International Patent Matters from a Canadian Patent Lawyer’s Perspective

How can a Disclaimer broaden a patent claim???

Hershkovitz v. Tyco Safety Products Canada Ltd

Canadian Federal Court of Appeal

Sometimes decisions are made by the courts that make you angry. And other times they just make you sad. This is a case that falls into both categories: Hershkovitz v. Tyco Safety Products Canada Ltd. 2010 FCA 190 Date: July 19, 2010

Patent 2,169,670, relates to an electronic circuit known as a telephone line coupler. A telephone line coupler is used to connect electronic equipment, such as a telephone or alarm system to a telephone line, while providing electrical isolation. The electrical isolation is necessary to protect equipment from power surges and unwanted signals. The electrical isolation is achieved by using optical-electronic components called “opto-couplers”. There’s no need to examine this patent further other than to observe that the patentee, by way of a “disclaimer” introduced into the scope of coverage of the claims the requirement that the following additional features must be present:

“(1) a receive opto-coupler (2) connected (3) in series (4) with the transmit opto-coupler [means] (5) on the line side (6) to draw a minimum of current (7) to place a light-emitting diode (8) of the receive opto-coupler (9) in an operational range.

These features were fully identified in the disclosure as originally filed.

It is perhaps important to note that the Trial Judge then added the observation:

“The Court notes that these newly added elements are considered by the inventor himself as being (1) inventive elements and (2) resulting in new combinations…”

an observation apparently adopted not only by the Trial Court in making its ruling but by the Court of Appeal as well. The implication is that these words pointed the scope of patent coverage in a new direction.

Focusing on the decision in the Court of Appeal, which perpetuates the errors made in the court below, the appeal judgment addressed the first issue as being: Was the disclaimer invalid because it added new inventive elements to the invention?

The Appeal Court found no error in the Trial Court’s decision that the appellant’s disclaimer broadened the scope of the patent by adding new inventive elements to it. On this basis, the disclaimer was held to be invalid. Worse, the Appeal Court endorsed the methodology of the Trial Court, namely of proceeding by construing the claims in the patent both before and as modified by the disclaimer, and then comparing the two in order to conclude that the claim had been broadened.

Before addressing why this is an erroneous approach, it should be observed that the Appeal Court decision makes the following observations on the nature and fundamental principles of patent law:

“At its essence, the patent system is a bargain between the public and inventors”
“An inventor can obtain a patent for any “new and useful art, process, machine, manufacture or composition of matter”….. The patent gives its holder, the patentee, a time-limited exclusive right to make, construct, use and sell the invention: section 42 of the Act. There is a quid pro quo.
“A person infringes a patent by performing all of the essential elements found within the claims of the patent. The essential elements of a claim are all the elements required for the invention in the claim to function as contemplated by the inventor. Put another way, those elements that can be substituted or omitted without having a material effect on the invention’s function are non-essential. Clearly, adding essential elements to a claim narrows it.
“To be novel the invention must not have been previously made known to the public.
“…an inventor can only claim that which he invented. If an inventor claims more than was invented, the subject-matter of the patent will be too broad. This makes the bargain unfair – the inventor ends up with the exclusive right to exploit subject-matters not invented and not disclosed to the public. Simply put, patents cannot be overbroad.

“. . . a patentee may later discover that part of the invention falls short on one of the three criteria for patentability.

“Sometimes the patentee can address the deficiency upon discovering that part of the invention falls short on one of the three criteria for patentability. Where the deficiency is as a result of a mistake, accident or inadvertence, the patentee may renounce that part of the invention that falls short. …. Renunciation is accomplished by filing with the Patent Office a document called a “disclaimer”: section 48 of the Act. Section 48 provides as follows:

48. Patentee may disclaim anything included in patent by mistake

(1) Whenever, by any mistake, accident or inadvertence, and without any wilful intent to defraud or mislead the public, a patentee has

(a) made a specification [i.e. the claims and disclosure found in the patentee’s patent application] too broad, claiming more than that of which the patentee or the person through whom the patentee claims was the inventor, or (b) in the specification, claimed that the patentee or the person through whom the patentee claims was the inventor of any material or substantial part of the invention patented of which the patentee was not the inventor, and to which the patentee had no lawful right,

the patentee may, on payment of a prescribed fee, make a disclaimer of such parts as the patentee does not claim to hold by virtue of the patent or the assignment thereof.

