International Patent Matters from a Canadian Patent Lawyer’s Perspective

Career Choices for Engineers: Lawyer or Patent Agent

As a lawyer with an engineering degree was also certified as a registered Canadian patent agent, I have on occasion been approached by persons to ask whether they should pursue a career in law, patent agency or both. These are my thoughts on such issue. I went on from engineering to take law simply to broaden my education. I thought I had a narrow education as an engineer. I didn’t intend, necessarily, to finish law school. But I did. And then I had a narrow education in a different direction. Having finished law school it is almost inevitable that you will go on for the further year and a half to qualify as an actual lawyer.

The only problem with going to law school is it takes another four to five years out of your life. And you won’t get rich with your first position. Going to law school is worth it if you enjoy going to law school. I went to law school because I thought it would be worth one year to find out. If you pass your first year at law school when so many others fail, it’s difficult quit.

Engineers have the choice of continuing on in university to qualify as a lawyer. Or they can, directly on graduating, start their training to become a patent agent. What is the difference between these two careers?

Most lawyers do not appear in courtrooms. Most lawyers do “solicitors work”. This generally focuses on buying and selling real estate, doing wills, administering estates, preparing contracts, separation and partnership agreements and generally advising people on the disputes without necessarily going to court. Probably 1 in 10 lawyers actually goes to court, and the experience is very stressful. You have to have the mentality of a football line-backer to enjoy litigation.

Many lawyers do not make much more than $50,000 or $60,000 a year, even after 5 years from when they qualify as a lawyer. Some lawyers make $100,000 to $200,000; and a few make more than that each year. On average, lawyers make more than engineers. The engineers who make as much money as lawyers are those who become managers and sometimes business owners.

Lawyering in the field of disputes is about dealing with people. You have to interview people and you have to explain things to them. It is your responsibility to give your clients good advice. To do that, you must understand the law, and you must figure out the facts, even if your clients are not very articulate in providing clear and accurate explanations. Furthermore, your clients will often have a very slanted view of things. The difficult moment is when you have to tell them the truth: that they’re not in the right and that they will probably have to settle for less than what they want or expect. Some lawyers find this aspect of practicing very stressful.

Engineering is about dealing with things. You have to understand what the client wants you to do and you have to do it right. While you’re less burdened with communicating with people as an engineer, an ability to communicate will greatly enhance your success in the profession of engineering.

There is considerable status in being a lawyer. In some cases, it’s not truly deserved. But, to their credit, lawyers are trained in law school to see-through issues until they have a clear understanding of the situation. A good lawyer will tell their client that they are in the wrong. However, people don’t like to receive bad news. This may be part of the reason why lawyers do not always have a good reputation. The other reason why lawyers are not appreciated is that they often represent the rights of people who are in the wrong. This is justified by society because you never know who’s in the wrong until a trial decision reaches its conclusion. But trials are iffy things and sometimes do not produce justice. Hence the lawyers who win on behalf of bad clients are both admired and despised

Another reason why lawyers have a dubious reputation is they charge a great deal of money. Nevertheless, if as a lawyer, you commit yourself throughout your career to behaving graciously and ethically on every occasion, generally you will be admired within the profession and even by your many clients, both those for whom you win cases and even by those who lose cases that they have placed with you.

The drafting of a patent specification is quite a delicate matter. While it is clearly an exaggeration in some respects, a comparison with brain surgery is not out of the question. When a patent specification is properly drafted, everything has been done correctly. There are very few properly drafted patent specifications. The Wright Brothers patent, which they wrote originally themselves, had many deficiencies. If litigated today it would not stand-up the way it did in 1910.

As a patent agent, your relationship with your client is critical. You will have to make requests of the client that the client does not want to hear. You will have to tell the client that further research is required, research that they will not want to carryout. You’ll have to warn them that their patent will suffer if they don’t take your advice, but if they don’t take your advice, you have to proceed with what you have in hand. The work is intellectually challenging and quite satisfying if done properly.

