Transcript Strict Liability & Vicarious Liability

Inherent Patentability
The Concept of Invention
• The law of patents seeks to protect
inventions.
• The question then is, what is an
invention?
Defining an Invention
• Webster’s Dictionary defines an invention as
“a device, contrivance, or process originated
after study and experiment.”
• However, S. 2 of the Canadian Patent Act
provides that an “invention” means “any new
and useful art, process, machine,
manufacture or composition of matter, or any
new and useful improvement in any art,
process, machine, manufacture of
composition of matter.”
Art. 27 of TRIPs
• “Subject to the provisions of paras 2
and 3, patents shall be available for
any inventions, whether products of
processes, in all fields of technology,
provided that they are NEW, involve
and INVENTIVE STEP and are
CAPABLE OF INDUSTRIAL
APPLICATION.”
s. 2 of the Canadian Patent Act
• From the definition provided by s. 2 of
the Patent Act, any given item of
technology can only be patentable if:
• A) it is of a kind which is inherently
patentable, and
• B) is distinct (to the limits required by
law) from the existing prior art in the
field in question.
Elements of a Patentable
Subject-Matter
• In terms of s. 2 of the Patent Act, a patent
may only be granted for an invention which
meets the following conditions:
• (a) the invention is NEW;
• (b) the invention involves an INVENTIVE
STEP;
• (c) the invention is USEFUL (works as
predicted by the inventor)
• Is not otherwise excluded by the STATUTORY
EXCEPTIONS to grant.
New (Novelty)
• This refers to the criterion of novelty. In
evaluating novelty, the court must first
• A) determine the state of the art as at
the date of invention;
• B) The date of invention (a question of
fact, to be established either verbally, in
writing, by carrying out a process or by
construction of the apparatus or
process in question).
Novelty
• Once the date of invention of the
alleged invention is determined, for the
court to make a legitimate assessment
of novelty, it must place itself as far as
possible in a position similar to that of
the person skilled in the art. It is the
knowledge notionally possessed by the
proverbial person skilled in the art at
the date of invention that proves
novelty.
Inventive Step (Ingenuity)
• The alleged invention must possess
sufficient skill and ingenuity.
• This is perhaps a subjective test, what
the Germans call “wertuitel”.
• To the extent that the skill and ingenuity
could not have been obvious to a
person skilled in the art at the date of
the invention, the test of ingenuity is
met.
Utility (Industrial Applicability)
• Usefulness of an invention in
contemporary patent law is restricted to
the issue of whether the invention
performs as described or predicted by
the inventor.
• It is irrelevant that the invention is
indeed a nuisance, immoral or burden
to society.
Statutorily Permissible
Categories
• The statutorily permissible categories
include:
• Art;
• Process;
• Machine;
• Manufacture;
• Composition of matter.
Patentable “Art”
• The word “art” in the Patent Act must be given
its general connotation of learning or
knowledge as commonly used in expressions
such as “state of the art” or “the prior art”; thus
an addition to the cumulative wisdom in a field
whereby a desired result is effected having
commercial value is a “new and useful” art.
• Query: Is the “vendible” test sound law? See
Lawson v. Comm’nr of Patents (champagneshaped subdivision of land
Patentable “Art”
• The decision of the court in Lawson v.
Comm’r of Patents strongly suggests
that for an art to be patentable “there
must be some manual, chemical, or
physical effect to transform or reduce
something to a different state or thing.
• See also Re Dixon Application
(instructional text for improving the
vocal chords).
Patentable Process
• Similarly, for a process to be
patentable, it must confer some
advantage which is material, in the
sense that the process belongs to a
useful art as distinct from a fine art. The
word “process” is also used
interchangeably with “method.”
Machine
• A machine is any instrument or
assemblage of parts for the
transmission of force, energy or power
in a predetermined manner. A machine
may be a simple device, for example, a
beer opener or a complex instrument
such as anti-ballistic missile system.
• Query: what is the difference between
combinations and aggregates?
Manufacture
• The word manufacture denotes a
mechanistic process or product. It
connotes the making of s/thing, even
though living organisms may be part of
the manufacturing process, e.g.,
brewing.
Composition of Matter
• In the light of Harvard Oncomouse case, a composition
of matter must be limited in some way so as not to
include a “machine” or “manufacture”, but to imply a
combination or mixture of various ingredients that does
not include higher life form whose genetic code has
been altered by scientific manipulation.
• Patents may be granted for the new use of an old
compound as there is inventive ingenuity in such
discovery. The Patent Act, however, requires that the
claims must be directed to such new use. In other
words, claims directed to the compound itself or to the
old use of the invention are not patentable. The new
patent does not grant any rights to the inventor over the
claims covered by old invention. See Polansky
Electronics v. AGT Ltd.
Patentable Inventions
• All new technological processes, machines, devices,
articles, products and compositions are, generally
speaking, of inherently patentable nature. (Reid on
Patents, 2006)
• Indeed, s. 27 (1) stipulates that the commissioner may
“grant a patent for an invention to the inventor or the
inventor’s legal representative if an application for the
patent in Canada is filed in ACCORDANCE with this
Act and ALL OTHER REQUIREMENTS for the
issuance of a patent under this Act are met.”
• There are thus certain categories of inventions that are
not patentable in Canada.
Excepted Categories
• Not all “inventions” are patentable.
• s. 27 (8) provides that “no patent shall be
granted for any mere scientific principle or
abstract theorem.”
• Query: Are computer programmes not
mathematical theorems? If so, why are they
patentable?
• The Patents Office is ill-disposed to inventions
that have an illicit object in view.
• Query: What of dual or multiple use
inventions?
Excepted Inventions
• In the same vein, no patent may issue
with claims directed to medical
treatment per se.
• Patents may however be issued to new
or improved apparatuses for surgical
treatment. See Visx Inc v. Nidek Co
Excepted Inventions
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The present list of exceptions is:
Methods of treatment of the human or animal body by surgery
or therapy or of diagnosis practised on the human or animal
body;
A discovery, scientific theory or mathematical method;
A literary, dramatic, musical or artistic work or any other
aesthetic creation whatsoever;
The presentation of information;
Any invention the exploitation of which would be generally
expected to encourage offensive, immoral, or anti-social
behaviour;
Any variety of animal or plant or any essentially biological
process for the production of animal or plants, not being a
microbiological process or the product of such a process.
A scheme or method for performing a mental act.
Summary
• As the majority of the SC held in
Harvard Oncomouse case, “while the
definition of “invention” is broad,
Parliament did not define invention as
“anything new and useful made by
man…just because all inventions are
unanticipated and unforeseeable, it
does not necessarily follow that they
are all patentable.”
Summary
• The combined effect of all the provisions
stated above is that an invention is not
necessarily a juridical fact or a legal fact
unless it meets the requirements of the Patent
Act and falls within the scope of patentable
subject matter.
• An innovation or technological improvisation
may thus meet all the technical requirements
for patentability and yet fail the test of
patentability on the ground that it is not of the
proper patentable subject matter.