“The filing of a disclaimer narrows the scope of the patent. The narrowing of the scope of the patent happens automatically upon filing the disclaimer: the Patent Office does not have to assess and approve the disclaimer. As long as the disclaimer is in the prescribed form, the Patent Office registers it.

“When the patentee files a disclaimer, the scope of the patent exclusivity enjoyed by the inventor is reduced.
“Disclaimers that broaden the scope of a patent are invalid.
“In the view of the Federal Court [trial division], this was an invalid broadening of the scope of the patent through disclaimer.

“[34] In this Court, the appellants cast their challenge to the Federal Court’s ruling on this point very narrowly. They challenged the Federal Court’s finding that the disclaimer introduced, as a new inventive element, a connection between the receive opto-coupler and the transmit opto-coupler. However, even if the Federal Court were wrong on that, its finding that the disclaimer improperly introduced a number of other new inventive elements would remain. For example, in this Court, the appellants did not challenge the finding that “a minimum of current to place a light emitting diode of said receive opto-coupler in an operational range” broadened the scope of the patent. They failed to challenge any of the other elements that the Federal Court described in the above passage, which, in its view, broadened the scope of the patent. Whether or not the appellants’ narrow submission is correct, it does not matter in the end result: the Federal Court has found that the disclaimer, by broadening the original claims in the patent, is invalid. Were it otherwise, parties could use disclaimers to broaden their patents and obtain increased rights of exclusivity over those elements, thereby changing the overall bargain and circumventing the oversight of the Patent Office.

“[35] Because of the rather narrow focus of the appellants’ arguments concerning the above passage, it is not necessary for this Court to examine each of the nine inventive elements identified by the Federal Court and assess whether they are indeed inventive elements. In some cases, this might be necessary. There is a distinction between inventive elements and essential elements. In a disclaimer, one cannot add inventive elements, as that will broaden the scope of the patent. But adding essential elements can narrow the scope of the patent; as mentioned in paragraph 11, above, the more essential elements there are in the patent’s claims, the narrower they get.”
[End of quotations from Court decision]

 

This ruling is a disaster. It not only does great damage to the provisions in the Act that permit a patentee to file a disclaimer, but it does so on the basis of a logical reasoning which is seriously deficient.

Adding new limitations to a claim does not broaden the scope of a patent monopoly. The claim has a scope before the new limitations are added, and after the new limitations are added that scope has been reduced because anything not including the new limitations is now excluded. A properly formulated disclaimer can never broaden the scope of coverage of a patent.

A key feature of a disclaimer is that it is available in cases where a specification [i.e. the claims and disclosure found in the patentee’s patent application] has been made too broad, claiming more than that of which the patentee or the person through whom the patentee claims was the inventor. (Reference to “more than that… the person… was the inventor” is old-fashioned language meaning that the subject claims covered pre-existing prior art. Hence such person was not the “inventor”.)

By permitting disclaimers, a patent claim that violates the Golden Rule of patent law (by extending to cover the prior art) can be repaired by truncating its scope.

There are two ways by which the scope of a patent claim can be limited. One is to declare that claim coverage specific to a prior art configuration that has been discovered after the scope of the claims has been settled through examination are not to be covered by the claim - coverage of such specific prior art is disclaimed. The other way by which the scope of a patent claim can be limited is to stipulate that coverage is to extend only to embodiments of the invention having a specific feature that is not present in the prior art. Properly, the specific feature must also be identified in the patent specification as being available to serve as part of the invention to be covered by the patent. Examples would be appropriate.

Example 1

Claim: I claim a pencil having an eraser attached to the end of the pencil.

Prior art: a pencil together with an eraser having a hole in the eraser which is fitted over the end of the pencil

Disclaimer: I disclaim the case of a pencil together with an eraser having a hole in the eraser which is fitted over the end of the pencil.

Example 2

Claim and prior art as above.

Disclaimer: I disclaim the cases of all pencils not having a brass sleeve fitted at the end of the pencil to hold the eraser in place.