What has just been described is the real work of a patent agent. However, in Canada over 90% of Canadian patent filings originate from foreigners. In these circumstances, an employed patent agent may often find himself assigned to the role of operating a post office. Applications come in from abroad fully prepared. After a cursory review, they are filed at the patent office. The real work for such a patent agent only arises three or four years later when the examiner objects to aspects of the application, and even then, most foreign patent attorneys generally take principal responsibility for preparing the Response.

Although, technically, patent agents are only licensed to draft patent applications, many, indeed most of them will provide advice to clients in situations where a patent is thought to be infringed. This can include both representing the owner of a patent and representing the person accused of infringement. These types of services are very lawyer-like in their nature, but a patent agent would never appear in court, at least in Canada, on behalf of a litigant. The exercise of advising on an infringement situation includes either challenging or defending the sufficiency of a patent specification. The work is intellectually challenging and tends the most engrossing. It helps greatly to be an engineer.

If you are a lawyer, an engineer, and a patent agent (lawyers cannot practice as patent agents without qualifying before the Patent Office), this is a very good combination. But if you already have an engineering degree, I would only recommend going to law school if you enjoy the experience of being at law school. Three or four years doesn’t sound like long when you’re young, but when you realize that a person’s working life is not likely to extend much beyond the 40 years between 20 and 60, spending three more years in law school and several more years, possibly five or more, getting up-to-speed, becomes a significant proportion. You’d better enjoy law school and practicing law if you wish to place a law degree on top of your engineering degree.

Whatever a person chooses to do when they start out in the career, it’s critically important that we enjoy the work that they select. A life without work you love is hardly worth living.

Ottawa, Canada
February 15, 2008

Posted in Uncategorized, Personal March 27th, 2008 by admin | No comments

The Torture of Explaining to Clients - KSR

The Torture of Explaining to Clients
Inventive Step Requirements for the Granting of Patents After KSR

Every attorney practicing patent law has experienced the difficulty of explaining to clients the principles of patent law. This exercise is particularly challenging when the client, subjectively, has made a substantial advance which the attorney feels is not likely to support the grant of a patent.

Typically, when interviewed, the inventor will describe a number of significant features respecting his/her invention which he/she has developed and believes to be novel. Since these features apparently have not been incorporated into a marketable cartridge made by others, the inventor has the impression that a patent should be obtainable on such a device. As all attorneys know, unfortunately, that is not the full story. Even if the inventor has subjectively made an invention, it is necessary to explain to the inventor the distinctions of patent law and the reasons why a patent may not necessarily be granted. What follows is yet another attempt to present this explanation.

When filing for a patent, is it important to appreciate that there has to be a single focal feature in every patent which represents an advance in the field to which the invention relates. There can be other features as well, but these other features have to be characterized as embellishments. The focal feature appears in Claim 1. Embellishments appear in dependent claims. If there is more than one valuable feature, then there has to be a patent application, eventually, filed for each principal feature. Lastly, this focal feature has to be not only novel but also unobvious in view of all the prior art.

It is the job of the patent agent/attorney to review the advances that have been made by the inventor and to subtract from those advances features which are either already known in the prior art (even if not previously known to the inventor), and those features which are “obvious” in view of the prior art. This last criterion is an issue which bedevils patent law everywhere, with no prospect of it ever disappearing.

It is not every innovation that will support the grant of a patent. A patent may only be granted for a feature that would not normally be perceived as an available option by an ordinary, skilled workman who is knowledgeable in the art. In May of 2007, the Supreme Court of the United States added the stipulation that the ordinary, skilled workman must be assumed to have ordinary standards of creativity. Therefore, to be patentable, a feature must have an aspect of creativity which is beyond what would be expected of an ordinary, skilled workman. Furthermore, this workman, who is assumed to be free of exceptional imagination, is nevertheless assumed to be fully aware of all of the prior art. This has been summarized in the past as a: “Who would have thought….?” test. Unfortunately, this is the law in the United States, and substantially, this is the law around the world.

