Transcript Novelty, Obviousness and Utility

Novelty, Obviousness
and Utility
Carol Hitchman
March 1, 2005
Patent Act provisions
 Old Act – sections 2, 27 and 61
(previously section 28 and 63)
 New Act – sections 2, 28.2 and 28.3
Old Patent Act
 Anticipation by (a) prior knowledge or use (subject to
section 61) before the date of invention;
 (b) patent or printed prior publication
more than 2 years before Canadian filing
date; or
 (c) public use or sale in Canada 2 years
prior to Canadian filing date
Old Patent Act
 No statutory provision for obviousness
 Courts refer to “invention” in section 2 as
requiring that the subject matter not be
obvious
 Obviousness determined at the date of
invention, which has to be proven by the
patentee if earlier than the priority/filing
date
New Patent Act
 Invention must not be disclosed so that
the subject matter of the patent became
available to the public in Canada or
elsewhere
 (a) by applicant more than one year
before the Canadian filing date;
 (b) by anyone other than the applicant
before the claim date (priority date or
Canadian filing date, whichever is
earlier);
New Patent Act
 (c) by someone other than the applicant
in a patent application filed in Canada
with a filing date before the claim date;
or
 (d) by someone other than the applicant
in a patent application filed in Canada
with a filing date in Canada after the
claim date, but with a priority date before
the claim date (plus a few other criteria)
New Patent Act
 Obviousness is provided for – invention must
contain subject matter that would not have been
obvious on the claim date to a person skilled in
the art or science having regard to:
 (a) information disclosed more than one year
before the Canadian filing date by the Applicant;
or
 (b) information disclosed by someone other
than the applicant before the claim date and in
such a manner that the information became
available to the public in Canada or elsewhere
Novelty
 All cases in case book are under the Old
Patent Act
 Leading case under the New Patent Act
is Baker Petrolite Corp. v. Canwell
Enviro-Industries Ltd. [2003] 1 F.C. 49
(F.C.A.)
Difference between
anticipation and obviousness
 “..obviousness is an attack on a patent based
on its lack of inventiveness. The attacker says,
in effect, “Any fool could have done that.”
Anticipation, or lack of novelty, on the other
hand, in effect assumes that there has been an
invention but asserts that it has been disclosed
to the public prior to the application for the
patent. The charge is: “Your invention, though
clever, was already known”.
 Beloit Canada Ltd. v. Valmet OY, p. 293
Novelty: Beloit
 Anticipation must be found in a specific
patent or other published document; it is
not enough to pick bits and pieces from
a variety of publications and to meld
them together so as to come up with the
claimed invention: p. 297
Novelty: Beloit
 One must, in effect, be able to look at a prior,
single publication and find in it all the
information which, for practical purposes, is
needed to produce the claimed invention
without the exercise of any inventive skill. The
prior publication must contain so clear a
direction that a skilled person reading and
following it would in every case and without
possibility of error be led to the claimed
invention: p. 297
Novelty: Voith (Beloit, part 2)
 The Schiel paper is properly led in
evidence and accepted as a printed
publication
 However, the publication must stand on
its own – it cannot be extended by the
introduction of parol evidence: p. 338340
Reeves Brothers: the tests
 8 tests for anticipation are set out in
page 157 – in essence a distillation of
the case law
 E.g. the prior art must give an exact prior
description, give clear directions which
will inevitably result in something within
the claims...
Reeves revised: Diversified
Products case
 FCA makes it clear that the tests set out
in Reeves are not cumulative – p. 361
 An impractical and inoperable device
cannot be an anticipation – p. 363-364
Xerox v. IBM
 Recites case law on anticipation – p. 46-48
 - paper anticipation – device never put into
production looked on with “disfavour” – p. 48
 “A signpost, however clear, upon the road to the
patentee’s invention will not suffice. The prior
inventor must be clearly shown to have planted
his flag at the precise destination before the
patentee” – p. 59, quoting from the General Tire
case
Baker Petrolite case
 Summarizes the new law at paras. 42-43
 1. Sale to the public or public use is
insufficient to prove anticipation.
Disclosure of the invention is required to
constitute anticipation.
 2. A prior sale must amount to an
enabling disclosure, i.e. it must be such
as to enable the public to make or obtain
the invention.
Baker Petrolite
 3.Prior sale or use of a chemical product
will constitute an enabling disclosure to
the public if its composition can be
discovered through analysis of the
product.
 4. The analysis must be able to be
performed by a person skilled in the art
in accordance with known analytic
techniques at the relevant time.
Baker Petrolite
 5. An invention becomes available to the
public if a product containing the
invention is sold to any member of the
public who is free to use it as she or he
pleases.