In the first case, the disclaimer is specific to an example of prior art. In the second case the disclaimer adopts a limitation taken from the disclosure in the original patent filing and makes this a requirement for something to fall within the scope of the claim in order to infringe. The first example, whether appropriate or not, is not permissible under the patent rules. The rules stipulate that a disclaimer, other than the entire cancellation of a claim, must be formulated according to the following statement:

“The patentee disclaims the entirety of claim with the exception of the following:
http://laws.justice.gc.ca/eng/SOR-96-423/page-5.html#anchorsc:1

Following this procedure, the original claim may then be set out in its entirety with further limitations being added to it. This is the well-known procedure in patent law of narrowing the scope of a patent claim.

How could the Court invalidate the disclaimer on the basis that: “the disclaimer improperly introduced a number of other new inventive elements….” and “the Federal Court (trial division) has found that the disclaimer, by broadening the original claims in the patent, is invalid”? Not only did the Court on Appeal refuse to depart from the decision of the Trial Division but they also endorsed this by adding:

“the Federal Court has found that the disclaimer, by broadening the original claims in the patent, is invalid. Were it otherwise, parties could use disclaimers to broaden their patents and obtain increased rights of exclusivity over those elements, thereby changing the overall bargain and circumventing the oversight of the Patent Office.”

The Court then went on to make the novel and strange observations that:

“There is a distinction between inventive elements and essential elements. In a disclaimer, one cannot add inventive elements, as that will broaden the scope of the patent. But adding essential elements can narrow the scope of the patent; as mentioned in paragraph 11, above, the more essential elements there are in the patent’s claims, the narrower they get.”

This new distinction seems to be related to the earlier statement taken from the Supreme Court of Canada decision in Free World Trust v. Electro Sante Inc., [2000] 2 S.C.R. 1024, 2000 SCC 66 that:

“A person infringes a patent by performing all of the essential elements found within the claims of the patent. The essential elements of a claim are all the elements required for the invention in the claim to function as contemplated by the inventor. Put another way, those elements that can be substituted or omitted without having a material effect on the invention’s function are non-essential. Clearly, adding essential elements to a claim narrows it.”

This parsing of claims into essential and nonessential elements is derived from the British House of Lords Catnic decision, Catnic Components Ltd v Hill & Smith Ltd (1982) R.P.C. 183 and the subsequent UK Court of Appeal Improver decision, Improver Corporation v Remington Consumer Product Limited [1990] F.S.R. 181. This adoption of the concept of essential and nonessential elements was made without reference to the subsequent British House of Lords decision in Kirin-Amgen v Hoechst Marion Roussel [2004] UKHL 46 (2004-10-21)

http://en.wikipedia.org/wiki/Kirin-Amgen_v_Hoechst_Marion_Roussel
http://www.claytonutz.com/publications/newsletters/life_sciences_insights/20050715/oh_my_lord-the_house_of_lords_clarifies_uk_patent_law.page

which clarifies the intent of the Catnic decision and nullifies the parsing of claims into essential and nonessential elements as the proper method for claim interpretation. That distinction was in reality a residue from the pre-Catnic law principle that the Doctrine of Equivalents cannot operate at the point of invention.

Not only does the present Court of Appeal decision maintain the distinction between essential and nonessential elements in a patent claim, but it also introduces the concept that claims may add inventive elements as well as essential elements, vis: “There is a distinction between inventive elements and essential elements. In a disclaimer, one cannot add inventive elements, as that will broaden the scope of the patent. But adding essential elements can narrow the scope of the patent; as mentioned in paragraph 11, above, the more essential elements there are in the patent’s claims, the narrower they get.” The reality is that adding limitations to a claim cannot broaden its scope. This analysis is hopelessly wrong.

A further effort might be invested in determining whether there were good policy reasons for reaching the same decision on other grounds such as the inventor’s understanding at the time of the patent grant, but for now, we have to decide whether to be either angry or sad at the direction that a decision such as this will point the law in the future.

David J. French
Ottawa, Canada

Posted in Patents, Canadian Law, For Attorneys August 11th, 2010 by David J. French | No comments

Patenting Software in Canada

                                        Patenting Software in Canada

While the world waits for the US Supreme Court decision in the Bilski case, the Canadian Patent Office is going forward with establishing its policies as to when patents can be granted for software inventions in Canada. They have done so by publishing a draft revision to the Patent Office manual that addresses this issue.