Recently, a US law firm, Foley Lardner LLP, has posted on the Internet a KSR Overview that extracts five further principles from the KSR case regarding the obviousness inquiry:

(i) Flexibility: The obviousness inquiry is an “expansive and flexible approach”;
(ii) Ordinary Creativity: “A person of ordinary skill is also a person of ordinary creativity, not an automaton,” who will not limit herself to art with the same problem, nor can she be confined to the problem patentee was trying to solve;
(iii) Obvious to Try: “[T]hat a combination was obvious to try might show that it was obvious under § 103”;
(iv) Predictability: The patent must be more than “the predictable use of prior art elements according to their established functions”; and
(v) Design Need/Market Pressure: Products driven by design needs or market pressures — when there are finite number of identified predictable solutions — are likely the result from ordinary skill, not innovation. In applying KSR, subsequent courts have quoted these tenets in their findings.

As can be seen, the standards for obtaining a patent in the United States are substantial. The full impact of this decision is not yet fully appreciated. Nevertheless, the consequence is that, to obtain a patent in the United States, an advance must be identified that will pass the: “Who would have thought….?” test without being defeated by one of the above recited principles.

This US Supreme Court decision is not precisely the law in Canada, nor is it the law in Europe and elsewhere. Standards in other jurisdictions are less clear and in many cases more lax. Nevertheless, the US - KSR decision represents the trend for the future.

The consequence is that inventors have to reconcile themselves to this reality: it is not every “invention” that will, in the end, eventually support the grant of a patent.

Ottawa, Canada
January 17th, 2008

Posted in Uncategorized, Patents, Patent Prosecution, US Law, Articles, For Inventors, For Attorneys January 17th, 2008 by admin | No comments

US Provisionals and the Priority Year

The priority filing under the world patent system, established by the Paris Convention, reserves the first filing date for a patent application for up to one year for use in making filings in foreign countries. A United States Provisional patent application can serve as such a priority filing. However, US attorneys on occasion may not understand an important feature of the world priority filing system.

A priority filing establishes the right to file for the same subject matter essentially anywhere else in the world, reserving the original filing date, so long as the other world filings are made within one year of the first patent application filed anywhere in the world. However, this privilege may only be acquired once. It applies only to the first filing made anywhere in the world in respect of specific subject matter.

Typically, a US attorney will file a Non-provisional U. S. application within the 12 month period running from the original filing date of the U. S. Provisional application. A temptation may exist, however, to delay filings elsewhere for up to a further year. If this is done, the benefits of the original application, the Provisional application filed as much as two years earlier, will not be available in Paris Convention countries around the world. This is because the second, US Non-provisional application will not have been the first application to disclose subject matter which is also reflected in the earlier US Provisional application.

The second Non-provisional application can give rise to priority rights.
But it can only do so in respect of new matter that has not appeared in an earlier patent application filed anywhere in the world.

Thus a danger exists that, where an American applicant has already
made a U. S. Provisional filing, they may wait for up to nearly a further year beyond the date of the US Non-provisional filing before sending instructions for a filings to be made in countries outside of the United States. They may delay mistakenly assuming that they have reserved a second priority filing date based on the second, US Non-provisional filing. This would be in error.

An application made in Canada on this basis will vulnerable to any third-party disclosure that has occurred before the priority date to which the Canadian application is entitled. That priority date only applies in respect of new matter, appearing first in a foreign application, within no more than one year before the actual Canadian filing date.

The Canadian law does provide a grace period of one year running back from the actual Canadian filing date. The Canadian grace period does not extend back from the original, US Provisional priority filing date. And this one-year Canadian grace period only shelters applicants from public disclosures that originate from themselves.