 6. It is not necessary to demonstrate that
a member of the public actually analyzed
the product that was sold.
Baker Petrolite
 7. The amount of time and work involved in
conducting the analysis is not determinative of
whether a skilled person could discover the
invention. The relevant consideration is only
whether inventive skill was required.
 8.It is not necessary that the product that is
analyzed be capable of exact reproduction. It is
the subject matter of the patent claims that
must be disclosed through the analysis.
Obviousness (Beloit, p. 294)
 The test for obviousness is not to ask what
competent inventors did or would have done to
solve the problem. Inventors are by definition
inventive. 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….
Beloit continued
 The question to be asked is whether this
mythical creature (the man on the
Clapham omnibus of patent law) would,
in the light of the state of the art and of
common general knowledge as at the
claimed date of the invention, have come
directly and without difficulty to the
solution taught by the patent. It is a very
difficult test to satisfy.
Beloit – p. 295
 Everything is obvious after the fact
Expert witnesses who say that they
could have done that will have to answer
“Why didn’t you”
General Tire v. Firestone
 Skilled person is assumed to have the
“common general knowledge”
 Common general knowledge is different
from public knowledge – it is what would
in fact be known by an appropriately
skilled addressee of the patent – p.482
P&G (the diaper case)
 The skilled worker can be a composite
being or a team combining knowledge of
more than one relevant art – p. 12
 Skilled worker has the common general
knowledge as well as information
available to him (her) in publications and
patents – but must be evidence that the
prior art would be available through a
diligent search – p. 47
Farbwerke Hoechst
 Inventive ingenuity – standard is not that high –
practically all research work is done by looking
in directions where the state of the art points –
p. 155
 Cripps Question – p. 156 – Was it obvious to
any skilled chemist in the state of the chemical
knowledge existing at the date of the patent that
he could [recite claimed invention here]. If the
answer is ‘No’ the patent is valid, if ‘Yes’ the
patent is invalid.
Worth a Try?
 Farbwerke case refers to the “worth a try” test –
not enough for obviousness – p. 155
 Pfizer Canada Inc. v. Apotex Inc. [2002] F.C.J.
No. 1540 – rephrases this saying that no
research is to be conducted but the skilled
person is to keep up with advances in the field
and if taught by the literature to conduct
investigations – so long as there is no “undue
experimentation”, the invention will be obvious.
Windsurfer v. Windsurfer
 UK CA and FCA come to different
conclusions on obviousness of the
windsurfer
 Not necessary to show that the skilled
worker would in fact be interested in the
prior art or would recognize the
commercial potential of the prior art: UK,
p. 74
Windsurfer v. Windsurfer
 UK court finds that the inventive concept is a
“free-sail” concept and that was disclosed in the
Darby prior art – p. 74
 FCA finds that the inventive concept was the
ability of the user to grasp either side of the sail
(claim 5) – since Darby did not disclose this, the
invention was not obvious – p. 260
 In Canada, Darby gave evidence that the
windsurfer design had not occurred to him.
Utility – Do the wheels go
round?
 Generally speaking, not a very high bar
– in prosecution, the patent office does
not require any real proof of the utility
asserted in the patent; and often the
utility asserted is so “soft” that it would
be impossible to measure – e.g. crystal
forms with “better drying and filtration
characteristics” than the known crystal
form
X v. Commissioner of Patents
 The Patent office refused a patent
application for a death ray.
 The applicant (and no one else) had
constructed the device.
 Invention founded on a prediction of
utility – patent office and Appeal Board
found that the invention would not work.
 Court deferred to the expertise of the
Board.
Minerals Separation
 Claim 9 broad enough to include things
that would not work (cellulose xanthates)
– p. 144
 Patentee can define terms in the
specification – p. 144
 Not enough to say a person skilled in the
art would not use cellulose xanthates to
try and narrow the scope of the claim –
p. 148
Burton Parsons
 Case generally cited for the proposition
that patents (both the disclosure and the
claims) are addressed to persons skilled
in the art – p. 560
 The claim covered a cream applied to
the skin to which electrodes are applied
(for example in electrocardiogram).
 The claim covered highly ionizable salts
– however some were not compatible
with the skin.
Burton Parsons cont’d
 S.C.C. finds that the toxic/incompatible
substances will work – i.e. not a case of inutility
as in the Minerals Separation case; and that
persons skilled in the art would know not to use
the ones that are incompatible with the skin – p.
561-562
 Distinguished Minerals Separation saying that
the inutility of the cellulose xanthate was not
known in the prior art; however, the toxicity of
the highly ionizable salts was known