The Canadian Patent Office publishes the Manual of Patent Office Practice - MOPOP - to serve as a guide for both examiners and the public regarding patenting in Canada. On June 16 CIPO began its consultation on a draft revision to Chapter 16 of the MOPOP which addresses the subject of “Computer-Implemented Inventions”.  CIPO invites comments in response up until August 19, 2010. Thereafter, the response will be evaluated in the development of a final policy to be adopted regarding computer-implemented inventions. Note: Comments submitted will be posted on CIPO’s website for public viewing.

This draft chapter is 41 pages long and is available at this link:
http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr00758.html

The issue addressed goes to the very heart of the patent system: What sort of things should be patentable. Policy wise, patents should probably be granted for things that need to be encouraged to come into existence and would be less likely to arise without the incentive of a patent right to motivate human initiative. In the past, stemming from the Statute of Monopolies in 1624, patents were intended to introduce “new manners of manufacture” into the land. In the last hundred years, the premise for the granting of patents has shifted from establishing new enterprises to encouraging the disclosure of inventive concepts. But we can still ask, inventive concepts regarding what types of things?

The Canadian statute, borrowing from the US Patent Act of 1836, recites that patents are to be granted for “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter”. This is the definition of an “invention” under the Act. This statutory language was last addressed by Parliament in 1936. There’s no doubt that the issue raised by Chapter 16 of the MOPOP was far from the minds of any Member of Parliament at the time. 

The issue is: to what extent can computer-implemented inventions be said to qualify under the definition of “invention” and therefore be qualified for the granting of a patent in Canada.

As long as hardware is involved, there is virtually no doubt that a patent can be granted if the other requirements for patentability, namely novelty and unobviousness, are met. The more difficult issue arises when the novelty resides in the manner of organizing or treating information, or surrogates for information, in the form of electric signals. This is the strength of computers. The information that they sort and analyze is valuable because it represents an analog to the real world. The mere fact that a computer process is used to carry out some other tangible activity, such as adjusting the color of paint in a paint production line, should not disqualify the overall process from being patented. The difficulty arises when the invention, the purported invention as presented by the patent applicant, resides in the processing of the information itself. An example may prove helpful.

One of the most powerful innovations in communication and computer technology was the conception of the checksum digit as part of computer words. Originally, when computers used eight bit words based on a string of eight binary values of zero or one, one digit was reserved to be used to indicate the “parity” of the other seven digits. Thus if a computer word consisted of: 11101010, the parity of the last seven digits is established by adding the digits and checking whether the result is an even or odd number:  1 + 1 + 0 + 1 + 0 + 1 +0 =  4.  As 4 is an even number, by convention its parity is considered to be 1.  Accordingly, the first or checksum digit is given the value: 1.

There are actually numerous mathematical algorithms that can be implemented to carry out this type of function: http://en.wikipedia.org/wiki/Check_digit

They all serve to catch errors arising from the corruption of information that is being transmitted. Within a computer, this transmission is occurring millions of times a second and it’s important to catch errors when they occur. This checksum parity check doesn’t catch all errors;  two errors in one word may cancel out.  But when a single error has occurred, and the checksum digit doesn’t match, a computer circuit can be programmed to ask for the retransmission of the corrupted data until apparently valid information is received.

While this example has been given in respect of the transmission of an electronic message in binary form, it would be equally applicable to the semaphore signalling systems of earlier times. At regular intervals, a flag signal could be raised that reflects on the nature of the earlier signals. Thus the concept which constitutes a valuable advance in signalling can be divorced from the mechanical way in which it is implemented.

Should such a process be entitled to the grant of a patent?
There are two approaches.  One approach is to determine whether the new concept can be fitted within the words of the statute.  On its face, almost anything could qualify as a new and useful “art”.  But the meanings of words in the statute are constrained by the traditions of judicial interpretation.  Another approach is to go to a higher level and ask the policy question: “Is this a case where patents should be granted to encourage innovation to occur that would be less likely to arise without the incentive of a patent right to motivate human initiative?”  Some would quickly answer: “of course”, relying on the presumption that anyone who discloses a new and useful gift to humanity deserves a reward.  On the other hand, a sophisticated review of the modern economy may show that there is sufficient incentive already for people to conceive of more efficient ways to communicate, analyze and manipulate information.