If a third party has disclosed an invention publicly before a proper priority date has been established, then it is too late to file an application in Canada. Between competing inventors, Canada is on a first-to-file system, and if an independent inventor discloses an invention publicly before a priority date which can be legitimately claimed in Canada, this third-party disclosure terminates the rights of all persons other than the third-party to make a patent application in Canada.

The solution is to always make foreign filings for which priority is to be claimed within one year from the original U. S. provisional filing date.

Additionally, a US attorney should always inquire of the client as to when the invention was first made available to the public by the applicant. Arrangements must then be made to have an application on file in Canada within a year from that first event. This is due to the fact that the Canadian grace period extends back only from the actual Canadian filing date, and is not tied to any priority claim.

Posted in Patents, Patent Prosecution, Canadian Law January 11th, 2008 by admin | No comments

Priority Right When Abandoning And Refiling Applications

“We frequently simply re-file US provisional applications to start new one year periods where clients are not ready to proceed.”

The above quotation is from a US attorney handling a PCT filing on behalf of a US resident inventor. This response was given when, as representative of the beneficial Canadian owner, I inquired about abandoning the US provisional application prior to the filing of a further application in order to restart the priority date. Unfortunately, the abandonment of a US provisional application, while automatic at the end of 12 months from the original filing date, cannot be arranged on short notice prior to that deadline.

The regulatory entitlement to voluntarily abandon the US provisional application is not entirely clear:

USPTO MPEP 201.04(b) Provisional Application
http://www.uspto.gov/web/offices/pac/mpep/documents/0200_201_04_b.htm#sect201.04b

The US patent office takes the position that a voluntary abandonment is not effective until it is entered by the office. They recommend that applicants allow a delay of three months for this to occur.

In these circumstances, what problems can arise by “ simply re-filing US provisional applications to start new one year periods where clients are not ready to proceed”?

Article 4C(4) of the Paris Convention provides that:

“ A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union. shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.”

Paris Convention Article 4 Priority right
http://www.uspto.gov/web/offices/pac/mpep/documents/appxp_4.htm#parart4

Countries are not obliged to adopt all of the limitations in this paragraph but most probably do. Canada certainly does. The right to restart a priority date is limited in the Canadian Patent Act by the following:

28.4 (5) A previously regularly filed application mentioned in section 28.1 or 28.2 (i.e. the right to claim a priority date for each respective claim) or subsection 78.3(1) or (2) shall, for the purposes of that section or subsection, be considered never to have been filed if

(a) it was filed more than twelve months before the filing date of

(i) the pending application, in the case of section 28.1,

(ii) the co-pending application, in the case of section 28.2,

(iii) the later application, in the case of subsection 78.3(1), or

(iv) the earlier application, in the case of subsection 78.3(2);

(b) before the filing date referred to in paragraph (a), another application
(i) is filed by the person who filed the previously regularly filed application or by the agent, legal representative or predecessor in title of that person,

(ii) is filed in or for the country where the previously regularly filed application was filed, and

(iii) discloses the subject-matter defined by the claim in the application mentioned in paragraph (a); and

(c) on the filing date of the other application mentioned in paragraph (b) or, if there is more than one such application, on the earliest of their filing dates, the previously regularly filed application

(i) has been withdrawn, abandoned or refused without having been opened to public inspection and without leaving any rights outstanding, and

(ii) has not served as a basis for a request for priority in any country, including Canada.


Canadian Patent Act http://laws.justice.gc.ca/en/showdoc/cs/P-4/bo-ga:s_27//en#anchorbo-ga:s_27

The above provisions are extremely difficult to read. But they make it clear that the replacing application intended to start a new priority date must not overlap with the earlier filing. The earlier filing must have been abandoned at the time that the new priority filing is made.

Obviously, this language is an attempt to comply with article 4C(4) of the Paris Convention. In all likelihood the national patent laws of many members of the Paris Convention include similar provisions.

