Transcript Novelty
Novelty
Statutory Basis
"invention" means any new and useful art. . .
But the novelty requirement is set out in detail in
s28.1/2
An invention which is not new is “anticipated”
Rationale
The novelty requirement is a minimal standard
for ensuring that the invention is a contribution
to knowledge
At one time patents were granted individually on
application to the king
This system was abused
Eg A monopoly in playing cards granted to a No
monopolies for
Technical
When must an invention be new?
Where must an invention be new?
First to file v first to invent
Anywhere in the world
What does it mean for an invention to be new?
How similar does must the prior art be in order to
anticipate the invention?
Where is the borderline with non-obviousness?
First-to-File/Invent
First-to-file
When two patent applications are filed for the same
invention, the first person to file is entitled to the patent
All of the world except the US
US will be changing soon
First-to-invent
When two patent applications are filed for the same
invention, the person who proves that they were the first
to invent is entitled to the patent
This is established in an “interference” proceeding
First-to-File/Invent
The disadvantage of the first-to-invent standard
is that it leads to litigation
Evidence of invention must be kept in case of
interference proceedings
eg Engineering notebooks
Must be kept for long periods as interference can be
declared long after issue
This is true for anyone who wants to apply for a
US patent – not just US inventors
Qualified Absolute Novelty
Absolute Novelty
An invention is new if it is not part of the
state of the art / prior art as of the priority
date
What is the priority date?
What is the state of the art?
Qualified
One year grace period for disclosure by inventor
Filing Date v Claim Date
Claim date v filing date
Filing date is the date of filing of the Canadian
application
Claim date is the date from which the Canadian
application can claim priority
Often referred to as “priority date”
Claim / Priority Date
When is the “claim date”?
For patent applications filed only in Canada, it is
simply the filing date: s 28.1(1)
However, the claim date is adjusted to allow for
the international patent filing system
Claim date is filing date of international filing under
PCT or other applicable treaty
So long as filing in Canada follows within one year
State of the Art
State of the art is all information
Made available to the public
By use or written or oral description
Anywhere in the world
As of the priority date
State of the Art
Plus all information
In Canadian patent applications with an
earlier priority date, including convention
filings
It is irrelevant whether the prior application has been
published – it is considered as part of the state of the
art even though it is secret
However, unpublished foreign applications are not
part of the state of the art
State of the Art
Result: First to file wins
Prior Public Knowledge
S.28.2 (1)The subject-matter defined by a claim in
an application for a patent in Canada (the "pending
application") must not have been disclosed. . .
(b) before the claim date by a person not
mentioned in paragraph (a) in such a manner that
the subject-matter became available to the public
in Canada or elsewhere;
Not previously disclosed to the public anywhere in
the world
Prior Canadian Application
Or in a patent application . . .
(c) in an application for a patent that is filed
in Canada by a person other than the
applicant, and has a filing date that is before
the claim date; or
Prior filing in Canada
Prior Convention Application
(d) in an application (the "co-pending
application") for a patent that is filed in Canada
by a person other than the applicant and has a
filing date that is on or after the claim date if
[applicant has previously filed an application in a
convention country]
[prior to the claim date]
[and claimed convention priority]
Qualified
Grace period after disclosure by inventor
(a) more than one year before the filing date by
the applicant, or by a person who obtained
knowledge, directly or indirectly, from the
applicant, in such a manner that the subjectmatter became available to the public in Canada
or elsewhere;
Qualified
Note that grace period is not adjusted for
international filing
Inventor has one year from disclosure to file in
Canada
Many systems do not have a grace period
Do not count on it
Old Act – Pre-1993
First-to-invent
Distinction between paper disclosure and use
Prior use outside Canada irrelevant
Two year grace period
For paper disclosure anywhere in the world
For prior use in Canada
Ie. First-to-invent could obtain patent so long as
filed within 2 years of disclosure by anyone
What must be disclosed
What must be disclosed
Prior use , prior sale, prior publication, all had
separate statutory bases at one time
Now simply “disclosed in such a manner that
the subject matter became available to the
public”
Old Law
Prior to 1996 distinguish
Paper anticipation
Prior use
Old Law
Paper Anticipation
The prior disclosure is only by means of a
publication, ie the thing itself was never produced
The disclosure in the publication must be equal
to the patent disclosure
Old Law
Prior Use
Infringement after = anticipation prior
Where the thing itself is disclosed the rule is:
Anything which would have infringed will be
sufficient to anticipate
It does not matter if it would have been difficult
to reverse engineer to discover the invention, or
that it never in fact was reverse engineered
Current Law:
Enabling Disclosure
Enabling Disclosure
Disclose
In order to anticipate invention, prior art must:
AND
Enable
Disclosure
Must disclose the very thing that is claimed
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.
Sachs LJ, General Tire v Firestone Tire
Disclosure
The requirements that must be met before an
invention should be held to have been
anticipated by a prior publication must, for the
purposes of practical utility, be equal to that
given by the subsequent patent. . . . It is not
enough to prove that an apparatus described in
it could have been used to produce a particular
result. There must be clear directions so to use
it.
Thorson P. The King v. Uhlemann Optical Co.
