CanadaPatentBlog

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 »

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.

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.

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.

I once had an examiner ask me on the phone at the end of an interview why so many applicants file applications with so many claims. He is right: most of those claims are inappropriate.

I explain to my clients that dependent claims are “embellishments” on the main invention represented by the independent claim(s) and are there only as back-ups. Dependent claims are irrelevant if the preceding independent claim is valid (except for the small exception below). If the preceding independent claim is invalid then the dependent claims become relevant. But dependent claims are only really relevant if they add a patentable distinction. So don’t bother adding a dependent claim that says that the tire tread comprises a rubber compound.

Another analogy that I use is that of the Gatling gun. If the first barrel has a dud cartridge, then you rotate to the second barrel. But by the time you get to a barrel that fires, you may not be aiming at your original target.

The small exception? Occasionally a dependent claim can be used to clarify a preceding claim. Thus if the preceding claim stipulates for: “scissors having multiple openings to receive fingers” and a subsequent dependent claim stipulates that: “the multiple openings consist of two openings specifically”, then this can help infer that the preceding claim presumably covered scissors having more than two openings to receive fingers. But dependent claims used for this purpose are in the minority.

As long as clients are impressed by the number of claims in their patents, I suspect that patent attorneys will continue to deliver what the clients seem to want.

The benefits of a priority patent filing only arise in respect of the first filing of an application describing specific features in respect of an invention. This is a stipulation in the Paris Convention which has been adopted as part of the Canadian patent law.

Consequently, US attorneys who proceed by first filing a US provisional application, followed by a US non-provisional application a year later, but without filing an application in Canada within the priority year are exposed to the following limitations under Canadian patent law.

Canada does have a one-year grace period that shelters an application from self-originating public disclosures in the previous year. This partial one-year grace period extends back from the actual Canadian filing date. It does not extend back from the priority date associated with an application. Therefore, if a client, after making an initial US provisional application, decides to publicly disclose their invention, then this sets a one-year deadline from the date of first disclosure for the filing of a patent application in Canada. Read the rest of this entry »

A priority patent filing is normally understood to shelter an applicant from any public disclosures that may be made by themselves or others in the priority year following thereafter.  This is true in respect of inventions that were not made available to the public before the priority filing date.  But it is not true in respect of inventions which were disclosed publicly before that date, even though the right to obtain a US patent is still available based on the US one-year grace period.

If a third party has disclosed an invention publicly before the date of a priority patent filing, then it is too late to file an application in Canada in respect of the subject matter that has been disclosed.

Once a priority date has been obtained, it will shelter the Canadian application against all public disclosures occurring thereafter during the priority year.  This is true irrespective of the source of such disclosures.  Under these circumstances, it is not necessary to file the Canadian application promptly unless the invention has been disclosed publicly by the inventor previous to the priority filing date. Read the rest of this entry »