The conclusion is that the procedure of: ” simply re-filing a US provisional application to start a new one year period where clients are not ready to proceed” will not necessarily generate a genuine new priority date for use in making filings out of the United States if the second filing overlaps in any way with the first filing. Attorneys beware!

Posted in Uncategorized, Patents, Canadian Law, US Law, For Attorneys January 8th, 2008 by admin | No comments

Euro-Excellence Inc. v. Kraft Canada Inc.,

The Supreme Court of Canada has issued a very contentious ruling on copyright as it affects gray market transactions. It is contentious not only because it allows gray market goods bearing copyrighted logos to be imported into Canada, but because the nine judges involved end-up in four different camps.

Kraft Foods Belgium SA (“KFB”) and Kraft Foods Schweiz AG (“KFS”) were respectively, the owners of the Côte d’Or and Toblerone copyrights at issue in this case, as well as manufacturers of chocolate bars marketed under those brand names. The subsidiary of these two corporations, Kraft Canada Inc. (”KCI”) was appointed by these two companies as their exclusive Canadian distributor of Côte d’Or and Toblerone chocolate bars in Canada.

When Euro Excellence Inc. as defendant, having purchased genuine Côte d’Or and Toblerone chocolate bars, (bearing the subject copyrighted logos) from the manufacturers and copyright owners in Europe, attempted to import such products into Canada, KCI obtained injunctions, upheld at the level of the Canadian Federal Court of Appeal, barring distribution of such chocolate bars in Canada so long as they displayed the copyrighted logos. KCI founded it’s right on its status as an exclusive licensee under the Canadian Copyright Act.

The lower court judgments were overturned. Four judges of the Supreme Court ruled that the grant of an exclusive license cannot place of the copyright owner in the category of being a copyright infringer. According to this theory, the exclusive licensee has a right of action against the owner of copyright in contract only. Since Euro Excellence had purchased the chocolate bars from the copyright owners, there were no circumstances under which the importation of bars bearing the copyrighted logos could constitute an infringement in Canada.

These four judges, essentially, made their ruling based on the technical character of the copyright privilege as established by the Copyright Act, according to their interpretation.

Three of the judges, upholding the right of Euro-Excellence to a import the subject chocolate bars, did so on the basis that the Legislature never contemplated use of copyright for incidental markings on commercial products as a vehicle to interfere with the importation of such products. Thus these judges founded their reasons on the intention of the Legislature: ” The protection offered by copyright cannot be leveraged to include protection of economic interests that are only tangentially related to the copyrighted work. … (The Act) is not meant to protect manufacturers from the unauthorized importation of consumer goods on the basis of their having a copyrighted work affixed to their wrapper, this work being merely incidental to their value as consumer goods….. only those distributions which affect the legitimate economic interests protected by copyright will be held to affect prejudicially the owner of the copyright.” Thus these three judges made their ruling based upon a higher, policy-based ground.

Two judges, however, dissented. These judges rejected the premise that there was an exception to copyright infringement for logos on the basis that they are “incidental” to a commercial product. They relied upon the definition of an exclusive license in section 2.7 of the Act which states that such a license grants: ” an authorization to do any act that is subject to copyright to the exclusion of all others including the copyright owner”. Accordingly, these two judges would’ve upheld the finding of infringement based upon a black-letter reading of the Act.

This decision is significant for the distinct approaches taken by different judges to interpreting the scope of private rights granted by the Legislature. Most significantly, three out of nine judges relied heavily on policy considerations to depart from what should judges considered a black-letter interpretation of the law. No doubt law school professors now in their old age would be proud of what their students are accomplishing.

Supreme Court of Canada - Decisions - Euro-Excellence Inc. v. Kraft Canada Inc.

Posted in Patents, Canadian Law, Articles, For Attorneys July 27th, 2007 by David J. French | No comments

Distinction between Canadian and US patenting requirements in terms of novelty.

The US patent law is presently under review for revision. Part of that revision may be the adoption of a Canadian-style grace period instead of the existing US grace period. Accordingly, it may be helpful to clarify the distinction between these two types of deadlines for filing for patent protection.