Disclosure
Nor is it sufficient to show that it contained
suggestions which, taken with other suggestions,
might be shown to foreshadow the invention or
important steps in it. There must be more than
the nucleus of an idea which, in the light of
subsequent experience, could be looked on as
being the beginning of a new development.
Thorson P. The King v. Uhlemann Optical Co.
Enablement
Must provide sufficient information for a person
skilled in the art to be able to arrive at the
invention that has been disclosed
Enablement means that the ordinary skilled
person would have been able to perform the
invention which satisfies the requirement of
disclosure.
Synthon
Enablement
Some trial and error is permitted at the
enablement stage
Contrast disclosure which requires the flag to be
planted at the precise location
E.g. Invention claims chemical compound
which was previously sold in the open market
Disclosure is satisfied
Enablement is satisfied IF skilled chemist can
‘reverse engineer’ the compound
Enablement
The prior patent must provide enough
information to allow the subsequently claimed
invention to be performed without undue
burden. . . . If inventive steps are required, the
prior art will not be considered as enabling.
However, routine trials are acceptable and would
not be considered undue burden
Sanofi
Enabling Disclosure
No longer true that “Infringement after =
anticipation prior”
If the use did not enable a person skilled in the art to
perform
Infringement after
But not anticipating before
Rationale
An
invention is a piece of
information. Making matter available to the
public within the meaning of section 2(2)
therefore requires the communication of
information. The use of a product makes the
invention part of the state of the art only so far
as that use makes available the necessary
information.
Merrell Dow v Norton HL, per Lord Hoffmann
Rationale
Old approach viewed an invention as a thing
New approach views invention as information
Difference is important only when disclosure of
the thing is not equivalent to disclosure of the
information
Example
Same chemical as claimed in patent was sold on
the open market and
(1) Formula / method of manufacture is not
publically known and cannot be determined from
the chemical itself
Not enabling
(2) Formula can be determined from compound
itself by skilled chemist using standard techniques
Enabling
Merrell Dow v Norton
Merrell Dow held expired patent on terfenadine.
Then discovered active metabolite and patented
that.
Anti-histamine
Active metabolite is inevitably made when
terfenadine is swallowed.
Norton sells terfenadine.
Is patent on active metabolite is invalid as
anticipated by prior use or terfenadine patent?
Merrell Dow v Norton
No anticipation by use
When terfenadine swallowed by end-consumers.
Who then make active metabolite
Not anticipated on this basis:
Use disclosed “no information to the public about
the nature of the product or how to make it.”
Recall: “the product” = active metabolite
Merrell Dow v Norton
Anticipation by terfenadine patent
Disclosed = Yes
“In this case, knowledge of the acid metabolite was
in my view made available to the public by the
terfenadine specification under the description "a
part of the chemical reaction in the human body
produced by the ingestion of terfenadine and having
an anti-histamine effect".”
Merrell Dow v Norton
Anticipation by terfenadine patent
Enabled = Yes
Anyone would know who to make the active
metabolite – by swallowing terfenadine
(Note: for the purposes of the litigation, patent was
construed to claim only active metabolite in the human
body)
Apotex v Sanofi-Synthelabo
Selection patent = ‘777 clopidogrel bisulfate
Genus = ‘875 – large class of compounds,
encompassing clopidogrel bisulfate
Claim specifies a class of free bases, including
clopidogrel, and pharmaceutically acceptable salts,
which include the bisulfate: total # in class =
approx. 250,000
Apotex v Sanofi-Synthelabo
Sanofi holds
Enabling disclosure approach to anticipation from
Synthon is correct
Selection patents are valid in principle
Apotex v Sanofi-Synthelabo
On the facts – No disclosure in prior art
“If in reading the genus patent the special
advantages of the invention of the selection
patent are not disclosed, the genus patent
does not anticipate the selection patent.”
Apotex v Sanofi-Synthelabo
On the facts – No enablement in prior art (obiter)
For anticipation, the genus patent must provide
enough information so as to allow the selected
invention to be performed without undue burden.
In this case, the applications judge concluded that
the ‘875 patent did not specifically lead to the
claimed invention. He noted, on the record before
him, that if one were to follow the teachings of the
prior art, one would obtain racemates, never their
isomers.
Apotex v Sanofi-Synthelabo
Discovering the special properties of the enantiomer of
clopidogrel bisulfate was undue, whether or not it was
inventive (non-obvious)
In determining whether the enablement step for
proving anticipation has been met, it is important to
note that routine trials are acceptable but inventive
steps are not permitted.
Court ultimately concluded that it was in fact
non-obvious
Available to the “public”
Public
The inventor can disclose to others so long as
the disclosure is confidential
Eg to raise money
Saunders Airglide
Grace period does not run because there is no
disclosure in the relevant sense
Public
Disclosure is made to the public so long as the
use is not secret
There is no requirement that the use be actively
publicized
Windsurfer cases
Public
Disclosure to any public anywhere in the world
“or elsewhere” s28.2
E.g. use in India anticipates invention in US
(Turmeric)
Windsurfer cases
Why is isolated prior use a bar to patentability?