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Intellectual Property:
Patenting Procedure and Requirements for Patentability
T.T. Lang
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
What Is a Patent?
What is an invention? New or useful art, process, machine,
manufacture or composition of matter
Improvements
Defined in s.2 of the patent act
Patents are granted for inventions
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
2. Patenting strategy Filing programPublicationExamination
3. Patent prosecutionAmendments
4. Issuance
5. Commercialization
6. Infringement/validity
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 EntityBarton 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 Pre-issuance
Protest(Rule 10 & s.34.1)
Post-issuance
Re-examination(s.48.1)
US – USPTO 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
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