Canada - Disclosures by Others

If an invention is publicized anywhere before filing, that is if it is “made available to the public” by any means anywhere in the world, then the right to file for a patent in Europe, Japan and many other places will be lost. In respect of Canada, if such disclosure is made by a stranger not related to the applicant i.e. an independent inventor, then the right to file for a patent in Canada is lost. In these cases the premise is that a patent will only be issued for an invention that is secret at the time of filing. Thus, under Canadian law there is no grace period with respect to disclosures by strangers.

Canadian Grace Period

Canada has a Grace Period that is available in respect of disclosures originating from an applicant. An inventor has one year from the date when he first makes his invention “available to the public” anywhere, to place a patent application on file in Canada. This one year grace period does not date-back from an earlier foreign patent filing (e.g. in the United States) from which priority rights may be claimed under the international Convention on patents.

An invention is “made available to the public” if the means to make it is disclosed to a person who is free to put it into use. This could be a manufacturer or banker. This does not include friendly confidants, lawyers and other persons, such as professional technology searchers, who are bound by a duty of confidentiality. And it does not include people who either understand that they are under a duty of confidentiality or have actually signed a confidentiality or “nondisclosure” agreement

United States Grace Period

In the United States, an application must be on file in Washington within one year from the occurrence of any of the following events:

(1) the description of the invention in a printed publication issued anywhere in the world;

(2) the public use or sale of the invention within the United States; or

(3) the offering of the invention for sale in the United States.

All of these events start the one year U.S. Grace Period running.
While these are deadlines for the filing of a patent application, an applicant is only entitled to obtain a valid patent in the United States if the applicant is the first inventor. This used to be the first inventor in the United States, but now, effectively, it is the first inventor in the world. However, where a prior inventor does exist, their invention only counts against another applicant if the prior inventor files an application in the United States patent office and the application filed by the prior inventor qualifies for grant of a patent.

The one-year grace period referenced above represents an absolute deadline for filing an application in the United States, even for a person who is the first inventor. Special care should be taken in respect of the third point of the numbered points above. An offer of sale made in Canada does not presently count in respect of US deadlines; but if it is referred to a person within the United States, it does. The safest course is to be on-file in Washington before there is any possibility that the one-year Grace Period has expired.

Patent agents and attorneys have an obligation to raise these principles with clients-inventors so that they will understand when they might lose their rights to obtain a patent. But it is the responsibility of the client-inventor, as they know the facts, to inform the patent agent or attorney of any relevant deadlines.

Posted in Patents, Articles May 18th, 2007 by David J. French | No comments

KSR versus Teleflex - US Supreme Court decision April 30, 2007

The US Supreme Court has now issued its long-awaited decision in KSR International versus Teleflex Inc. And the earth is still shaking.

The Court rejected the “rigid approach” of the US Court of Appeals for the Federal Circuit (page 11). The CAFC had been applying a test for obviousness requiring that prior art, in order to defeat a patent application for lack of invention, must contain a “teaching, suggestion, or motivation” (TSM test) that would point to the invention. The TSM test was, in essence, a test for the presence of obviousness. Patents are not supposed to be granted for obvious inventions.

The US Supreme Court reiterated its previous observation that: “(a) patent for a combination which only unites old elements with no change in their respective functions… obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men”. And the Court presently stated: “the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”

These observations are in keeping with the “Golden Rule” of patent law that a patent should not withdraw from the public anything that was previously available to the public. Things that were “available to the public” include not only everything previously disclosed, but obvious variants on everything previously disclosed.