Allowing that innovations that include a mechanical component are accepted as being patentable, creative patent agents can, and have in the past, conceived of very cunning ways of defining an inventive concept so that it appears to apply to something tangible. Even the semaphore system operates on the basis of flags. 

A further policy question therefore arises as to whether patents should be granted for essentially software innovations when they are presented in combination with hardware; or should a restriction be applied based on where the essential inventive feature resides.  If the inventive feature resides in the conceptual manipulation of information, should this be grounds for rejecting a patent application, even if the prospective monopoly is presented in terms of a mechanical hardware environment?

The draft revision to MOPOP guidance on this issue takes the position in section 16.08.04 that a computer program per se is considered to be an abstract scheme or set of rules that is not of itself patentable. This policy would appear to bar patenting of the higher principle arising out of the checksum concept. But it would still leave open the prospect of granting patents for such an invention when incorporated into an arrangement involving tangible components.

This presentation of a draft document to define how the Patent Office expects patent applicants to behave is a compendious analysis of the issue. It is a valuable contribution to understanding how a patent office should manage applications that address computer-implemented inventions. While everyone is awaiting the long-delayed US Supreme Court Bilski decision, this document prepared by the examiners and staff at the Canadian Intellectual Property Office, is well worth reading.

 

 

 

Posted in Patents, Canadian Law, Articles June 17th, 2010 by David J. French | 1 comment

US Law Reform: Prefiling Protection for Inventors under revised S515

 US Law Reform: Prefiling Protection for Inventors under revised S515
 
The Canadapatentblog postings of November 16, 2009 and January 31, 2010 addressed the scope of the draft novelty requirements under US Senate bill S515 as originally approved by the US Senate Judiciary Committee in April, 2009.  A proposed revision of that text has now been published by the Senate and is reproduced in the Patently’O blog posting of March 9, 2010 available here:
 
http://www.patentlyo.com/patent/2010/03/patent-reform-act-of-2010-proposed-first-to-file-statute.html#comments
 
The language used in this revision expresses much more clearly the apparent intent of the legislators.  The extensive Patently’O blog  commentaries on this revised text finally show that interested members of the patent profession are beginning to attempt to address the real meaning of these provisions.  These commentaries are all well worth reading.
 
In the Canadapatentblog posting of January 31, 2010, the key recommendation was that, under the new scheme being proposed, persons intending to obtain patent protection in the United States should: “file early and file often”.  Some of the key points to consider are as follows:
 
- initial priority patent filings including US Provisional applications should be as complete as possible in order to meet 35 USC 112 requirements
 
- foreign priority filings will enjoy the benefits of the US grace period provisions equally with the filing of a US Provisional application
 
- every patent filer should take advantage of the right to make additional filings during the priority year and consolidate the disclosures of all such filings into the final, non-provisional, patent application that may then be used around the world
 
- the proposed new US patent law includes a Canadian style self-originating grace period which applies to self-originating disclosures, i.e. disclosures originating from the inventor associated with the filing
 
- the proposed new US patent law includes an additional feature present in the following sections:
 
35 USC 102 (b) EXCEPTIONS.—
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if— …….
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor…….
 
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if— ………
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; ………
 Read the rest of this entry »

Posted in Patents, Canadian Law, US Law, Articles, For Inventors, For Attorneys March 17th, 2010 by David J. French | 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 | 3 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

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

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 | 1 comment

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 | 1 comment

Entity Status - Canadian style

An important piece of information required by Canadian attorneys when effecting Canadian filings on behalf of foreign associates is the entity status of the applicant under Canadian patent rules.     

For an applicant to qualify as a small entity in Canada, no party having over 50 employees may hold any “right in the invention”.  This quoted expression is not defined and may include a shop right, a license, or even a security interest held by a bank.  There has not been sufficient litigation in Canada to clarify the meaning of this expression. New rules, not yet in force, have been tabled which exclude “contingent” rights, but this expression will still remain relatively undefined. Read the rest of this entry »

Posted in Patents, Canadian Law, For Attorneys May 26th, 2006 by David J. French | No comments

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