International Patent Matters from a Canadian Patent Lawyer’s Perspective

The Torture of Explaining to Clients - 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. Read the rest of this entry »

Posted in Uncategorized, Patents, Patent Prosecution, US Law, Articles, For Inventors, For Attorneys January 17th, 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!

David J French

Ottawa, Canada

Posted in Uncategorized, Patents, Canadian Law, US Law, For Attorneys January 8th, 2008 by admin | 1 comment

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