The CAFC, wrestling with the disputes arising between patent applicants and patent examiners over when an application should be rejected on grounds of obviousness, had previously objected that examiners cannot merely declare an invention to be obvious as a conclusory statement. The CFAC had stated: “There must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”. The US Supreme Court in the present decision has now emphasized that an examiner need not seek-out precise teachings in the prior art in order to make an obviousness rejection. Instead, an examiner, or court, can take into account the inferences and creative steps that a person of ordinary skill in the art would employ.(page 14)

The US Supreme Court offered as part of a better analysis the observation that: “…any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” (Page 16)

In considering the hypothetical standard of a “person of ordinary skill in the art”, the court observed that such a person: “is also a person of ordinary creativity, not an automaton.”

The consequence of this decision is that there will be many more rejections of patent applications before the US Patent Office. And additionally, there could be a considerable number of patents already issued that will be declared invalid. The US Supreme Court has opened the floodgates to permit large number of patent rejections and declarations of patent invalidity.

The statement that the hypothetical ordinary person used to test the concept of “obviousness” may be taken to be “a person of ordinary creativity” will render the obviousness test much more subjective. The policy of the CAFC to introduce more certainty into this delicate central issue of patent law has been set aside in favor of reducing the extent to which patent protection may be granted.

This is definitely an anti-patent initiative by the US Supreme Court which may eventually be echoed by courts around the world. It may take time for this new attitude towards patents to have its full effect, but henceforth, certainly in the United States, numerous patents will have to be enforced under dark clouds of uncertainty. This may lead to many cases being settled on terms more favorable to competitors, accused of being infringers. Perhaps this is what the Supreme Court of the United States intended.

Posted in Uncategorized, Patents, Patent Prosecution, US Law April 30th, 2007 by David J. French | No comments

Liebel-Flarsheim v. Medrad (Fed. Cir. 2007). Patently-O Commentaries

Dennis Crouch’s blog posting of March 22, 2007 entitled: “The New Law of Enablement” provides a commentary on the US Court of Appeals for the Federal Circuit case of Liebel-Flarsheim v. Medrad (Fed. Cir. 2007). This posting has inspired an exceptionally long thread of commentary, giving rise to this commentary as a consequence.
Essentially, the CFCA ruled on a claim to a mechanical drive for a hypodermic needle injector for use with a disposable syringe. The patent included a description which addressed inclusion (only) of a pressure jacket to protect the disposable syringe from bursting under pressure. The CFCA ruled that such claims were invalid when the patent owner attempted to apply the claims against a competitor manufacturing a needle injector without a pressure jacket.
The patent specification indicated in the background discussion that existing disposable syringes required a pressure jacket because syringes that are able to withstand high pressures are “expensive and therefore impractical where the syringes are to be disposable.” The CFCA observed that this taught away from the use of the new style mechanical drive needle injector for use with a disposable syringe in the absence of a pressure jacket.
The competitor developed a mechanical drive hypodermic needle injector system for use with a disposable syringe that did not require a pressure jacket. Essentially, the competitor invented a disposable syringe that was strong enough. The competitor defended itself against the relevant claims on the basis that the patentee had failed to provide an enabling disclosure that would describe how its hypodermic needle injector could be made to work with a disposable syringe in the absence of a pressure jacket. Even the patentee’s inventors admitted that they were stymied by the challenge of producing a pressure-jacketless system that would work with existing disposable syringes. The competitor succeeded where the patentees inventors said they were not able to provide a solution.
When the application was originally filed, the claims to the mechanical drive included the limitation that the needle injector was claimed in association with a pressure jacket for containing disposable syringes. That limitation was removed during the prosecution of a subsequent Continuation application after the patentees learned of the activities of the competitor in building a system that lacked a pressure jacket.
The CFCA adopted the principle that a patentee’s specification: “must enable one of ordinary skill in the art to practice the full scope of the claimed invention.” (emphasis in original).

