Specification The specification has two parts disclosure amp claims 273 The specification of an invention must a correctly and fully describe the invention and its operation or use as contemplated by the inventor ID: 464432
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Slide1
The Patent SystemSlide2
Specification
The specification has two parts: “disclosure” & “claims”
27(3) The specification of an invention must
(a) correctly and fully
describe the invention
and its operation or use as contemplated by the inventor;
(4) The specification must
end with a claim
or claims defining distinctly and in explicit terms the subject-matter of the invention for which an exclusive privilege or property is claimed.Slide3
Specification
The claims define the monopoly
So that others will know whether they are infringing
One of the important features of the claims is to make it clear to other people what they are not entitled to do during the life of the patent. . .
Whitford
J, American Cyanamid Co v
Berk
Pharmaceuticals, Ltd, [1976] RPC 231, 234 (Ch DSlide4
Specification
The disclosure describes the invention to the world
So that others will be able to practice the invention after the patent term expires
‘Quid pro quo’ for patent monopoly
[The disclosure] should be a complete description which will enable anybody, after the patent has expired, to put the invention into practice.
Whitford
J, American Cyanamid Co v
Berk
Pharmaceuticals, Ltd, [1976] RPC 231, 234 (Ch DSlide5
Specification
The disclosure also reveals knowledge that may be useful even during the term
Invention is monopolized, knowledge is not
These monopolies are granted to encourage people to make inventions and to make the nature and working of them known. . .
Whitford
J, American Cyanamid Co v
Berk
Pharmaceuticals, Ltd, [1976] RPC 231, 234 (Ch DSlide6
Claims
“Embodiment”
The specific machine or compound which the inventor has come up with
“The inventive concept”
T
he inventor’s contribution
“Invention”
T
he invention defined by the claimsSlide7
Claims
The inventor is entitled to claim the inventive concept, not just their particular embodiment
But the concept must be described in concrete terms
But the court will not determine the inventive concept
That is left to the inventor in prosecuting the patent
Recall – the inventor (& her agent) writes her own patentSlide8
Claims
The claims define the scope of the monopoly
In an infringement action, the court compares the defendant’s product with the claims
not
with the plaintiff’s product
Validity, infringement, etc are all determined with reference to the invention
as claimedSlide9
Claims
“Men substitute words for reality and then fight over words
”
Edwin Howard Armstrong, pioneer in radio, on his experiences in patent litigation, quoted by
Hayhurst
, in Patent Law in CanadaSlide10
BVD v Can. Celanese
Issue: stiffening shirt collars
The prior art consisted of coating material with cellulose which left a stiff and glassy surface:
eg
the Van Heusen patentSlide11
BVD v Can. Celanese
The substance of the plaintiff’s Dreyfus invention was a method of making a flexible composite textile material by
weaving cellulose into the fabric
the very substance of Dreyfus' invention was. . .to make a composite textile material by taking a plurality of fabrics and uniting them by the use of a fabric composed of or containing yarns, filaments or
fibres
of a thermoplastic cellulose derivative and the application thereto of heat and pressure
There is no doubt that this invention was new, useful and not obviousSlide12
BVD v Can. Celanese
Problem
T
he claim did not mention weaving
A process for the manufacture of composite sheet material which comprises treating a fabric containing a thermoplastic derivative of cellulose with a softening agent, associating it with another fabric, and uniting the fabrics by subjecting them to heat and pressureSlide13
BVD v Can. Celanese
The patent was invalid because the scope of the invention
as claimed
was not novel
The prior art spread the cellulose over the fabric and then applied heat
Spreading falls within “associated” Slide14
BVD v Can. Celanese
The inventive concept was novel
The invention as claimed was not
Result
Invalid
patent
Note: the consequence is not just that plaintiff loses infringement action, but patent for real invention is rendered worthless by overly broad claimsSlide15
Claiming
To avoid this problem multiple claims are standard
Begin by claiming the broadest possible scope
Gradually narrow to the specific embodimentSlide16
Claiming
Claims stand or fall independently
58 When, in any action or proceeding respecting a patent that contains two or more claims, one or more of those claims is or are held to be valid but another or others is or are held to be invalid or void, effect shall be given to the patent as if it contained only the valid claim or claimsSlide17
ConstructionSlide18
Principles
We must look to the whole of the disclosure and the claims to ascertain the nature of the invention and methods of its performance, (
Noranda
Mines Limited v Minerals Separation North American Corporation [[1950] SCR 36], being neither benevolent nor harsh, but rather seeking a construction which is reasonable and fair to both patentee and public.
