s.38.2(2)
No amendments that would necessitate a further search by
examiner or change part of invention
Correction of clerical error
Post-Issuance Amendments
Disclaimer – amend
a patent to claim less
than what was
claimed in the
original patent
For all or part of a claim
Anytime during life of
patent
Can narrow, but not
broaden claim
Prescribed fee
Re-examination
Any person can request
During life of patent
On basis of prior art
only
Cannot broaden claims
No change to disclosure
Open to public
inspection
Re-issue
Defective patent
may be corrected
Can broaden or
narrow claim
Must be made
within 4 years of
issuance of
original patent
Section 8 clerical
error
Anytime
Prescribed fee
Opposition of a Patent
Before Patent Office
Canada – CIPO
US – USPTO
Pre-issuance
Protest
(Rule 10 & s.34.1)
Post-issuance
Re-examination
(s.48.1)
Pre-issuance
Interference
proceedings
Post-issuance
Re-examination
EPO
Pre-issuance
Between publication
and issuance
Can present written
observations on
patentability
To influence refusal of
patent
No right to be heard
or be informed of
examiner’s reaction
Post-issuance
Within 9 months
Any person may
commence
opposition
proceeding