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