Per Dickson J
Consolboard
Inc v MacMillan
Bloedel
(Saskatchewan Ltd [1981] 1 SCR 504Slide19
Principles
There is no occasion for being too astute or technical in the matter of objections to either title or specification for. . ."where the language of the specification, upon a reasonable view of it, can be so read as to afford the inventor protection for that which he has actually in good faith invented, the court, as a rule, will
endeavour
to give effect to that construction"
Per Dickson J
Consolboard
Inc v MacMillan
Bloedel
(Saskatchewan Ltd [1981] 1 SCR 504Slide20
Principles
[T]he patent should be approached "with a judicial anxiety to support a really useful invention"
Per Dickson J
Consolboard
Inc v MacMillan
Bloedel
(Saskatchewan Ltd [1981] 1 SCR 504Slide21
Specifics
The patent is addressed to persons skilled in the art
E
xpert evidence to explain the meaning of the terms used in a claim is normally required
Experts are not permitted to testify as to the
meaning of the claim
Construction of the patent is for the judgeSlide22
Specifics
The terms
of the
claims must be interpreted in light of the disclosure
The disclosure cannot be used to change the meaning of the claim
Eg
if more was disclosed than was claimedSlide23
True Monopoly v CopyrightSlide24
American Cyanamid v
Berk
Pharm
The broad claim would enable the plaintiffs to stop any worker who dug up a soil sample anywhere and found in it a strain of
Streptomyces
aureofaciens
and mutated that strain to produce a near 100 per cent tetracycline-producing strain, from using that strain . . .Slide25
American Cyanamid v
Berk
Pharm
So, on the broad claim, the plaintiffs could seek to stop other workers from reaping the benefit of what might be a long and possibly expensive
programme
of work and research, to which the plaintiffs, by their disclosure in this patent, could not conceivably have made any kind of contribution. Slide26
American Cyanamid v
Berk
Pharm
It is clear that as between two independent inventors the first to file receives the patent and can exclude the other
Is this case different from a standard case of independent invention?
Does
Whitford
J’s objection apply in the standard case?
What is the response?Slide27
American Cyanamid v
Berk
Pharm
Suppose th
e only way to independently create the drug is a long and expensive program of research.
Does the result in this case undermine the incentive for the originator to develop the drug in the first place?Slide28
American Cyanamid v
Berk
Pharm
From a public
policy perspective, is it good or bad to encourage other researchers to undertake a long and expensive research program in order to develop substantially the same drug?
Why would the originator want a broad patent, if not to prevent independent creation?Slide29
Copyright v Patent
Are
uncopyrightable
“ideas” patentable?
If so, why?
Why are ideas not copyrightable?
How are patents different from copyright in that respect?
Consider trivial ideas that cost little to developSlide30
Presumption of ValiditySlide31
Presumption of Validity
43(2) After the patent is issued, it shall, in the absence of any evidence to the contrary, be valid . . .
Is this a substantive burden?
That is, should the court defer to the examiner?
Or is it only necessary to raise some evidence?Slide32
Diversified v
Tye-Sil
Presumption of validity
Thus the section does impose on the party attacking the patent for invalidity the onus of showing that it is invalid and,
in my opinion, the onus so imposed is not an easy one to discharge
Thorson P
This is
not
the lawSlide33
Presumption of Validity
The law is as follows:
. . .the peculiar effect of a presumption 'of law' (that is the real presumption) is merely to invoke a rule of law compelling the jury to reach the conclusion
in the absence of evidence to the contrary from the opponent. If the opponent does offer evidence to the contrary (sufficient to satisfy the judge's requirement of some evidence), the presumption disappears as a rule of law, and the case is in the jury's hands free from any rule
Decary
JA Diversified Products Corp v
Tye-Sil
Corp Slide34
Presumption of Validity
Is
Decary
JA right as a matter of policy?