Because in the present case the asserted claims read-on and included an injector system with and without a pressure jacket, this was held to be the full scope of the claimed invention. The claims were, on this basis, held invalid. The claims read-on the competitor’s system because the claims were silent about the presence of a pressure jacket.
The principle of this ruling is hotly contested by many of the commentators to the above blog. Some felt that it was unjust for a patentee to be the denied the benefit of claim coverage where the competitor was using all of the features of claims that could not be invalidated on the basis of the prior art. Others felt that the claims should be held invalid where the patentee had failed to provide an enabling disclosure for the full scope of patent claim coverage that the patentee was asserting.
This debate is reminiscent of the often-raise defense in Canadian patent proceedings, that the patentee has: “claimed more than he has invented”. I’’ve always been puzzled at this allegation. If a patent claim fairly describes a characteristic of the preferred embodiment using language which prevents the claim from describing anything in the prior art, then such a claim would seem to be valid. The statement that such a claim covers more than was invented is really a statement that the claim should have included further limitations. But if the claim can stand-up to novelty and obviousness tests, why can’’t such a claim be held valid?
I have always thought that it was permissible to claim a sub-component of an apparatus, focusing the claim on the aspect of an apparatus that is novel and inventive. For example: “a vehicle having a windscreen and a wiper for removing water from the windscreen wherein ……(describing the wiper) “ . If the inventor has described a highway motor vehicle as his preferred embodiment, would it be outside the scope of such a claim to cover such a wiper when carried by a boat, or an aircraft? Would it matter if the disclosure acknowledged that the rubber used in the wiper as described in the preferred embodiment would be susceptible of deterioration in the presence of saltwater, but the claim is silent as to the type of rubber to be used in the wiper? Could a competitor then adopt the wiper for use with a boat in a saltwater environment by substituting a different rubber not ever mentioned in the original patent disclosure? Would it matter if the different rubber qualifies as a new invention?
Another analogy might be the case where the wiper inventor observed in his patent disclosure that his wiper may be susceptible to lift-off in the presence of high-speed winds. Then a competitor invents a deflector vane which remedies this defect. However, the competitor uses exactly the wiper as conceived and claimed by the patentee.
In either of such cases, could it be said that the patentee had “claimed more than he had invented”; or, as the CFCA had phrased it, failed to: “enable one of ordinary skill in the art to practice the full scope of the claimed invention”?
The key question is whether the “invention” is delimited by the claim or the “invention” is no broader than the inventor’s understanding at the time that the patent description is filed. Reference may also be made to the Canadian Patent Act section 32 which addresses the patenting of improvement inventions.
The exceptional number of commentaries forming the thread for the above blog posting shows the great disparity of opinion arising around this question. There are really two issues at stake. The first is what the law requires, and the second is what good sense would suggest to be appropriate.

Posted in Patents, Patent Prosecution, Canadian Law, US Law, For Attorneys March 25th, 2007 by David J. French | 2 comments

Proposed Amendments to Canadian Patent Rules

(Note:blue highlighted text below is hyperlinked)

Proposed rules for amending the Canadian Patent Rules were published in the Canada Gazette on December 23, 2006. Persons concerned can send-in comments to the Canadian Intellectual Property Office - CIPO by the proposed deadline of January 16, 2007, and possibly a little bit later. The entire set of proposed amendments can be found at the following link:

Canada Gazette - Proposed Amendments to the Patent Rules

The most interesting provisions are those relating to “topping-up” erroneous payments made on a small entity basis when such payment should have been made on a large entity basis. However, the basic, relevant, provisions are essentially as follows: Read the rest of this entry »

Posted in Patents, Canadian Law, For Attorneys January 5th, 2007 by David J. French | No comments

Topping-up Canadian Patent Office fee payments under the special procedure of Bill C-29

Many US attorneys have received advisory letters from their Canadian Associates on the above subject. And many are experiencing frustration in trying to understand the situation. Their frustration is understandable. What follows now is an attempt to provide a clarifying, if not concise, explanation.

Origin of the Small Entity Concept Read the rest of this entry »

Posted in Patents, Canadian Law, Articles, For Attorneys December 28th, 2006 by David J. French | No comments

« Previous Entries